China Intellectual Property Transfer Special Edition (Part 2) - Patent Licensing and Pledge

1. What are the types of patent licenses and filing requirements in China?

• The types of patent licenses in China include: exclusive license, exclusive license, ordinary license, cross license and sublicense.
• Chinese law stipulates that after a licensing agreement comes into effect, it must be registered and filed with CNIPA within three months of the transferor and the formal signing of the agreement.

2. Is it necessary to submit the original patent license agreement?

• Photocopies or scanned copies are sufficient. CNIPA also accepts in-person submissions and mailed documents.

3. Does a patent license agreement need to be notarized or translated?

• Proof of legal residency or legal person status of the licensor and licensee.
• If the license agreement is not in Chinese, a Chinese translation is required.

4. Is it necessary to use a specific form to register a patent license?

• Yes, after both parties sign a patent license agreement, they need to fill out the "Application Form for Filing of Patent License Agreement". The required documents include:
  • Application form for filing a patent license contract. This form should be a standard form, printed, and jointly stamped or signed by the licensor and the agent. If the licensor entrusts a legally established patent agency, the application form may be stamped only by the patent agency.
  • A patent licensing contract should include the following:
    • Name or address of the party
    • Number of patent rights and the name, patent number, application date, and authorization announcement date of each patent right
    • Types and duration of implementation licenses
  • Proof of legal residency or legal person status of the licensor and licensee.
  • Power of attorney. If the entrusted person is a natural person, proof of his/her residency status must be submitted. If the entrusted person is a patent agency, the standard form of power of attorney for patent agencies established by the Patent Office must be used, clearly indicating the scope of authority.
  • Other required materials. For example, if the parties have signed a supplementary agreement to the patent license agreement, this should be submitted if necessary. If the application is handled online, a declaration that the electronic scanned copy signed by both parties or the authorized person is consistent with the original document should be attached.
  • If the above-mentioned filing documents are in a foreign language, a Chinese translation shall be attached, and the Chinese translation shall prevail.
• During CNIPA's review of patent licensing contract filings, the right holder shall cooperate in providing relevant explanations or supporting materials when necessary.
  • After receiving the application for filing a patent license contract, the National Intellectual Property Administration (SIPO) will handle the relevant procedures and decide whether to file the application. It may also require the applicant to provide a written explanation or relevant supporting documents, if necessary. If the application for filing a patent license contract passes the review, the SIPO will publish the application in the Patent Gazette, register it in the patent register, and send a "Certificate of Filing of Patent License Contract" to the applicant. The applicant can pick up the notice at the counter or receive it by registered mail.
  • If a patent license contract filing application is found to be unacceptable after review, a "Special Letter for Patent License Contract Filing" will be sent to the party concerned, informing them of the deficiencies that should be eliminated and returning all application materials. If the party concerned needs to go through the filing procedures again, they should overcome the relevant deficiencies and resubmit the application.
• The National Intellectual Property Administration (SIPO) publishes the following information regarding the filing of patent licensing agreements in the Patent Gazette: licensor, licensee, principal classification number, patent number, application date, authorization announcement date, type of licensing agreement, and filing date. Parties and the public can access this information through the Patent Gazette or by logging into the China Patent Publication and Announcement System on the SIPO's official website.

5. What are the legal consequences of not registering and filing a patent license?

• If there is no explicit provision in the law, it is generally regarded as confirmatory.
• Failure to file will result in loss of the following rights:
  • Unable to defend against a bona fide third party
  • Cannot be used as evidence
  • Not conducive to the determination of infringement damages
  • Cannot be used as supporting documents for funds transfer

6. Is it necessary to appoint a professional representative in my country?

• Yes. If the entrusted person is a natural person, proof of residency should also be submitted. If the entrusted person is a patent agency, the entrusted person should use the standard form for patent agency power of attorney established by the Patent Office, clearly stating the scope of authority.

7. Official fees for filing patent licenses

• No official fees.

8. Does China have a patent pledge system? Is filing required?

• Yes, patent pledge is allowed in China.
• According to the Civil Code of the People's Republic of China, patent pledges must be filed with CNIPA and are established from the date of registration.