Measures for the Record Filing of Patent Licensing Contracts

(Promulgated by the State Intellectual Property Office on June 27 2011 and effective as of August 1 2011.)

Order of Sipo No.62

Article 1: These Measures have been formulated pursuant to the PRC Patent Law, the PRC Contract Law and related laws and regulations in order to duly protect patent rights, regulate patent licensing and promote the application of patents.

Article 2: The State Intellectual Property Office is responsible for the work associated with the record filing of patent licensing contracts nationwide.

Article 3: The licensor under a patent licensing contract shall be a lawful patent holder or other rights holder.

If a patent licensing contract is to be concluded for a co-owned patent, the consent of the other co-owners shall be secured, unless otherwise agreed by all of the co-owners or specified in the PRC China Patent Law.

Article 4: A patent licensing contract for which record filing is applied shall be made in writing.

When concluding a patent licensing contract, the uniform model contract formulated by the State Intellectual Property Office may be used. If another contract text is used, it shall satisfy the provisions of the PRC Contract Law.

Article 5: Parties shall carry out record filing procedures within three months from the date on which their patent licensing contract entered into effect.

Article 6: If a foreign national, foreign enterprise or other foreign organisation that does not have a permanent residence or business establishment in China is to carry out record filing-related procedures, it shall appoint a lawfully established patent agency to do so on his/her/its behalf.

When carrying out record filing-related procedures, a Chinese entity or individual may appoint a lawfully established patent agency to do so on its/his/her behalf.

Article 7: A party may carry out record filing-related procedures for a patent licensing contract by mail, by direct delivery or by other means as specified by the State Intellectual Property Office.

Article 8: When applying for record filing of a patent licensing contract, the following documents shall be submitted:

(1) an application form for the record filing of a patent licensing contract signed or stamped by the licensor or the patent agency appointed by him/her/it;

(2) the patent licensing contract;

(3) the proofs of identity of both parties;

(4) if a patent agency has been appointed, the power of attorney indicating the authority of the agency; and

(5) other materials that need to be provided.

Article 9: The patent licensing contract submitted by the parties shall include:

(1) the names and addresses of the parties;

(2) the number of patents and the name, patent number, filing date and grant gazette date of each patent; and

(3) the type and term of the licence.

Article 10: With the exception of the proof of identity, all of the other documents submitted by the parties shall be in Chinese. If a proof of identity is in a foreign language, it shall be accompanied by a Chinese translation thereof. If no such translation is included, the proof of identity shall be deemed as not having been submitted.

Article 11: The State Intellectual Property Office shall conduct an examination and render its decision on whether to grant record filing within seven working days from the date of receipt of the record filing application.

Article 12: Once a record filing application has passed the examination, the State Intellectual Property Office shall issue a Proof of Record Filing of a Patent Licensing Contract to the parties.

Record filing shall be withheld and a Notice of Withholding of Record Filing of a Patent Licensing Contract issued to the parties if any of the following circumstances applies to the record filing application:

(1) the patent has terminated or been declared invalid;

(2) the licensor is not the patent holder or another rights holder with the right to grant a licence as recorded in the patent registry;

(3) the patent licensing contract does not satisfy the provisions of Article 9 hereof;

(4) the term of the licence exceeds the term of validity of the patent;

(5) a co-holder of a patent concluded the patent licensing contract in violation of the law or in breach of an agreement;

(6) payment of the annual fee for the patent is in arrears;

(7) the relevant procedure for the patent has been suspended due to a dispute over the vesting of the patent rights or a people's court ruling to take preservation measures in respect of the patent;

(8) more than one application for record filing is made in respect of the same patent licensing contract;

(9) a pledge has been created over the patent, unless the pledgee has given its consent;

(10) there is a conflict with a patent licensing contract that has already been placed on the record; or

(11) another circumstance under which record filing should be withheld exists.

Article 13: If the State Intellectual Property Office discovers after the record filing of a patent licensing contract that any of the circumstances set forth in the second paragraph of Article 12 hereof applies to the record filing application and the same has not been eliminated, it shall cancel the record filing of the patent licensing contract and issue to the parties a Notice of Cancellation of the Record Filing of a Patent Licensing Contract.

Article 14: The relevant particulars of a patent licensing contract that has been placed on the record shall be recorded in the patent registry by the State Intellectual Property Office and the following particulars shall be announced in the patent gazette: the names of the licensor and licencee, main classification number, patent number, filing date, grant gazette date, type and term of the licence and record filing date.

If, after its record filing, a patent licensing contract is amended, de-registered or cancelled, the State Intellectual Property Office will effect the appropriate registration and gazetting.

Article 15: The State Intellectual Property Office has established a record filing database for patent licensing contracts. The public may consult it to determine the legal status of the record filing of patent licensing contracts.

Article 16: If parties wish to extend the term of a licence, they shall carry out the procedures for amendment of the record filing with the State Intellectual Property Office on the strength of the amendment agreement, proof of record filing and other relevant documents within two months prior to the expiration of the original licence term.

If other provisions of a patent licensing contract are to be amended, matters shall be handled with reference to the preceding paragraph.

Article 17: When the term of a licence expires or if a patent licensing contract is terminated early, the parties shall carry out record filing cancellation procedures with the State Intellectual Property Office on the strength of the proof of record filing, the termination agreement and other relevant documents within 30 days after the expiration of the term or conclusion of the termination agreement.

Article 18: If a patent that is the subject matter of a patent licensing contract that has been placed on the record is declared invalid or terminates prior to the expiration of the term, the parties shall carry out record filing cancellation procedures in a timely manner.

Article 19: The type or term of a patent licensing contract that has been placed on the record, the royalty calculation method or amount, etc. may serve as reference when a department responsible for the administration of patent work mediates the measure of damages for infringement.

Article 20: When parties apply for the record filing of a patent-application licensing contract, matters shall be handled with reference to these Measures.

When an application for record filing is made, record filing shall be withheld if the patent application is rejected, withdrawn or deemed withdrawn.

Article 21: When the record filing of a patent application licensing contract is applied for and the application is approved and the patent granted, the parties shall make the appropriate amendments to the title of the patent application licensing contract and relevant provisions in a timely manner. If the patent application is rejected, withdrawn or deemed withdrawn, the parties shall carry out record filing cancellation procedures in a timely manner.

Article 22: These Measures shall be effective as of August 1 2011. The Measures for the Administration of the Record Filing of Patent Licensing Contracts issued with Order No.18 of the State Intellectual Property Office on December 17 2001 shall be repealed simultaneously.