Rules on Patent Commissioning

Rules on Patent Commissioning

State Council of the People's Republic of China Decree No 76

CHAPTER I — GENERAL PRINCIPLES

Article 1.    

These Rules are formulated to protect the legal rights and interests of patent agencies and commissioning parties and to ensure the normal order of patent commissioning work.

Article 2.    

The term "patent commissioning" as used in these Rules shall refer to the handling by a patent agency, within the scope of its delegated authority, of a patent application or other patent-related matters on behalf of a commissioning party.

CHAPTER II — PATENT AGENCIES

Article 3.    

The term "patent agency" as used in these Rules shall refer to a service organ which, on accepting the commission of a commissioning party, applies for a patent or handles other patent-related work within the authorised scope of its commission.

Patent agencies shall include:

(1) patent agencies handling foreign patent work;

(2) patent agencies handling domestic patent work;

(3) law firms handling domestic patent work.

Article 4.    

To establish a patent agency, it shall be necessary to meet the following criteria:

(1) have one's own name, constitution and fixed office premises;

(2) have the necessary capital and work facilities;

(3) be financially independent and have the ability to meet civil liabilities independently;

(4) employ at least three full-time personnel with patent agent qualifications and a proportionate number of part-time personnel with patent agent qualifications pursuant to the stipulations of the State Patent Office.

A law firm engaging in patent commissioning work must employ the relevant number of full-time personnel pursuant to the provisions of item (4) above.

Article 5.    

When applying to a patent administration authority to establish a patent agency, the following documents must be submitted:

(1) an application to establish a patent agency in which is clearly stated the proposed name of the patent agency, its office premises and the name of the person in charge;

(2) constitution of the patent agency;

(3) names of patent agents and their qualification credentials;

(4) written testimony on the state of the patent agency's funds and facilities.

Article 6.    

A patent agency applying to establish and handle domestic patent work or a law firm applying to handle patent commissioning work shall, after obtaining the approval of its governing authority, apply to the patent administration authority in its province, autonomous region or directly administered municipality for an inspection. In the absence of a governing authority, an inspection application may be lodged directly with the patent administration authority in its province, autonomous region or directly administered municipality. After approving an application subject to such an inspection, the inspection authority shall report the details to the State Patent Office for examination and approval.

A patent agency applying to establish and handle foreign patent work shall do so pursuant to the relevant provisions of the Patent Law of the People's Republic of China. Subject to approval from the State Patent Office, a patent agency which handles foreign patent work may also handle domestic patent work.

Article 7.    

A patent agency may legally commence patent commissioning work on the date of approval of its establishment and shall enjoy civil rights and bear civil liabilities.

Article 8.    

A patent agency may undertake the following work:

(1) providing patent-related consultancy;

(2) preparing, on commission, patent application documents and handling patent applications; handling matters related to requests for a substantive inspection or reinspection;

(3) handling matters related to raising objections and requesting rights or patent rights, as well as the licensing of patents;

(4) handling matters related to the assigning of patent application rights or patent rights, as well as the licensing of patents;

(5) accepting invitations to appoint patent agents to serve as patent advisors;

(6) handling other relevant matters.

Article 9.    

When a patent agency accepts a commission and undertakes work, a letter of appointment signed by the commissioning party shall clearly state the commissioned items and the extent of authority of the commission.

If necessary, a patent agency may appoint a patent agent of the commissioning party's choice to handle commissioned work.

A patent agency which accepts a commission and undertakes work may charge fees pursuant to relevant State regulations.

Article 10.    

After accepting a commission, a patent agency shall be prohibited from accepting the commission of a rival commissioning party in relation to patent work of the same content.

Article 11.    

A patent agency shall appoint as patent agents those personnel with a Patent Agent Qualification Certificate. After employment, a patent agent shall complete employment procedures and the patent agency shall issue a Patent Agent Work Permit and report the relevant details to the State Patent Office for its records.

Only after completion of a one-year probationary period may a patent agency issue a Patent Agent Work Permit to a patent agent engaging in such work for the first time.

If a patent agency dismisses a patent agent which it appointed, it shall promptly recover the party's Patent Agent Work Permit and report the relevant details to the State patent Office for its records.

Article 12.    

A patent agency which changes its name, address or the person in charge shall apply to the State Patent Office to register the amendment. Such an amendment shall take effect only after its approval and registration.

In the event of a patent agency ceasing operations, it shall, after appropriately handling all uncompleted business, report to its original inspection authority and this authority shall carry out the relevant procedures with the State Patent Office.

Article 13.    

