Introduction

In the realm of intellectual property, the patent implementation license agreement is a critical legal instrument. This article delves into the intricacies of the patent implementation license agreement record, providing a step-by-step guide for those navigating the process in China. Whether you are a domestic entity or an international player, this comprehensive overview will equip you with the knowledge needed to comply with Chinese patent laws and regulations.

 

What is a Patent Implementation License Agreement Record?

The patent implementation license agreement record refers to the process by which patent administrative authorities or departments authorized by them file and archive effective patent implementation license agreements, making them publicly available. According to the implementing rules of the Patent Law and the Measures for Recording Patent Licensing Agreements (also known as No.62 Office Order of China National Intellectual Property Administration, CNIPA), parties to a patent implementation license agreement must record the agreement within three months of its effectiveness at the designated department of the CNIPA.

 

Where to Handle the Record of Patent Implementation License Agreements?

For agreements where both parties are Chinese entities or individuals, the record can be filed at the local branches set up by CNIPA or at the Patent Matters Service Division of Preliminary Examination and Flow Management Department of the Patent Office of the CNIPA. If parties involve foreigners, foreign enterprises, or foreign organizations, they must file at the Patent Matters Service Division of Preliminary Examination and Flow Management Department of the Patent Office of the CNIPA. Parties from Hong Kong, Macao, and Taiwan are subject to the same requirements as foreign parties.

Documents can be submitted in person, by mail, or online. The mailing address is: Patent Matters Service Division of Preliminary Examination and Flow Management Department, Patent Office, China National Intellectual Property Administration, No. 6 Xituchenglu, Jimenqiao, Haidian District, Beijing. Postal Code: 100088. For inquiries, call 010-62086383 or fax 010-62085860. Please mark “For Agreement Recording” on the envelope.

 

Is There a Fee for Filing a Patent Implementation License Agreement Record?

There is no fee for the service provided by the Patent Office under CNIPA and local patent offices for recording patent implementation license agreements.

 

Can Foreign Patent Implementation License Agreements be Recorded in China?

No, a patent implementation license agreement that includes both Chinese patents and patents from other countries or regions will only receive a record certificate for the Chinese patents from CNIPA.

 

Is it Mandatory to Entrust a Patent Agency for the Record Process?

If both the licensor and licensee are Chinese entities or individuals, they can entrust a patent agency or a person with full civil conduct capacity to handle the record-related business procedures. Parties from Hong Kong, Macao, and Taiwan follow the requirements for foreign parties.

 

Can Unexamined Patent Application Implementation License Agreement be Recorded?

Unexamined patent applications can also be recorded, but unannounced patent applications will not be publicly announced by CNIPA. Once the recorded patent application is announced, CNIPA will make a public announcement. If a recorded patent application is rejected, withdrawn, or deemed withdrawn, parties must promptly handle record changes or cancellation procedures.

 

How Long Does it Take to Obtain a Record Certificate?

According to the “the Measures for Recording Patent Licensing Agreements”, the recording department will issue a record certificate within seven working days of receiving the complete record materials. Typically, CNIPA issues the certificate within five working days. If there are defects in the submitted record application documents, the review period starts from the date the applicant overcomes all defects.

 

Must the Licensor be the Patentee (Patent Applicant)?

Usually, the licensor must be all patentees (applicants), except in two cases: when the licensor has been authorized by all patentees to grant others the right to implement the patent, or when co-owners of the patent application right or patent right grant others the right to implement the patent in the form of a simple license as stipulated by Article 15 of the Patent Law of the People’s Republic of China.

 

Common Reasons for Non-Record of Patent Implementation License Agreements

According to the “the Measures for Recording Patent Licensing Agreements”, the following situations will not be recorded:

1. The licensor is not a legal patentee, patent applicant, or other rights holder.

2. Co-owners of the patent right violate the law or agreement when establishing the patent implementation license agreement.

3. Duplicate applications for the same patent implementation license agreements.

4. Conflicts with already recorded patent implementation license agreements.

5. The patent right is pledged, unless consented to by the pledgee.

6. The implementation license period exceeds the validity period of the patent right.

7. The patent right has been terminated or declared invalid.

8. The patent right is in arrears for the payment of annual fees.

9. Disputes over the ownership of the patent right occur, or the People’s Court orders preservation measures for the patent right, and the procedures related to the patent right are suspended.

Note: In cases where the patent right is partially declared invalid, parties must submit proof that the licensee consents when handling the license record procedures.

