The Measures for the Recordal of Patent License Contract (No. 62)
No. 62
The Measures for the Recordal of Patent License Contract has been examined and adopted at the executive meeting. It is now promulgated and will come into force on August 1, 2011.
Director: Tian Lipu
June 27, 2011
The Measures for the Recordal of Patent License Contract
Article 1 This Measures is formulated in accordance with the Patent Law of the P.R.C. and the Contract Law of the P.R.C. for the purposes of effectively protecting the patent right, regulating the act of patent license and promoting the application of patent right.
Article 2 The State Intellectual Property Office shall be responsible for the recordal of the patent license contract nationwide.
Article 3 The licensor of the patent shall be the legal patentee or other right holder.
Where the patent license contract is concluded with the object of a joint patent right, it shall obtain the consent of other joint owners, except otherwise agreed by all the joint owners or otherwise stipulated by the Patent Law of the P.R.C.
Article 4 The patent license contract to be applied for recordal shall be concluded in writing.
The uniform contract sample made by the State Intellectual Property Office can be used in the conclusion of patent license contract. Where other contract text is adopted, it shall be in accordance with the stipulation of the Contract Law of the P.R.C.
Article 5 The parties shall handle the recordal procedures within three months since the effective date of the patent license contract.
Article 6 Where any foreigner, foreign enterprise or other foreign organization having no habitual residence or operation office in China handles relevant procedures of recordal, he or it shall entrust the patent agency established according to law to handle the procedures.
Where the Chinese entity or individual handles relevant procedures of recordal, it or he may entrust the patent agency established according to law to handle the procedures.
Article 7 The parties may handle the relevant procedures of recordal by the way of mail, personal delivery or other ways stipulated by the State Intellectual Property.
Article 8 When applying for the recordal of patent license contract, the following documents shall be submitted:
(i)Application form of the recordal of patent license contract signed or sealed by the licensor or its entrusted patent agency;
(ii)Patent license contract;
(iii) Identification certificates of both parties;
(iv) Power of Attorney indicating the scope of power entrusted, if the patent agency is entrusted.
(v) Other materials required to be filed.
Article 9 The patent license contract filed by the parties shall contain the following contents:
(i) The name or title and address of the parties;
(ii)Numbers of patent rights as well as the title, patent number, application date and publication date of each patent right;
(iii) Type and term of license.
Article 10 Except the identification certificates, the other various documents submitted by the parties shall be in Chinese. If the identification certificate is in foreign language, the parties shall submit its Chinese translation. If the parties fail to submit, it will be regarded as not submitting.
Article 11 The State Intellectual Property Office shall examine and decide whether or not to grant recordal within 7 working days from the date of the receipt of the recordal application.
Article 12 If the recordal application is acceptable after examination, the State Intellectual Property Office shall issue the Certificate of the Recordal of Patent License Contract to the parties.
In any of the following circumstances, the recordal application shall not be approved, the State Intellectual Property Office shall send the Notification of Disapproval of the Recordal of Patent License Contract:
(i) The patent right has expired or been declared invalid;
(ii) The licensor is not the patentee recorded in the patent register or the other right holders who have the right to grant license;
(iii)The patent license contract is not in accordance with the stipulation of Article 9 of the Measures;
(ivThe term of license has exceeded the valid period of the patent;
(v)The joint patent right owner concludes the patent license contract in violation of the stipulation of laws or agreements;
(vi) The annual fees of the patent right is overdue;
(vii) The relevant procedure of patent right is suspended due to the dispute of the ownership of patent right or the preservation of patent right ordered by the people’s court;
(viii) The same patent license contract which has been applied for recordal repeatedly;
(ix) The patent right has been pledged, except that the pledgee agrees;
(x) Being in conflict with the patent license contract which has been recorded;
(xi) Other circumstances which shall not be approved for recordal.
Article 13 After the patent license contract is recorded, if the State Intellectual Property Office finds that there is any of the circumstances listed in Article 12(2) of the Measures and it has not been eliminated yet, it shall cancel the recordal of patent license and issue the Notification of Cancelling the Patent License Contract.
Article 14 The relevant contents of the recordal of patent license contract shall be registered on the patent register by the State Intellectual Property Office and the following contents shall be published on the Patent Gazette: licensor, licensee, main classification number, patent number, filing date, grant date, type and term of license, recordal date.
Where the patent license contract is modified, nullified or cancelled after the recordal, the State Intellectual Property Office shall register and publish accordingly.
Article 15 The State Intellectual Property Office shall set up the database of the recordal of patent license contract. The public can search the legal status of the recordal of patent license contract.
Article 16 Where the parties extend the term of license, they shall bring the modification agreement, recordal certificate and other relevant documents to the State Intellectual Property Office and handle the modification procedures within two months prior to the expiration of the term of previous license.
Where other contents of the patent license contract are to be modified, the procedures should be handled referring to the provisions of the preceding paragraph.
Article 17 Where the term of license is expired or the patent license contract is terminated ahead of the time, the parties shall bring the recordal certificate, termination agreement and other relevant documents to the State Intellectual Property Office and handle the nullification procedures upon the expiration or within 30 days after the conclusion of the termination agreement.
Article 18 Where the patent right involved in the recorded patent license contract is declared invalid or terminated prior to the expiration of the term of license, the parties shall handle nullification procedures of the recordal in time.
Article 19 The type, term, means of computing the license royalties or the amount, etc. of the recorded patent license contract can be taken as a reference by patent administration department in mediation on the amount of compensation for the infringement.
Article 20 Where the parties apply for the recordal of license contract based on the patent application, the Measures can be referred to for implementation.
During the application of recordal, if the patent application is rejected, withdrawn or deemed to be withdrawn, the recordal shall not be approved.
Article 21 Where the parties apply for recordal of license contract based on the patent application, if the patent application is approved and granted the patent right, the parties shall modify the name and relevant clauses of the patent application license contract accordingly in time; if the patent application is rejected, withdrawn of deemed to be withdrawn, the parties shall handle the nullification procedures of the recordal in time.
Article 22 The Measures will come into force on August 1, 2011. The Measures for Administration of the Recordal of Patent License Contract promulgated by the State Intellectual Property Office (Order No. 18) on December 17, 2001 shall cease to be in force on the same day.