Potential Amendments to Chinese Patent and Design Law
Posted in | Feb 28, 2019
The Standing Committee of the National People’s Congress (SCNPC) are considering a Draft Amendment to the Patent Law of China, which could be approved in June or October this year.
Most of the major changes suggested by the Draft Amendment relate to patent infringement, increasing the penalties for infringement while also expanding the authority of the patent office when investigating patent infringement. These changes therefore theoretically make enforcing patents in China easier and more effective. The suggested changes are as follows:
- Introducing punitive damages for serious wilful infringement of patent rights. In such cases, compensation could be up to five times the damages suffered by a patent proprietor, or five times the account of profits of an infringer.
- For cases where it is difficult to determine compensation owed, the range for the amount of compensation to be determined at the court’s discretion, which is currently 10,000-1 million Yuan RMB (approximately £1,100-£112,000), to increase to 100,000-5 million Yuan RMB (approximately £11,200-£562,000).
- Allowing orders that the defendant provide evidence that can prove damages, in cases were the proprietor has done their best to provide evidence but such evidence is mainly in the possession of the defendant.
- Increasing the authority of the Chinese patent office when handling patent infringement dispute cases, allowing them to make inquiries of the relevant persons, investigate into the relevant matters, conduct on-spot inspections, examine and make copies of contracts, invoices, accounting books and other materials, and inspect the alleged infringing products.
A further change that we consider important relates to extending the term of protection, as follows:
- Extending the term for registered designs from 10 years to 15 years.
This change will result in designs being protected for longer, which would be important of itself, but is more interesting as we understand it has been suggested so that China can join the international (Hague) system for filing registered designs.
The international (Hague) registered design system is somewhat underused compared to its counterparts for patents and trademarks, in part because many major countries have not been party to the agreement. The EU has been a member since 2008, and the UK since last year, but the system became much more popular with our clients since 2015, when both Japan and USA joined. Assuming that this change in design duration does take place and China then joins the Hague system, we would expect it to make the filing of international (Hague) designs substantially more attractive and more frequent.
For more information on pursing patent and design rights in China, please contact one of our patent attorneys.