If, due to a change in circumstances, an approved patent agency no longer meets the requirements stipulated in Article 4 of these Rules and will still be unable to meet these requirements within one year, the original patent administration authority which approved its establishment shall suggest to the State Patent Office that its status as a patent agency be revoked.

CHAPTER III — PATENT AGENTS

Article 14.    

The term "patent agent" as used in these Rules shall refer to a person holding a Patent Agent Qualification Certificate and issued with a Patent Agent Work permit.

Article 15.    

Any Chinese citizen who upholds the Constitution of the People's Republic of China may apply to be a patent agent if able to meet the following criteria:

(1) is at least eighteen years of age with full capacity for civil actions;

(2) is a graduate of a tertiary institute or university in science or engineering (or an equivalent academic standard) with a command of one foreign language;

(3) well-versed in patent law and related legal knowledge;

(4) have worked for at least two years in a scientific, technical or legal field.

Article 16.    

After a patent agent examination commission examines and approves an application, the party applying to be a patent agent shall be issued with a Patent Agent Qualification Certificate by the State Patent Office.

A patent agent examination commission shall comprise of the State Patent Office, relevant State council departments and relevant persons from patent agents organisfations.

Article 17.    

A patent agent shall only handle patent commissioning work assigned by its patent agency and shall be prohibited from accepting private commissions.

Article 18.    

A patent agent shall be prohibited form undertaking patent commissioning work in two or more patent agencies simultaneously.

Before leaving a patent agency, a patent agent must appropriately deal with all uncompleted commissions.

Article 19.    

If a person issued with a Patent Agent Qualification Certificate fails to engage in any patent commissioning work or patent administrative control work over a five-year period, the said Qualification Certificate shall automatically be rendered invalid.

Article 20.    

A patent agent shall be prohibited from applying for a patent while engaged in patent commissioning work or within one year of ceasing involvement with such work.

Article 21.    

A patent agent shall receive the protection of State laws when lawfully executing patent commissioning work and no unit or individual may interfere.

Article 22.    

The staff of State authorities shall be prohibited from working part-time for a patent agency and from engaging in patent commissioning work.

Article 23.    

Except if a patent application has already been publicly announced, a patent agent shall be liable for maintaining confidentiality in relation to the content of any invention which he may become aware of in the course of his work as patent agent.

CHAPTER IV — PENALTIES

Article 24.    

A patent agency's governing authority or the patent administrative authority of the relevant province, autonomous region or directly administered municipality may issue a warning to a patent agency or, in serious circumstances, the State Patent Office may cancel its status as a patent agency if the patent agency is involved in any of the following acts:

(1) practising fraud by concealing the truth when applying for establishment approval;

(2) altering an important item of registration without authorisation;

(3) accepting and handling, without authorisation, patent commissioning work without first undergoing examination and approval or work beyond its approved scope of operations;

(4) engaging in other illegal activities.

Article 25.    

A patent agency employing a patent agent shall issue criticism in a minor case of violation or, in serious circumstances, shall dismiss the agent and recover his Patent Agent Work Permit, while the patent administrative authority of the relevant province, autonomous region or directly administered municipality may issue the offender with a warning or the State Patent Office may revoke his Patent Agent Qualification Certificate if the patent agent is involved in any of the following acts:

(1) failing to fulfil official duties or harming the interests of a commissioning party by not executing these duties correctly;

(2) disclosing or stealing the content of a commissioning party's invention;

(3) exceeding the powers of a commission, thereby harming the interests of the commissioning party;

(4) privately accepting a commission and accepting a fee for the patent commissioning work thus undertaken.

If a commissioning party sustains a financial loss as a result of any of the aforesaid acts, the relevant patent agency may, after accepting liability for the required amount of financial compensation, seek repayment from the patent agent involved pursuant to a set ratio.

Article 26.    

If a patent agency ordered to cease operations by the State Patent Office or a patent agent whose Patent Agent Qualification Certificate is revoked disagree with the said penalty decision, an application for reconsideration of the case may be lodged with the State Patent Office. If the aforesaid agency or agent still disagrees with the reconsidered decision, legal proceedings may be initiated with the People's Court within 15 days of receiving notice of the reconsidered decision.

CHAPTER V — SUPPLEMENTARY PRINCIPLES

Article 27.    

The State Patent Office shall be responsible for interpreting these Rules.

Article 28.    

These Rules shall take effect from 1 April 1991. The Provisional Regulations on Patent Agencies, approved 4 September 1985 by the State Council and promulgated 12 September 1985 by the State Patent Office, shall be annulled simultaneously.