hina adopts an “early publication and delayed examination” system for invention patent applications. After the patent application is published, it is possible for a third party to know and implement the content of the invention. So during the period from the publication of the patent application to the authorization, is there any system to protect the interests of the applicant? Yes, “temporary protection (a.k.a. provisional protection) ” can achieve this purpose. This article will explore the relevant issues of temporary protection system for invention patents.
1. Provisions related to temporary protection
Article 13 of the Patent Law provides principles for temporary protection, i,e., after the publication of the application for a patent for invention, the applicant may require the entity or individual exploiting the invention to pay an appropriate fee.
Article 68 Paragraph 2 of the Patent Law provides prescription for instituting legal proceedings, i,e., where no appropriate fee for exploitation of the invention, subject of an application for patent for invention, is paid during the period from the publication of the application to the grant of patent right, prescription for instituting legal proceedings by the patentee to demand the said fee is two years counted from the date on which the patentee obtains or should have obtained knowledge of the exploitation of his invention by another person. However, where the patentee has already obtained or should have obtained knowledge before the date of the grant of the patent right, the prescription shall be counted from the date of the grant..
Article 85 of Rules for the Implementation of the Patent Law provides for the handling of disputes, the administrative authority for patent affairs may mediate in any dispute over the appropriate fee to be paid for the exploitation of an invention after the publication of the application for patent but before the grant of patent right at the request of the parties concerned.
In combination with other relevant litigation laws, the patentee can file a lawsuit in the court for the failure of mediation.
2. What conditions are needed for temporary protection?
1. The third party's exploitation must occur during the temporary protection period
The temporary protection period is from the date of publication of the invention application to the day before the granted patent right takes effect.
The publication made by the patent administration department in accordance with Article 34 of the Patent Law includes the publication of the invention patent application 18 months from the filing date and the earlier publication made at the request of the applicant. If the applicant self-discloses his invention patent application before publication according to law, the effect of temporary protection will not be produced.
From the date when the invention patent is granted, the protection that the original applicant and subsequent patentee can obtain is no longer temporary protection, but formal protection. Therefore, the end of the temporary protection is the day of the authorization announcement (not including that day).
2. The invention implemented by a third party falls into the protection scope of the invention patent application
If the applicant wants to obtain temporary protection, he must also satisfy that the technical solution used by the third party falls within the scope of protection at the time of application, but also falls within the scope of protection after authorization.
3. The temporary protection shall be claimed after the patent application being granted
According to Article 85 of Rules for the Implementation of the Patent Law, if a dispute occurs during the temporary protection period, if the party requests mediation by the administrative department of patent work, it shall be submitted after the patent right is granted.
The invention patent application may be not granted the patent right after substantive examination or other reasons. If the above-mentioned disputes are dealt with during the temporary protection period, the mediation of the administrative department of patent work or the judgment of the court will lose the legal basis, thus causing a waste of administrative or judicial resources. Therefore, if the applicant wants the implementer to pay a reasonable fee during the temporary protection of the patent, it shall be submitted after the patent right is granted.
3. How to determine “the appropriate fee”?
The third-party implementation is aimed at the technical solution published in the invention patent application, not the technical solution disclosed after the authorization, so it is not a patent infringement in the sense of the patent law. The amount of infringement compensation stipulated in the relevant laws cannot be fully applicable, but it is also of reference value for the determination of the appropriate fee.
In the case that the invention patent has been externally licensed, under normal conditions, the patent license fee can be used as a reference basis for reasonably determining the "appropriate fee". When there is no patent license fee for reference, the court may reasonably determine an appropriate fee based on factors, the circumstances of the invention patent, the subjective status of the implementer etc.
Temporary protection provides an expectation of rights and interests for applicants who have not obtained patent rights. It is an important system for protecting the interests of applicants for invention patents.