Proposal by Standardization Administration of China (SAC)

“Regulations on Administration of Formulating and Revising National Standards Involving Patents” 

released for public comment  with deadline of November 30, 2009

The official Chinese proposal can be accessed at:  http://www.sac.gov.cn/templet/default/ShowArticle.jsp?id=5298  ,  The text of the regulation is an acrobat file at  http://www.sac.gov.cn/upload/091104/0911040916193480.PDF

There are several English translations of the page above and of the acrobat file of the regulation. None of the circulating translations are  "official".  Only the original version at the link above is  "official."

GTW Associates filed formal comments on the proposal by the comment deadline of November 30.    December 21 Intellectual Property Watch published  Take Two: China’s Proposed Regulations For Patent-Involving National Standards by GTW Associates President Willingmyre 

The cover page to one of the translations  of  the "Regulations on Administration of Formulating and Revising National Standards Involving Patents”   states  the  strategic importance of the document: 

With a view to properly handling the patent issues involved in national standards, standardizing the disposal of patents involved in the process of formulating and revising national standards, encouraging independent innovations, promoting the rational adoption of new technologies in national standards, protecting the rights and interests of social public, patentees and related right holders and ensuring the effective implementation of national standards, the Standardization Administration of China (“SAC”) organized the drafting of the Regulations for the Administration of the Formulation and Revision of Patent-Involving National Standards (Interim) (Exposure Draft). We now seek your opinions and would like you to study the draft carefully to submit the revision opinions you may have to SAC before November 30, 2009.

Contact: Wei Hong Tel: 010-82262634           Fax: 010-82260679  Email: sunwei@sac.gov.cn

The previous such proposal of a patent policy by the SAC with as broad implications for standards and trade  in China was in 2004.  

Several provisions  depending on the translation of the Chinese original text  will  draw attention and may need interpretation and elaboration.    Contact GTW for further information about English translations of the China original.   For example, GTW has excerpted below Articles from one of  several English  unofficial  translations versions of the Chinese original. 

1)   that seem to describe granting of free licenses and responsibility for losses due to "purposeful concealment of the patent information"

Article 8 A patentee and its affiliate taking part in the drafting of a standard will be deemed as having granted a free license by failing to make disclosure as required above and shall bear due legal responsibility for the losses caused to the formulation or implementation of a national standard by their purposeful concealment of the patent information.

2) Compulsory or free  licensing for mandatory standards 

Article 13 For a compulsory national standard that indeed needs to involve a patent, the patentee shall grant license free of charge or the national administration department of standardization shall request the related departments to consult with the patentee about disposal of the patent

3) Concept of  licensing assurances reasonable and nondiscriminatory basis to be "at a price significantly lower than than the normal royalties." 

Article 9 When a patent is involved during the formulation and revision of a national standard, PSTC or UIC shall obtain in time the patentee’s irrevocable written statement on patent licensing.

The statement shall include the following, from which the patentee shall select  one item:

(1)    The patentee agrees to license, on a free-of-charge, reasonable and nondiscriminatory basis, to any organization and individual to implement the patent when implementing the national standard；

(2)    The patentee agrees to license, on a reasonable and nondiscriminatory basis, any organization and person to implement the patent when implementing the national standard at a price significantly lower than the normal royalties;

(3)    The patentee does not agree to license patent in either of the two ways listed above.

If the patentee has selected (3) above, the standard shall not contain any provisions based on the patent.  

For comparison with text above see Excerpts from the ANSI patent policy 2008 version    which contain language addressing similar objectives to those in Article 9 above. 

3.1 ANSI patent policy - Inclusion of Patents in American National Standards

The ASD shall receive from the patent holder or a party authorized to make assurances on its behalf, in written or electronic form, either:

(a) assurance in the form of a general disclaimer to the effect that such party does not hold and does not currently intend holding any essential patent claim(s); or

(b) assurance that a license to such essential patent claim(s) will be made available to applicants desiring to utilize the license for the purpose of implementing the standard

either: (i) under reasonable terms and conditions that are demonstrably free of any unfair discrimination; or (ii) without compensation and under reasonable terms and conditions that are demonstrably free of any unfair discrimination.