Written By Haoyu ZHOU (Elliot) and Xiao HAN (Nicole)

In order to further crack down the abnormal (low-quality) patent filing behaviors in China, China National Intellectual Property Administration (CNIPA) released <Draft Amendment to Several Provisions Regarding the Regulation of Patent Applications> on 6^th May, 2021 for the public to provide comments.

While the Amendment has clarified the criterion for being identified as abnormal (low-quality) patent filing behaviors, the Amendment also, for the first time, clarified the examination procedure for abnormal (low-quality) patent applications, and clearly stated that “abnormal filing behavior” can be used as a ground for rejecting a patent application during the patent examination and patent re-examination procedures. Interestingly, this would be a first ever ground for rejecting a patent application based on a government policy, but not the patent law.

Article 3 of the Amendment defined 9 types of behaviors as abnormal patent filing behaviors, including:

(1) Where the contents of several patent applications as filed are apparently identical, or are essentially formed by a simple combination of different features or elements;

(2) Where the patent application as filed contains made-up, falsified or altered contents, experimental data or technical effects, or is a copy, a simple substitution or a patchwork of prior arts or prior designs;

(3) Where the contents of multiple patent applications as filed are primarily randomly generated by computer and related technologies;

(4) Where the contents of the patent application as filed is apparently inconsistent with the common sense of technical improvement or design, or where the patent application worsens, piles up, or unnecessarily limits the scope of protection;

(5) Where the content of the patent application as filed is apparently inconsistent with the applicant’s or the inventor’s actual research capabilities and resource conditions;

(6) Where multiple patent applications which are substantially related to a certain entity, a certain individual, or a certain address are separately filed in a malicious manner, filed consecutively, or filed from different addresses;

(7) Where the right to apply for a patent or the patent right is transferred out or transferred in for improper intentions, or where the inventor or the designer is falsely changed for improper intentions;

(8) Where the patent agency, patent agent, or any other institutions or individuals, represent, induce, abet, or assist others, or collude with others in conducting any abnormal patent filing behaviors; and

(9) Other abnormal patent filings behaviors in violation of the principle of good faith and disturbing the normal order of patent work.

In addition, the Amendment also mentioned the possibility of taking a criminal responsibility for abnormal filing behaviors. Namely, for entities or individuals who have committed the acts stipulated in Article 3 above, if they are suspected of constituting a crime in accordance with the Criminal Law of the People’s Republic of China, they shall be transferred to relevant institutions for investigation of criminal responsibility. Interestingly, this will be another circumstance, in addition to the circumstance of patent passing off, where patent-related behaviors would be subjected to criminal responsibilities.

If you have any questions regarding this topic or any other topics in relation to the CN patent law and practices, please feel free to contact Mr. Haoyu ZHOU (Elliot) and Ms. Xiao HAN (Nicole) at patent@foundin.cn.