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The Third Amendment to China's Patent Law became effective on 1 October 2009, reflecting China's on-going effort to adapt its IP protection regime to the demands of a rapidly developing economy. In advance of this milestone, the State Intellectual Property Office (SIPO) issued the Transitional Provisions for the Implementation of the Revised Patent Law on 29 September 2009.
The key provision is Article 2 which stipulates that any patent application filed prior to 1 October 2009 and any patent right granted on the basis of such application, shall be governed by the old Patent Law. The Revised Patent Law shall apply to any patent application filed on or after 1 October 2009.
However, the Transitional Provisions set out certain events where the Revised Patent Law shall apply even in respect of patent applications filed prior to 1 October 2009:
§ Where an application for a compulsory licence of the patent is filed on or after 1 October 2009 (Chapter 6 of the Revised Patent Law will apply);
§ Where the administrative authority for patent affairs deals with suspected acts of patent infringement which arise after 1 October 2009 (Articles 11, 62, 69 and 70 of the Revised Patent Law will apply); and
§ Where the administrative authority for patent affairs investigates and handles any suspected passing off of a registered patent arising after 1 October 2009 (Articles 63 and 64 of the Revised Patent Law shall apply).
The Transitional Provisions are in line with the principle set out in Article 84 of PRC Legislation Law which provides that newly promulgated legislation should not have any retrospective effect.
SIPO confirmed this view in a notice issued on 30 September 2009 stating that the conditions for granting patents, examination procedures and any possible invalidation proceedings which may arise in respect of patent applications filed prior to 1 October 2009 (and any corresponding patent rights subsequently granted), shall remain to be governed by the old Patent Law.
This means that the "absolute novelty" test for inventions and utility models and the higher threshold for the grant of design patents1, introduced by the Revised Patent Law, will only apply to patent applications filed after 1 October 2009.
This may be contrasted with the position when the Patent Law was last amended in 2001, where it was provided that, except in certain circumstances, any patent applications filed prior to 1 July 2001 should be governed by the new Patent Law.
In addition to the Transitional Provisions, SIPO has also set out certain other transitional arrangements through notices on its website. e.g., The Notice Concerning Certain Events for the Implementation of Revised Patent Law. This Notice introduces several new forms (which are downloadable from SIPO's website) for the implementation of the Revised Patent Law. After 1 October 2009, applicants are required to complete the relevant form in the following circumstances:
1. (Declaration of Applying Invention Patent and Utility Model Patent on the Same Date)
According to Article 9 of the Revised Patent Law, it is possible to file applications for both a utility model patent and an invention patent, on the same date, for the same invention or creation. However, if a utility model patent is granted first, before the expiration of such utility model patent, the applicant may elect to relinquish the utility model patent and be granted an invention patent instead.
To implement this provision, the applicant is required to complete the "Declaration of Applying Invention Patent and Utility Model Patent on the Same Date" at the time of the application. According to the Submission Draft of the Implementing Regulations of Patent Law (as of February 2009), failure to do this means that Article 9 shall not apply.
2. (Application of Confidentiality Examination for Patent Application Filing Abroad)
Under the Revised Patent Law, any inventions or utility models "completed in China" by any entity or individual, irrespective of their nationalities, may first file a patent application abroad, or file a PCT application through other receiving offices, provided that an application is first submitted to the Patent Administration Department for a "confidentiality examination".
3. (Registration of Disclosure of Origin of Genetic Resources)
According to Article 26 of the Revised Patent Law, for an invention which relies on genetic resources, the applicant shall disclose in the application document the origin of such genetic resources.
Although the Transitional Provisions have been introduced, the above comments are subject to the revised Implementation Regulations of Patent Law. According to the draft Implementing Regulations submitted for approval by the National People's Congress in around February 2009, the effective date of the revised Implementing Regulations should also have been 1 October 2009. However, as at 1 October, the Implementing Regulations have not yet been issued by the State Council. Accordingly, it would appear that although reform to the patent protection regime has commenced, the details of its implementation are still uncertain.
According to a recent SIPO notice in relation to National Qualification Examination for Patent Attorneys 2009, as the revision of the Implementing Regulations of Patent Law and Examination Guidelines are still pending approval, the syllabus of the National Qualification Examination for Patent Attorneys 2009 will only cover the pre-1 October 2009 version of Patent Law, the existing Implementing Regulations (effective from 1 July 2001) and the latest Examination Guidelines (effective from 1 July 2006). It appears that it will take some time before the revision of the Implementing Regulations and Examination Guidelines become finalised and promulgated. | 
