2024 was a standout year for intellectual property (IP) in China and around the world. In this article, Lydia Topping and Peter Mumford from Potter Clarkson LLP spotlight some of the most exciting IP developments from the Chinese market in 2024
China’s new patent extensions: A game-changer for innovators
Exclusivity for pharmaceuticals in China has taken a giant leap forward with the introduction of new patent term extension (PTE), a concept that originated in the US with the Hatch-Waxman Act of 1984. This move, part of an economic agreement with the US in January 2020, became effective with the new Chinese Patent Law and detailed guidelines published in January 2024.
The law allows for up to five years additional term for patents covering new drugs, with the total effective term not exceeding 14 years from the drug’s marketing approval date. The new PTE provisions apply to product patents, preparation method patents, and medical use patents of an active pharmaceutical ingredient in a “new drug”.
To qualify for PTE, the patent must be valid, not previously extended, and include drug-related technical solutions. Only one patent term can be extended per drug. The China National Intellectual Property Administration (CNIPA) examines PTE requests, allowing for observations or amendments before making a decision, which can be challenged.
The protection scope of PTE is narrower than the original patent, limited to the new drug for an approved indication. A new indication can support a new PTE but will only cover the new indication underlying the PTE.
China’s AI tool revolutionises copyright protection
China has unveiled the Copyright AI Intelligent Review Tool (版权AI智审), a groundbreaking advancement in IP law. This innovative system uses artificial intelligence to assist in the review and protection of copyrighted works, offering a robust digital solution to the challenges faced by courts and legal professionals. The tool streamlines the process of assessing originality, innovation, and potential copyright infringement.
One of the tool’s standout features is its advanced image recognition capability, which performs “image-to-image” searches to trace the origins of visual works and identify original creators, essential for establishing copyright ownership. Additionally, it evaluates the degree of innovation in a work and quantitatively assesses the similarity between images, aiding in potential copyright infringement determinations. Integrated within court management platforms, the tool provides judges with analytical resources during proceedings, enhancing decision-making and streamlining case resolutions with a high success rate in identifying similar designs.
The tool offers several benefits, including ease of use and cost efficiency. Its user-friendly interface is easy for judges and court staff to navigate, reducing the need for extensive training and lowering litigation costs by streamlining the evidence-gathering process. By automating the analysis of copyright cases, the tool significantly reduces the time required for assessments and minimises human error, leading to more precise rulings. Furthermore, it strengthens copyright law enforcement, empowering legal professionals to protect creators’ rights and combat infringement effectively.
In conclusion, the Copyright AI Intelligent Review Tool emerges as a vital resource for enhancing copyright litigation processes in today’s landscape where technology converges with law. Currently focused on image copyright infringement cases, it is anticipated that the tool will expand into broader applications in the future.
CNIPA’s good faith rule: Ensuring fair play in patents and trade marks
Revised Rules for the Implementation of the Patent Law came into effect on 20 January 2024. Article 11 of these Rules provides that “The patent application shall be made in accordance with the good-faith principle”. This principle, introduced to ensure ethical behaviour in intellectual property applications, aims to prevent the abuse of patent and trademark rights.
In patent examination, the principle, effective since June 2021, requires genuine invention activities and prohibits falsified applications or those intended to harm public interests. The 2024 implementation rules further emphasise adherence to good faith.
For trademarks, the principle has been in place since 2013 to prevent dishonest behaviours such as registering trademarks without intent to use or imitating well-known trademarks. Specific provisions published in 2019 detail behaviours that violate this principle.
The CNIPA can reject applications violating the good faith principle, maintaining a fair and transparent IP system in China. This helps promote ethical practices and strengthens the integrity of patent and trademark examinations.
CNIPA unveils new guidelines on trade mark license recordal procedure
On October 29, 2024, the China Intellectual Property Administration (CNIPA) released the Guidelines on Trade Mark License Recordal Procedure to help entities understand the law provisions and procedures related to the trade mark license recordal, and to clarify the validity of trade mark licenses.
A trade mark license is an agreement where the licensor (the trade mark owner) allows another party (the licensee) to use their registered trade mark under certain conditions.
According to the Guidelines, the licensor shall report the license to the CNIPA for recordal. A trade mark license not filed for recordal shall not be used against a third party in good faith. The CNIPA shall announce the recordal of trade mark licenses that meet relevant regulations, and the public can search for specific information at https://sbj.cnipa.gov.cn/sbj/index.html.
Moreover, the two parties of a license may expressly stipulate in the trade mark license on the following matters, including, but not limited to: the basic information of the trade mark, information on the items of goods or services, form of license, term of license, type and restriction of license, goods quality guarantee, and contract breach liabilities.
PPH improvement initiative: A boost for patent processing
In a bid to further enhance the user experience of the Patent Prosecution Highway (PPH), April 2024 saw the China National Intellectual Property Administration (CNIPA) join the “PPH Improvement Initiative”, which involves cooperation between the world’s five leading IP offices in China, the United States, Europe, Japan and the Republic of Korea.
The objective of this initiative is for patent offices to strive for an average response time from examiner to applicant to be three months (including from grant of a PPH request to the first official action), thereby providing PPH users with a more predictable examination cycle.
The Patent Prosecution Highway (PPH) Improvement Initiative offers several benefits for businesses and applicants. It aims to expedite patent processing, reducing the average duration for PPH requests to about three months, and provides a more predictable examination cycle. Enhanced cooperation between leading IP offices, including those in Europe and the UK, and work sharing between patent offices can streamline and make the patent application process more efficient. This initiative ultimately helps applicants by making patent applications in China and other jurisdictions involved faster, more predictable, and more efficient.
Lydia Topping is a trainee patent attorney and Peter Mumford is a senior associate with Potter Clarkson LLP, a full-service European intellectual property law firm.