 

How to Fill Out the Patent Implementation License Agreement Record Application Form?

1. If the record involves more than three patents and cannot be fully filled out in the application form, parties can add an additional page following the patent number and name table in the application form to fill in the remaining patent information. The patent numbers on the additional page must not duplicate those in the application form.

2. The number of patent items, the name of each patent, patent (application) number, type of license, scope of patent license, effective date of the agreement, termination date of the agreement, and usage fee and payment method are mandatory contents that must be agreed upon in the patent implementation license agreement, and parties should fill in the relevant information according to the agreement.

3. The scope of the patent license refers to the geographical scope, and since the patent right has geographical limitations, this scope must not exceed China.

4. The usage fee should be settled in RMB or USD. If settled in other currencies, it must be converted into an amount in USD based on the foreign exchange rate at the time of agreement signing. If the payment method is gratuitous, the usage fee should be filled in as zero.

5. If parties do not entrust a patent agency to handle the procedures, the name of the agency does not need to be filled in.

6. The application form must be signed or stamped by the licensor and the agent. If parties entrust a patent agency, the patent agency’s official seal must be affixed.

 

How to Handle Changes in Patent Implementation License Agreement Records?

Parties handling changes in patent implementation license agreement records must submit the following documents, one copy each:

a. Patent Implementation License Agreement Record Change Application Form (standard form, available for download on the CNIPA website).

b. Contract change agreement or change proof. The change agreement must be signed or stamped by all stakeholders and be clear and legible. If the rights subject of the licensing parties remains unchanged, and only the name or name changes, there is no need to submit a change agreement signed by both parties. If the licensee or licensor’s name changes, the original name change proof issued by the relevant competent department must be submitted. If the licensor’s name changes (except when the licensor is not the patentee), the patent record item change procedures must be handled at the Patent Office first. After receiving the qualified notice, then handle the patent license agreement record change procedures, at which point a copy of the licensor’s name change proof can be submitted.

c. Original power of attorney. The power of attorney must be signed or stamped by the licensor, licensee, and the entrusted person. It must specify the names of the principal and the entrusted person, and the entrusted matter must be for handling the license record change. There is no fixed format for the power of attorney, which can be signed by the parties themselves; parties can also draft a license record change power of attorney refer to the format used for patent agency power of attorney.

d. Copy of the entrusted person’s ID.

 

How to Fill Out the Patent Implementation License Agreement Record Change Application Form?

a. Fill in the agreement record number and agent information according to the actual situation.

b. Indicate the change items in the “before and after change” columns.

c. The application form must be signed or stamped by the licensor and the agent. If parties entrust a patent agency, the patent agency’s official seal must be affixed.

 

How to Handle the Cancellation of Patent Implementation License Agreement Records?

Parties handling the cancellation of patent implementation license agreement records must submit the following documents, one copy each:

a. Patent Implementation License Agreement Record Cancellation Application Form (standard form, available for download on the CNIPA website).

b. Cancellation agreement or relevant proof documents for the cancellation of the patent implementation license agreement record.

The cancellation agreement must be signed or stamped by all stakeholders and be clear and legible.

c. Two original copies of the “Patent Implementation License Agreement Record Certificate.” If the original is lost, the party must submit a situation explanation and corresponding proof materials.

d. Original power of attorney. The power of attorney must be signed or stamped by the licensor, licensee, and the entrusted person. It must specify the names of the principal and the entrusted person, and the entrusted matter must be for handling the license record cancellation. There is no fixed format for the power of attorney, which can be signed by the parties themselves; parties can also draft a license record cancellation power of attorney refer to the format used for patent agency power of attorney.

e. Copy of the entrusted person’s ID.

 

How to Fill Out the Application Form for Cancellation of Patent License Record

a. The contract record number and agent information should be filled in based on the actual situation.

b. In the column for the reason for cancellation, state: “Cancellation of record and related reasons.”

c. The application form must be signed or sealed by both the licensor and the agent.
If a patent agency is entrusted by the parties, the official seal of the patent agency must be affixed.

 

Source: Content compiled based on the patent procedures of the China National Intellectual Property Administration (CNIPA).

 

Disclaimer

The views expressed in this article are solely those of the author and should not be considered as official legal advice or recommendations from MeritsIP. If you wish to reprint or quote any content from this article, please acknowledge the source. Without the written consent of our firm, no part of this article, including any images or visual content, may be reprinted or used. If you are interested in further discussing or exploring related topics, we welcome you to contact our office.

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