On November 15, 2021, the State Intellectual Property Office promulgated the Measures for the Registration of Pledged Patent Rights (the “Measures”). The Measures made substantive amendments to certain provisions of the Measures for the Registration of Pledged Patent Rights that was promulgated on October 1, 2020 (the “Original Measures”) to accommodate the move to delegate power, streamline administration and optimize government services in the field of intellectual property rights and to promote patent pledge financing. The important amendments to the Measures are summarized below.
1. Simplifying the process of pledge registration and adopting an ex ante commitment & ex post supervision approach in handling the registration of pledged patent rights. Pursuant to the relevant provisions of Articles 7, 13, 14, and 20 of the Measures, the parties may proceed with the registration of pledged patent rights by way of commitment. A party that makes the relevant commitment is not required to submit proof of identity, proof of change, proof of cancellation, and other supporting materials. The State Intellectual Property Office will strengthen the interim and ex post supervision and take corresponding disciplinary measures for breach of trust pursuant to relevant requirements.
2. Accelerating the speed of and reducing the time limit for registration review. Article 10 of the Measures reduces the review period for the registration of a pledged patent right by the State Intellectual Property Office from the original 7 working days to 5 working days, and the review period for online applications is further reduced to 2 working days. The corresponding review periods for the amendment or cancellation of the pledge registration are as stipulated in Article 10 above.
3. Reducing the circumstances for rejecting registrations. Under Article 11 of the Measures, the pledge registration may continue in the following circumstances: The parties agree to proceed with the registration of the pledged patent despite being informed of the initiation of an action to invalidate the patent; the parties agree to proceed with the registration of the pledged patent despite being informed that the same pledge registration applicant has a utility model patent that describes the same invention and creation for which an invention patent application has been filed on the same day; and the pledgee still allowing the registration of the pledged patent despite the pledge contract stipulating that the patent rights shall belong to the pledgee if the debt owed to the pledgee is not satisfied upon expiration of the debt performance deadline.
4. Providing online services and adding notifications. Under Article 6 of the Measures, a party may proceed with the registration of pledged patent rights through submitting electronic documents online, send hard copies by email or in person at service windows. In addition, under Article 19 of the Measures, if the State Intellectual Property Office has been requested to suspend relevant procedures due to disputes over the ownership of the patent rights, or if the people’s court imposes preservation measures on the patent rights, the State Intellectual Property Office shall timely notify the pledgee.