China State Intellectual Property Office (SIPO) issued the amended Measures for the Record Filing of Patent Licensing Contracts (the New Measures) on June 27 of 2011, which took effect August 1 2011. Actually, the New Measures was enacted to adapt to the amended China Patent Law and Implementing Rules for the China Patent Law.This article intends to briefly introduce the major changes adopted in the New Measures
1.Documents to be submitted for the filing of licence contracts
According to the old Measures, the following documents shall be submitted to the patent administrative authorities when filing the patent exploitation and licence contracts: 1) application form; 2) copy of the contract; 3) Patent Certificate or a copy of the Notice on Acceptance of the Application; 4) identity certificate of the transferor; and 5) other documents as required. The new Measures have released the applicants from submitting the Patent Certificate or the Notice on Acceptance of the Application. Additionally, to simplify the application documents, the new Measures so not require that all application documents should be submitted in duplicates.
2.Provisions on licensing of patents under joint ownership
The old Measures stipulated that where a patent or patent application has no less than two patentees or patent applicants, the transferor should be the entire patentees or patent applicants, whereas Article 15.1 of the amended Patent Law provides that where the joint owners of the right apply for a patent or a patent right reach an agreement with respect to exercising such a right, such an agreement shall be complied with. Where the joint owners fail to reach such an agreement, any of the joint owners may exploit the patent, or permit another party to exploit the patent by means of a non-exclusive licence. According to this stipulation, when the joint owners do not have any agreement on how to exploit the patent, any of them may grant a non-exclusive licence without permission from the others. The New Measures provide that in the case of a patent exploitation licence contract with respect to a co-owned patent right, consent of all the other co-owners shall be obtained unless otherwise agreed upon by all the co-owners or otherwise provided for in the China Patent Law.
3.Circumstances where the contracts should not be recorded
The old Measures prescribed five circumstances in which the contracts should not be recorded, while the new Measures have expanded such a scope to 11 circumstances, which are specifically provided in Article 12 of the new Measures.
In addition, the new Measures also provide that where a patent administrative authority decides that a patent licence contract should not be recorded, it should issue a Notice of Rejecting the Filing of Patent Exploitation Licence Contracts to the parties concerned.