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.

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.