Answer: The entity that handles the registration of the patent open license implementation contract can be the patent owner (i.e., licensor) listed in the patent open license declaration announcement; or it can be the licensee who has notified the patent owner in writing of the implementation of the open license patent and has paid the license fee in accordance with the license fee payment method and standard in the open license declaration announcement.

Answer: The patent owner or licensee shall, within 3 months after the open license implementation contract takes effect, go through the registration procedures with the National Intellectual Property Administration with written documents that can prove that the open license has been reached.

Answer: Written documents that can prove that an open license has been reached usually refer to: (1) a written notice issued by the licensee to the patent owner expressing the intention to implement the open license patent in accordance with Article 51, paragraph 1 of the Patent Law; (2) a certificate of payment of license fees by the licensee to the patent owner (or a certificate of receipt of license fees by the patent owner).

Generally speaking, when registering a patent implementation license contract, it is necessary to submit a written contract signed by the licensing parties. Patent open license is a special form of license. Its contract form is no longer a written contract signed by the licensing parties through mutual negotiation, but is reached in the form of an offer. The above-mentioned written documents that can prove that an open license has been reached can be regarded as the contract materials that should be submitted when registering the license contract.

Answer: To register a patent open license implementation contract, the following documents should be submitted:

(1) Application Form for Filing of Patent Implementation License Contract signed and sealed by the applicant (Note: the filing of patent open license implementation contract and the filing of ordinary patent implementation license contract share the same standard form);

(2) A written notice from the licensee to the patent owner;

(3) The certificate (proof) of the licensee paying the license fee to the patent owner (or the certificate of the patent owner receiving the license fee);

(4) Identity certification materials of the applicant;

(5) If an agent is appointed, a letter of authorization indicating the authority of the agent shall be submitted;

(6) If the filing procedure is handled in paper form, the identity certification materials of the person handling the case shall be submitted;

(7) Other materials required to be provided.

Answer: (1) If the person who makes the application for license registration is the patent owner, the written notice issued by the licensee and confirmed by the patent owner shall prevail; if the person who makes the application for license registration is the licensee, the written notice shall be confirmed by the patent owner.

(2) The written notice may be in paper form or in electronic form. If the written notice submitted by the applicant is in electronic form, the applicant shall provide a description of the specific relevant information such as the sending, receiving and downloading of the electronic form and attach necessary supporting materials (such as a screenshot printout of the email).

(3) The written notice and its supporting materials shall record the exact date.

Answer: (1) The proof of payment or receipt of license fees should be relevant supporting documents of the formal payment method, such as bank remittance voucher, cash payment receipt, etc.

(2) When the registration application is submitted by a licensee, the receipt for payment of license fees shall be confirmed by the patent owner.

(3) The license fees and payment methods recorded on the payment voucher shall be consistent with the contents of the open license declaration announcement.

(4) If the open license license fees are not paid in a lump sum, only the payment voucher or receipt of the first installment, the entry fee or the first installment paid in accordance with other payment methods specified in the declaration shall be submitted.

(5) The exact date should be recorded in the license fee payment voucher and its supporting documents.

(6) If the patent open license is declared to be free of charge, there is no need to submit a payment receipt.

Answer: (1) Only one patent number can be filled in the application form for filing a patent open license implementation contract. Note: This is different from the situation where the two parties negotiate and sign a patent implementation license contract that includes multiple patents for filing at the same time.

(2) The licensor or licensee may handle the filing formalities on their own or entrust a patent agency to handle the filing formalities. If a patent agency is entrusted to handle the filing formalities, the relevant information should be filled in the agent column.

(3) The license type should be open license, and multiple selections are not allowed.

(4) The geographical scope of patent license should be filled in as “China” and other geographical scopes should not be filled in. For example, provinces, cities, districts, etc. should not be filled in.

(5) The filling of the license fee and payment method shall be consistent with the content in the patent open license announcement. If they are inconsistent, it is not a contract reached under the open license model and the filing procedures shall be carried out in accordance with the requirements of the patent general license implementation contract.

(6) The effective date of an open license implementation contract shall be the later of the date on which the licensee notifies the patent owner in writing and the date on which the license fee is paid in accordance with the announcement. The completion date is usually the date on which the written notification and the license fee arrive at the patent owner.

(7) The termination date of the open license implementation contract shall be consistent with the expiration date of the license term in the patent open license declaration announcement.

(8) If a patent agency is entrusted, the application form may only be signed and sealed by the agency; if a patent agency is not entrusted, the licensor or licensee shall sign or seal the corresponding position on the form.

Answer: (1) Individuals from mainland China should submit a copy of their resident identity card; individuals from Hong Kong or Macau can submit a copy of their “Mainland Travel Permit for Hong Kong and Macau Residents”; individuals from Taiwan can submit a copy of their “Mainland Travel Permit for Taiwan Residents”.

