New measures govern filing of patent licensing contracts

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New measures govern filing of patent licensing contracts

On 27 June, the State Intellectual Property Office issued the Filing of Patent Licensing Contracts Measures, which came into effect on 1 August. The Measures have been brought into line with the revised the PRC Patent Law and its implementing rules. The Measures, which have 22 articles, cover the forms and particulars of a patent licensing contract that must be filed for the record, the deadline for filing procedures, the documents to be submitted for the filing, and the grounds for refusal of filing.

Parties and procedures

Any party that licenses a patent must be a lawful patentee or an owner of other rights. Where a patent licensing contract involves a jointly owned patent, the consent of the other joint owners must be obtained, unless otherwise agreed by all joint owners or provided under the Patent Law. The parties to the contract must complete the filing formalities within three months of the effective date of the contact. Foreigners without an ordinary residence and enterprises or other organizations without a place of business in China should appoint a patent agency established by law to carry out filing procedures. Chinese entities or individuals can handle such procedures on their own.

Required documents

The Measures provide that when applying to file a patent licensing contract for the record, an applicant should submit an application form (signed by the licensor or its agent), a licensing contract, proof of identity and powers of attorney (if applicable) of the parties, and other documents. The previous requirement to submit the documents in duplicate has been abolished. The Measures require a patent licensing contract to include the names, addresses and patent numbers of the parties as well as the name, number, application date, announcement date of patent grant, type and duration of licensing of each patent.

Filing period, refusal to file

The State Intellectual Property Office should review a filing application and decide whether to approve it within seven working days of receipt of the filing application. An acknowledgement of filing will be issued to the party if the filing is approved. Filing will be rejected in several cases, e.g. where the patent has been terminated or declared null and void; where the licensor does not have the relevant standing; where the licensing contract does not meet the requirements; where the licensing period exceeds the validity of the patent right; where joint patentees entered into a patent licensing contract in breach of laws or an agreement; where the patent right is in abeyance due to failure to pay annual fees; where the procedures for the grant of the patent were terminated due to an ownership dispute or measures imposed by a court; where the filing application was made repeatedly; where the patent was pledged and the licensing was not approved by the pledgee; or where there is a conflict with a filed patent licensing contract. If filing is rejected, a notice of rejection will be given to the party concerned.

The measures also govern the revocation, announcement, alteration and cancellation of the filing of a patent licensing contract, and set out other application procedures.

Business Law Digest is compiled with the assistance of Haiwen & Partners. The authors can be emailed at baochen@haiwen-law.com. Readers should not act on this information without seeking professional legal advice.