Rémunération d'invention de salarié proportionnelle à la valeur économique de l'invention étendue au secteur privé chinois par la nouvelle loi de brevets en CHINE entrée en vigueur le 1/02/2010

Site http://www.mwechinalaw.com/news/2010/chinalawalert0210b.htm

The Firm Our People Client Services News -------------------------------------------------------------------------------- .New Rules Regarding the Chinese Patent Law Take Effect Recent government issuances related to China’s newly amended Patent Law provide new challenges to multinational companies that operate research and development facilities within China.

-------------------------------------------------------------------------------- The amendment to the Chinese patent law (New Patent Law) went into force on 1 October 2009 and has brought many significant changes to the Chinese patent system. For more information, see MWE China Law Offices’ China Law Alert “China Passes Amendment to the Patent Law”.

As part of an effort to clear up such ambiguities, Chinese government authorities have issued the Implementing Regulations for the New Patent Law (Implementing Regulations), approved by the State Council on 9 January 2010, and the Examination Guide for Examiners (Examination Guide), issued by the State Intellectual Property Office (SIPO) on 21 January 2010. Both the Implementing Regulations and the Examination Guide officially went into effect on 1 February 2010.

The Implementing Regulations and Examination Guide provide much-needed specifics regarding the New Patent Law. However, many of these details offer new challenges to multinational companies operating within China. In particular, companies that have research and development facilities located within the mainland of China are well advised to pay close attention to how compulsory SIPO confidentiality examinations could affect filings to be made in other countries, and remuneration for on-duty inventions. Compulsory Confidentiality Examination Before Any Foreign Filing As required by Article 20.1 of the New Patent Law, for an “invention-creation made within China” (defined by the Implementing Regulations as an invention-creation whose substantive content has been made within the geographical territory of the mainland of China), before filing an application for a utility model patent or any similar patent protections in a foreign country, an applicant must first apply to SIPO for a confidentiality examination.

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Statutory Remuneration for On-Duty Inventions

With the promulgation of the Implementing Regulations, we observe that the Chinese government has provided a statutory method for compensation regarding on-duty inventions in the absence of an agreement entered into between an employer and its employee-inventor, or rules regarding on-duty inventions issued by the employer in a manner in accordance with the relevant labour laws. (An “on-duty invention” is an invention-creation made by one or more employee inventors in the course of their work duties for their employer.)

Simply put, a multinational company possessing research and development facilities in China is well advised to take into consideration the new default method of compensation for on-duty inventions contained within the Implementing Regulations. Otherwise, it might end up paying a substantial price for its heedlessness.

Under the Implementing Regulations, if a patent for an on-duty invention is granted to an employer, the relevant employer-inventor shall receive no less than RMB1,000 (for utility model or design patents) or RMB3,000 (for invention patents). More importantly, the Implementing Regulations also provide that an employer shall pay the relevant employer-inventor no less than the following:

•2 percent (for invention or utility model patents) or 0.2 percent (for design patents) of the profits derived from exploiting the patent in question

10 percent of all royalties related to any licenses granted to third parties regarding the patent in question. As such, in a scenario where the default standard in the Implementing Regulations is applicable to a company that generates revenue from its patent portfolio, it is clear that it could potentially be obligated to pay substantial sums to its employee-inventors for those on-duty inventions for which applications were filed after 1 February 2010. Therefore, any companies that operate research and development facilities within China should carefully consider their current policy regarding on-duty inventions as soon as possible.

中文版 Contacts John Z.L. Huang +86 21 6105 0588 johnuang@mwechinalaw.com Ken Huang +86 21 6105 0522 khuang@mwechinalaw.com Wade Zhu +86 21 6105 0511 wzhu@mwechinalaw.com -------------------------------------------------------------------------------- .MWE China Law Offices | 28th Floor Jin Mao Building | 88 Century Boulevard | Shanghai Pudong New Area | P.R. China 200121 Tel: +86 21 6105 0500 | Fax: +86 21 6105 0501 Disclaimer © 2010 MWE China Law Offices