(A Series of Articles about New Chinese Patent Examination Guideline 2023)

Written by Haoyu ZHOU(Elliot)

Partner, Patent Attorney, Foundin IP

 

The updated Chinese Patent Examination Guideline (2023), effective from January 20, 2024, has announced a raised standard for change of inventor in the patent bibliographic information. Basically, the new Guideline increased the degree of difficulty for change of inventor in the case of missing out of inventors or erroneously filling of inventors.

 

According to the Guideline Part I, Chapter I, Section 6.7.2.3, for a Chinese patent application where an inventor is missed out or erroneously filled into the application, a request for change of inventor can be submitted to the CNIPA within one month from the date when the application is accepted by the CNIPA. The certifying document for change of inventors must be signed by all of the applicants AND all of the inventors both before and after the change. The applicant must also submit a statement declaring that the inventor(s) after the change are indeed the personnel who made inventive contribution to the substantive features of the present invention.

 

The biggest change of the procedure is the strict time limit of “one month” period during which applicants are allowed to change inventors if any inventors are missed out or mistakenly added. In other words, the new Guideline does not permit applicants to freely swop inventors during the subsequent patent prosecution, patent invalidation or patent litigation proceedings. This used to be a problem under the old Law because there were no clear rules and regulations on the change of inventors. As a result, some patent owners would like to play the trick by changing inventors from time to time in a patent, such that all the inventors as listed could enjoy some sort of remunerations, subsidies, improved performance evaluation, or even opportunities to get promoted. The new Guideline apparently wants to constrain such a behavior of willful change of inventors.

 

The second change of the procedure is that the Guideline requires all the inventors after the bibliographic change to sign on the document. This prevents some inventors from being falsely listed in a patent without even knowing about the situation. Patent applicants or owners are also required to confirm that the inventor(s) after the change are true inventors who have made substantive contribution to the invention.

 

This reminds me of a patent invalidation case that we represented a few years ago. When we tried to request for invalidation of a Chinese patent based on the ground of “a failure to obtain the foreign filing license before filing patent application abroad”, the patent owner slyly replaced all the listed Chinese inventors with a US inventor during the course of the invalidation proceeding, and the patent owner argued that the invention was not made in China, so it was not necessary to request for foreign filing license at the very beginning. At that time, due to the lack of relevant laws and regulations, the invalidation board of the CNIPA would have to allow the change of inventors and thus did not accept our argument for invalidation. But, if this proceeding were still ongoing today, we believe the new Guideline (2023) would not permit the patent owner to change the inventor list so casually and easily.

 

In summary, for any future patent applications to be filed in China, it is important for applicants to double check the inventor lists after the application is filed in China. If there are any inventors missing out or mistakenly added, applicants will only have a short one-month time to request for a change.

 

If you have any questions in relation to the Chinese patent practice or any suggestions on our next article or webinar, please feel free to contact me (Mr. Elliot ZHOU) at patent@foundin.cn .

 

Haoyu ZHOU(Elliot), Partner and Patent Attorney