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To clarify the guidelines adopted when dealing with issues related to national standards which involve patents, as well as to provide basis for regulating administration of national standard matters, the Standardization Administration of the PRC (SAC), pursuant to China’s Standardization Law, Patent Law, the Regulatory Measures on National Standards, and other relevant laws and rules, is in the process of promulgating the Regulatory Measures on National Standards Involving Patents- Interim Measures (hereinafter referred to as “Measures”), and the SAC will, upon receipt of comments from the general public, proceed with further discussion regarding the promulgation of the “Measures.” The major content of the proposed “Measures” is as follows:
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| I. |
General Principles
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1. |
The Measures are applicable to the handling of patent-related issues during the formulation, revision and implementation of national standards.
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2. |
The term “patents” as used in the Measures refer to valid patents and pending patent applications.
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3. |
Patents involved in national standards shall be essential patents, which are needed when implementing national standards.
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The department in charge of standardization administration under the State Council is neither responsible for verifying whether national standards involving patents, nor responsible for verifying the authenticity of materials submitted by patentees/patent applicants and/or the validity of patents involved in national standards as well as the scope of claims of patent applications.
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5. |
The department of standardization administration under the State Council is not responsible for identifying whether national standards involving patents, not responsible for verifying the authenticity of materials submitted by patentees/patent applicants, and not responsible for identifying the validity of patents involved in national standards and the scope of claims of patent applications.
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| II. |
Disclosure of Patent Information
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For an organization or an individual who participates in the formulation or revision of national standards, it/he/she shall timely disclose to the special technical committee or the in-charge government agency the essential patents it/he/she is aware of, and provide the information concerning the concerned patent and the corresponding evidentiary document(s).
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For an organization or an individual who does not participate in the formulation or revision of national standards but who have knowledge of concerned patent(s) at any time during the national standard formulating or reviving process, it/he/she is encouraged to provide in writing to the relevant technical committee or the in-charge government agency the information related to the concerned patent.
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When seeking comments from the general public regarding a national standard proposal, if the said national standard proposal submitted by the special technical committee or the in-charge government agency involves patent(s), the department of standardization administration under the State Council shall publish the patent information.
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4. |
Where an organization or an individual participating in the formulation or revision of national standard fails to disclose the information related to the essential patent(s), which is possessed thereby, as required by the Measures, such organization or individual shall be held responsible for the corresponding legal liabilities.
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| III. |
Patent Licensing Declaration
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1. |
During the process of formulating or reviving national standard involving patent(s), the technical committee or the in-charge government agency shall timely obtain a patent licensing declaration from the patentee/patent applicant. Such declaration shall be made by the patentee/applicant with a selection among the following three options:
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(1) |
The patentee/patent applicant is willing to grant to any organization or individual a free-of-charge license on a reasonable and non-discriminatory basis for practicing the patent when implementing the national standard;
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(2) |
The patentee/patent applicant is willing to grant to any organization or individual a license on a reasonable and non-discriminatory basis for practicing the patent when implementing the national standard; and
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(3) |
The patentee/patent applicant is not willing to license the patent as stated in option (1) or option (2) above.
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2. |
If option (3) is chosen by the patentee/patent applicant, i.e., if the patentee/patent applicant is not willing to license its/his/her patent through option (1) or option 2, the standard shall not include any provision related to the said patent.
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When submitting a national standard proposal involving patent(s) for approval, the special technical committee or the in-charge government agency shall submit to the department of standardization administration under the State Council the concerned patent information, the corresponding evidentiary document(s) and the patent licensing declaration. A national standard proposal involving patent(s) but with no corresponding patent licensing declaration shall be put on hold and shall not be authorized for publication.
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Where, after publication of a national standard, it is found that such standard involves patent(s) but with no patent licensing declaration, the department of standardization administration under the State Council shall instruct the special technical committee or the in-charge government agency to obtain a patent licensing declaration from the patentee/patent applicant within the specified time period, and respond to the department of standardization administration under the State Council afterward. If the patentee/patent applicant refuses to provide the aforesaid patent licensing declaration, implementation of the affected national standard shall be suspended, and the department of standardization administration under the State Council shall instruct the special technical committee or the in-charge government agency to revise such national standard.
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Where a patent licensing declaration has been disclosed to the technical committee or the in-charge government agency, if the patentee/patent applicant transfers or assigns the said patent to another person, it/he/she must warrantee that the patent licensing declaration as stated above shall bind on the assignee.
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| IV. |
Special Requirements for a Mandatory National Standard Involving Patent(s)
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In principle, a mandatory national standard shall not involve patent(s).
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Where a mandatory national standard involving patent(s) is necessary, the department of standardization administration under the State Council, the department of patent administration under the State Council, other relevant agency(s) as well as the patentee/patent applicant shall jointly negotiate for a solution on how to work out the patent issues. If no consistent conclusion can be reached, such national standard shall be put on hold with respect to its approval and publication.
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Prior to allowing and publishing a mandatory national standard which involves patent(s), the department of standardization administration under the State Council shall publish the full text of the standard as well as the known patent information for a period of 30 days. Any organization or individual may notify the department of standardization administration under the State Council in writing additional patent information known to it/him/her.
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| V. |
Supplementary Rules
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When substantially adopting an international standard developed by the International Organization for Standardization (ISO) and the International Electro technical Commission (IEC) as a national standard, the patent licensing declaration involved in such international standard is equally applicable to the national standard. In addition, when adopting an international standard, the requirements mentioned in Items I-IV shall be followed.
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During the process of formulating or reviving a national standard involving patent(s), the specific disclosure regarding patent information and the concerned patent licensing declaration shall follow the requirements set out in GB/T “Special Procedures for the development of Standards Part 1: Standard Related to Patents”.
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3. |
With respect to the requirements for proving patent information related to a national standard, the standards set out in GB/T 1 “Directives for Standardization” shall follow.
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4. |
When formulating or revising a sector standard or a local standard, if such standard involves patent(s), the Regulatory Measures on National Standards Involving Patents- Interim Measures may be followed.
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5. |
The department of standardization administration under the State Council shall be empowered to interpret the Regulatory Measures on National Standards Involving Patents- Interim Measures.
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Interfacing or conflicting issues between patent right and standards have been one of the most concerned issues by industries. If guidelines for dealing with such issues can be provided, it can not only provide guidance regarding handling of such issues in the future, but also provide general directions for industries to plan for their technology development and handling issues related to standard. Lee and Li will closely watch the promulgation development of the Regulatory Measures on National Standards Involving Patents- Interim Measures, and keep our clients advised in due course. If you have any question regarding the proposed Measures, please do not hesitate to let us know and we will coordinate with our alliance firms in China (Lee and Li-Leaven Agency in Beijing as well as Leaven Attorneys-at-Law in Shanghai) and provide comments for your reference.
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