Methods on the Administration of Recordal of Patent License Contract
( December 17, 2001 )
These Methods are enacted in accordance with the Contract Law of PRC, the Patent Law of PRC, the Implementing Regulations of the Patent Law of PRC, and related laws and regulations to ensure the protection of patent right, to standardize transactions thereof, and to promote the patent exploitation.
State Intellectual Property Office shall be responsible for the recordal of patent license contract (including license contract of patent application, hereinafter referred to as "patent contract") throughout the country.
The administrative authority for patent affairs of each province, autonomous region and municipality directly under the Central Government shall be responsible for the recordal of patent contract in the respective administrative regions (hereinafter referred to as local recordal administration) under the authorization of the SIPO.
The Assignor in these Methods refers to the patentee, patent applicant or any other proprietor in the patent contract, while the assignee refers to the other party in the patent contract.
The Assignor shall be the legitimate patentee, or patent applicant, or any other proprietor.
Where there are two or more joint patentees or patent applicants, the assignor shall be all patentees or patent applicants of the patent or the patent application.
The interested party shall go through recordal formalities within 3 months from the date the patent contract enters into effect.
Where the assignee with recorded patent license contract has evidence to prove any third party is executing or is to execute infringement of his patent right, and his legitimate right and interests shall suffer irreparable damages if the infringement is not duly prohibited, he may apply with the people's court for injunction on the said party's infringement of the patent right.
The assignee of the exclusive license contract of patent exploitation may on his own part file the application with the people's court in accordance with relative laws and regulations. The assignee of the sole license contract of the patent exploitation may file the application on conditions that the patentee does not file the same.
The assignee with recorded patent contract may request the local recordal administration to handle the patent infringement that is happening or has already happened in accordance with the provisions of Article 57 of the Patent Law.
The interested party shall go through formalities of foreign exchange, customs recordal of IP rights with the certificate of recordal of the patent contract.
The items recorded in the patent contract including the nature, scope, time, fees of license may be used as references in the mediation or determination of the damages of infringement dispute by the people's court or administrative authority for patent affairs.
The patent contract shall be signed in writing by the interested parties.
The patent contract may be signed in the format that is stipulated by the SIPO. Where any other contract format is adopted, it shall be in conformity with the laws.
Where any foreigner, foreign enterprise or any foreign organization having no habitual residence or business office in China files a recordal of the patent contract in China , he or it shall entrust a patent agency designated by the SIPO to handle the recordal of the patent contract in the country.
Where any Chinese entity or individual files the recordal of patent contract in the country, it/he may entrust a patent agency to handle the matter.
The interested parties shall fill in the application form of the recordal of the patent contract and sign or seal it in accordance with the articles in the contract.
Two copies of the following documents shall be filed for the recordal of the patent contract:
(1) Application Form of Recordal;
(2) Copies of the Contract;
(3) Duplicated copies of Patent Certificate or Notification of Receipt of Patent Application;
(4) Identity Certificate of the Assignor;
(5) Other douments.
The interested party shall file all the documents in Chinese in print form to be carried on one side of A4 paper. In case the filing documents are in foreign languages, the interested party shall submit the Chinese version thereof within the prescribed time limit. If the Chinese version is not submitted at the expiration of the time limit, the application shall be deemed not to have been submitted.
The patent contract shall not be recorded if it involves one of the following situations:
(1) where the patent right is terminated or declared invalid or the patent application is refused, withdrawn or deemed to be withdrawn;
(2) without consent of joint patentees or applicants, one patentee or applicant freely signs the patent contract with any other party;
(3) the same patent contract is repeatedly applied for recordal;
(4) term of patent contract exceeds the validity term of patent right;
(5) other situations not in conformity with laws.
The local recordal administration shall, after receiving the recordal application, duly report the application form of recordal to the SIPO in the format as required to confirm the legal status of the patent right or patent application right.
The local recordal administration shall issue the certificate for approval of recordal to the interested party within 7 days when the application for recordal of the patent contract conforms to the requirements. Where the application does not conform to the requirements, the local recordal administration shall issue the notification of refusal of recordal to the interested party.
The local recordal administration shall send its recordal comments and filing documents of the interested party to the SIPO within 3 days after completion of the recordal procedures.
The SIPO shall construct a database of recordal of patent contracts to administer the recordal data and for public search.
The SIPO shall register related content of recordal of the patent contract in the patent register book and publish the following content in the patent gazette: filing number of the contract, assignor, assignee, main classification number, patent number, patent application date, publication date of grant, contract nature, recordal date, term of the contract, and alternation of the contract.
Where the interested parties terminate the patent contract before the contract term expires, they shall go through the formalities of cancellation of recordal with the original recordal administration by submitting the termination agreement, recordal certificate and other relevant documents within 10 days from the executing date of the termination agreement.
Where the cancellation of the patent contract is not handled within the prescribed time limit, the original recordal shall continue to be effective until the expiration of the term of the original patent contract.
Where the term of a patent contract is prolonged, the interested parties shall go through the formalities of recordal alternation with the original recordal administration by submitting the alternation agreement, recordal certificate and other documents two months before the expiration of the term of the original contract.
Where other content in the patent contract is altered, it shall be handled in reference to the preceding paragraph.
Where the patent right is transferred in the process of implementation of the patent contract, such a transfer shall not bear any effect on the original patent contract unless it is otherwise provided by the interested parties.
Where a patent application is approved, the interested party shall duly alter the name of the license contract of patent application exploitation and related articles into license contract of patent exploitation.
Where a patent application is refused or is deemed to be withdrawn, the interested party shall duly manage the formalities for the cancellation of recordal of the patent contract.
Where the patent right is declared invalid during the fulfillment of the patent contract, the interested parties shall duly manage the formalities for the cancellation of recordal. The effectiveness of the decision of invalidation declaration on the fulfilled patent contract shall be in reference to the related laws.
Where a party files false documents of recordal or obtains or fabricates the recordal certificate for patent contract in illegal means, the local recordal administration shall cancel the contract recordal and impose due punishment.
Local recordal administrations shall strengthen professional training and assessment of the related persons and standardize administration of patent licence transaction in accordance with laws.
If any local recordal administration fails to fulfil its functions as required, the SIPO shall suspend or even revoke its qualification for recordal.
Days in these Methods mean the working days.
The SIPO shall be responsible for the interpretation of these Methods.
These Methods shall come into effect as of January 1, 2002 .