(2) When a mainland China entity submits a copy of its business license or legal person certificate, it should affix its official seal to the copy. If none of the above documents can be provided, it may submit certification materials issued by the superior authority.

(3) Foreign individuals should submit identity documents issued by their relevant competent authorities. If the identity documents are photocopies, they must be notarized by the local notary office.

(4) Foreign enterprises or other foreign organizations should submit local registration certificates. If the registration certificate is a photocopy, it should be notarized by a notary public.

(5) If the applicant is a registered user of the Patent Business Processing System and submits the filing request online, it is not necessary to submit the applicant’s identity certification materials.

Answer: (1) The power of attorney submitted by the patent owner or licensee may refer to or directly use the standard form of power of attorney formulated by the Patent Office.

(2) The power of attorney should indicate the authority of entrustment, that is, it should clearly state the entrustment to handle the filing procedures of the patent open license implementation contract.

(3) The letter of attorney shall be signed by both the principal and the agent. If the agent is a patent agency, it is not necessary to submit a copy of the identity certificate of the agent or the staff of the agency.

(4) If the client is multiple patent owners, all patent owners should jointly sign the power of attorney.

Answer: You can submit your filing request online or offline.

The parties can choose to submit electronically online, or submit paper documents by mail or at a window to handle the filing procedures for the implementation contract of patent open license. At present, 34 patent agencies across the country can accept the filing request for the implementation contract of patent open license.

Submit online in electronic form through the Patent Affairs Service-Patent Contract Review Module of the Patent Business Processing System.

If submitted offline, and both parties to the patent implementation license contract are domestic entities or individuals, the parties may go to the nearest patent agency in their province to handle the registration procedures; they may also go to the Patent Office of the CNIPA to handle the registration procedures.

If the two parties to a patent license contract involve foreigners, foreign companies or other foreign organizations, the parties shall hand in or mail the relevant paper materials to the Patent Office of the CNIPA to go through the filing procedures.

Answer: When entities or individuals within China implement patent open licensing and foreigners, foreign companies or other foreign organizations wish to implement it, they must comply with the relevant provisions of the “Regulations of the People’s Republic of China on the Administration of Technology Import and Export” and the “Measures for the Administration of Registration of Technology Import and Export Contracts” and go through relevant procedures.

Answer: The filing of the patent open license implementation contract is not a license contract signed by the two parties through negotiation, but an agreement reached through an offer model. The written notice of the licensee’s intention to implement the open license patent to the patent owner, as well as the certificate of the licensee’s payment of the license fee to the patent owner (or the certificate of the patent owner’s receipt of the license fee) are regarded as the contract documents required to be submitted for filing procedures, and the scanned copies of the above documents should be uploaded to the license contract category of the system.

In the patent business processing system, the contract name column should be filled in as Patent Open License Implementation Contract, the licensing method column should check all licensing methods such as “manufacturing”, “sales”, “use” (design patents do not include “use”), the license type column can only check “open license”, and the license region column should be filled in as “China”.

The license expiration date and usage fee in the system should be consistent with the content of the open license announcement. The unit of the usage fee amount in the system is “ten thousand RMB”, so please pay attention when filling in the amount.

Answer: If the patent open license implementation contract is approved for filing, the patent owner can enjoy the reduction of the annual patent fee that has not expired since the filing date during the patent open license implementation period. The patent open license implementation period refers to the period from the effective date of the patent open license implementation contract to the expiration of the patent open license period.

Answer: If the applicant registers the patent open license implementation contract, it will be deemed that the patent owner has simultaneously submitted a request for a reduction in the annual patent fee, and there is no need to submit it separately.

Answer: If the patentee submits a request for filing of a patent open license implementation contract in accordance with Article 51, paragraph 2 of the Patent Law and Article 87 of the Implementing Regulations of the Patent Law and is approved for filing, the National Intellectual Property Administration shall reduce the annual patent fees for the patents that have not expired since the contract filing date during the implementation period of the patent open license by 15% in accordance with Section 8 of Chapter 11 of Part V of the Patent Examination Guidelines and the Announcement of the National Intellectual Property Administration on Adjusting the Fee Standards and Reduction Policies for Some Patents (No. 594). If the patentee meets the conditions for reducing the annual patent fees through two different programs, the reduction shall be made according to the program with the higher reduction ratio.

Patent owners shall not obtain exemption or reduction of annual patent fees during the implementation period of open license by means of providing false materials, concealing facts, etc.

Answer: If the patent owner withdraws the open license declaration, he or she will no longer enjoy the reduction in annual patent fees obtained due to the open license starting from the next patent year.

Answer: If a patent owner who implements open licensing and the licensee negotiate on the license fee and then sign a general license contract, it does not belong to open licensing and cannot enjoy the annual fee reduction for the implementation of patent open licensing.

The original text is available here (Chinese only).

Read part one here.