China IP SME Helpdesk Newsletter

In August 2021, the CNIPA published another draft of Patent Examination Guidelines for public comments. IP professionals and enterprises have been waiting for these Guidelines for quite some time to clarify how to the new concepts such as the patent linkage system and the open license system introduced by the amended Patent Law would work in practice. In this article, China IP SME Helpdesk external expert Toby Mak shares his thoughts on the draft Patent Examination Guidelines.

Good news for the SMEs that wish to file patent applications in China, the CNIPA is starting to monitor patent agencies more closely and penalize those involved in large quantities of abnormal patent applications. This will, hopefully, discourage the filing of abnormal patent applications, thus ultimately shortening the time needed for patent applications.

The Forum on International Cooperation in Fighting against IPR Infringements and Counterfeiting was held as a side event of the CIIE. During the Forum, China’s 14th Five-Year Plan on IP was discussed in greater detail. The 14th Five-Year Plan on IP emphasizes improved IP legislation and enforcement as well as calls for greater international cooperation in the area of IP protection.

In early November, the Beijing IP Court issued Guidelines on Submitting Trade Secret Cases. The guideline “specify what situations can be identified as trade secret infringement and what evidence should be provided if someone wants to sue the infringers”. The aim of the Guidelines is to facilitate trade secret enforcement, which has often been difficult in China. In addition, the analysis of latest trade secret cases demonstrated that 93% of the cases included a situation where an ex-employee had leaked their former employer’s trade secrets. This underlines the importance of signing non-disclosure agreements with your employees.

On 29 October, the Mediation Center of the China Council for the Promotion of International Trade released the “Mediation Rules for Intellectual Property Disputes of the Mediation Center of the China Council for the Promotion of International Trade/China Chamber of International Commerce” the Mediation Rules are in line with the international principles of mediation and are China’s first set of mediation rules dealing with IP cases between Chinese and international companies. These rules aim to make mediation a viable IP dispute resolution mechanism in international IP disputes.