Draft licensing measures offer patent holders a greater say in process

On 12 October 2011, the PRC State Intellectual Property Office (SIPO) issued the new Draft Measures for Compulsory Licensing of Patents for a period of public comment, which ended on 13 November 2011. In essence, the Draft Measures consolidate the existing body of regulations while creating limited procedural safeguards aimed at giving interested parties a greater measure of due process.

The Draft Measures give patent holders a greater voice in the compulsory licensing review process. Before issuing a licensing decision, SIPO must notify both the applicant and the patentee of the proposed decision, and the parties usually have the opportunity to submit arguments and supporting evidence. Under the current 2003 Measures, parties can only make submissions upon receiving notices of applications for compulsory licensing, and a patentee’s only recourse after SIPO grants a compulsory licence is to bring a civil suit in a PRC court.

Important to the pharmaceutical industry is the Draft Measures’ centralisation of the process of granting compulsory licences in case of a national emergency or an extraordinary state of affairs, or, for public interest purposes, both of which could cover pandemics or outbreaks of infectious diseases under the current regulations. The Draft Measures, together with the revised Patent Law and its Implementing Regulations, aim to strike a better balance between patent rights and the public interest.

Business Law Digest is compiled with the assistance of Baker & McKenzie. Readers should not act on this information without seeking professional legal advice. You can contact Baker & McKenzie by e-mail at danian.zhang@bakermckenzie.com