China IP SME Helpdesk Newsletter

On 3 March 2021 China’s Supreme People’s Court published the “Supreme People’s Court Interpretation on the Application of Punitive Damages to the Trial of Civil Cases of Infringement of Intellectual Property Rights” which provides guidance to the Chinese Courts on how to apply the punitive damages provisions in IP infringement cases. In this article, China IP SME Helpdesk external expert Yu-An Chang and Stefaan Meuwissen from Hogan Lovells analyze the Interpretation. Both experts believe that the Interpretation will have a “profound impact on China’s IP practice and [that] the clarification it [the Interpretation] brings will encourage IP owners to make increasing use of punitive damages in China.”

On May 5, 2021, China’s Beijing Municipal Human Resources and Social Security Bureau published the “Catalogue of the Professions Where Foreigners Are Allowed to Take Exams to Get Qualification Certificates in the Integrated National Demonstration Zone for Opening up the Services Sector and China (Beijing) Free Trade Zone 1.0”. Amongst others, the Catalogue allows foreigners to take a patent bar exam to obtain patent agent qualification certificate and work in patent agencies in Beijing. This is good news for the European SMEs as it opens up a possibility of being able to use the help of a foreign patent agent for patent applications in China. It is significant because cultural differences and language barrier are often pointed out by SMEs as one of the main issues with patent applications in China.

On 6 May 2021, China National Intellectual Property Administration (CNIPA) issued the "Draft Amendment to Several Provisions Regarding the Regulation of Patent Applications (Exposure Draft)" for public consultations. The Exposure Draft aims to deal with the improper behaviours of patent applications, further improving China’s patent system.

According to the Chinese Government, China’s next Five-year plan (up to 2025) will include “strengthening intellectual property protection in high-tech industries”. While the Five-year plan foresees stronger patent protection and cracking down on trade mark squatting, SMEs should pay attention to tightening of controls on the overseas transfer of Chinese intellectual property as it could have impact on the SMEs’ cooperating with Chinese partners in China with the aim of importing the technology back to Europe.

During the State Council's Executive Meeting chaired by Premier Li Keqiang on 27 April, the Premier reiterated China’s commitment on reforming government functions regarding intellectual property. Among other measures, the time to review patent and trademark applications is expected to be shortened (in case of trade marks from 8 months to 7 months). China will encourage electronic patent and trademark registrations by further reducing review periods of electronic applications and prioritising electronic applications. EU SMEs should discuss this with their patent/trademark agents to make sure they benefit from reduced review times of electronic applications.