China’s National Intellectual Property Administration Releases Measures to Crack Down on ‘Irregular’ (Junk) Patent Applications

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China IP Law Update———————————

On March 12, 2021, the China National Intellectual Property Administration (CNIPA) released the “Measures Regarding the Regulation of Patent Applications” (关于规范申请专利行为的办法) effective immediately.  CNIPA is continuing the transition from quantity to quality in patent applications and one method is to reject ‘abnormal’ or ‘irregular’ (junk) patent applications as defined in the Measures. These measures and the concurrent elimination of monetary incentives for patent filings should decrease the total amount of applications filed in China and specifically junk patents.

Article 2 defines the following behaviors as abnormal:

 (1) Simultaneously or successively submitting multiple patent applications that are obviously the same in invention-creation content, or are essentially formed by simple combinations of different invention-creation features or elements;

  (2) The submitted patent application contains fabricated, forged or altered inventions and creations, experimental data or technical effects, or plagiarism, simple replacement, patchwork of existing technology or existing designs, etc.;

  (3) The invention-creation of the submitted patent application is obviously inconsistent with the actual research and development capabilities and resource conditions of the applicant and inventor;

  (4) The invention-creation content of multiple patent applications submitted is mainly generated randomly by computer programs or other technologies;

  (5) The invention-creation of the submitted patent application is an invention deliberately formed for the purpose of circumventing patentability examination, which is obviously inconsistent with technical improvement or design common sense, or has no actual protection value, is inferior, piles up, or unnecessarily limits the scope of protection Creation, or content without any search and review significance;

  (6) In order to evade the supervision measures against irregular patent applications, multiple patent applications that are substantially related to a specific entity, individual or address are scattered, submitted sequentially or in different places;

  (7) Not buying or reselling patent application rights or patent rights for the implementation of patented technologies, designs or other legitimate purposes, or falsely altering inventors or designers;

  (8) Patent agencies, patent agents, or other institutions or individuals, acting as agents, inducing, instigating, helping others, or conspiring with them to implement various types of irregular patent applications;

  (9) Other irregular patent applications and related behaviors that violate the principle of good faith and disrupt the normal order of patent work.

Notably, these Measures removed one behavior from that was listed in the draft Measures:

(7) Based on an original application with authorization prospects, multiple divisional applications are proactively filed, but there is essentially no legal or technical necessity;

Applicants often file divisional applications for various reasons, such as to seek broader coverage or draft claims to capture infringement literally, and so presumably it would be hard for CNIPA to prove “no legal… necessity” when multiple divisionals are filed.

If determined that an application is abnormal, a special examination working group or Examiner may implement special examination procedures, inform the applicant, and require the applicant to immediately stop the relevant actions and withdraw the relevant patent applications or legal procedures within a specified time limit or respond why the patent application is not abnormal within a specified time limit.

 If there is no response within the time limit without justifiable reasons, the relevant patent application shall be deemed to have been withdrawn.

After the applicant’s opinions in a response have been stated, if CNIPA still considers it to be an irregular patent application as referred to in these Measures, it may reject the relevant patent application according to law.

If the applicant is dissatisfied with the above decision of the CNIPA, the applicant may file an administrative reconsideration application, reexamination request or administrative litigation request according to law.

The All China Patent Agents Association should self-regulate patent firms that violate (8) above.  If the circumstances are serious or repeated, the CNIPA or the administrative department of patents shall impose corresponding punishment on them in accordance with laws and regulations.

There is also potential criminal liability and violations of the above can cause a case to be transferred to relevant agencies for criminal investigation and prosecution.

In the meantime, Chinese provincial authorities have been cracking down on patent agencies that file these irregular applications and it has been earlier reported that CNIPA may withdraw some 400,000 patent applications, indicating this is a serious problem.

Source: China IP Law Update