In accordance with paragraph 2, Article 14 of the Rules for the Implementation of the Patent Law of the People's Republic of China, any license contract for exploitation of a patent which has been concluded by the patentee with an entity or individual shall, within three months from the date of entry into force of the contact, be submitted to the patent administration department under the State Council for the record.

Although this procedure is not mandatory at the CNIPA, it may be necessary to register the license contract at the CNIPA due to the following reasons:

Confronting a bona fide third party

Evidential effect

Reference standard for amount for tort compensation

Foreign exchange payment voucher

For serving the evaluation of high-tech enterprises

 Information disclosure

However, if the submitted documents do not comply with the official requirements, the client will have to prepare these documents again, which wastes both the client's time, undue cost, and official resources. Therefore, it is necessary to know the necessary preparation before registering the license contract.

Preparation 1: confirming whether the application form needs to be stamped by the licensor

If the licensor is an owner in Mainland China, a signature or official seal of the owner is required on the application form. If the licensor is a person, his/her Chinese signature is sufficient; If the licensor is an enterprise, they shall stamp their official seal on this application form.

If the licensor is an owner from Hong Kong, Macao, Taiwan or a foreign country, it can be sealed by its entrusted Chinese agency.

Preparation 2: confirming the validity of the licensed patent

The licensed patent must be in a normal examination stage (for pending applications), or in a normal annual fee payment stage (for granted patents). The cases of being refused for the record due to abnormal status of the licensed patent include but are not limited to:

1. The licensed patent is in the reexamination stage, that is, the status on the CNIPA website is shown as: rejection,waiting for request for reexamination; waiting for returning from interlocutory examination; waiting for establishment of panel; waiting for examination by the panel, etc.

2. The licensed patent is in the overdue period of annual fee payment, that is, the status on the CNIPA website is shown as:patent right cessation due to failing to pay the annual fee, waiting for restoration; cessation and invalidation due to failing to pay the annual fee; cessation and invalidation due to expiration of time limit, etc.

3. Where the patent right is pledged, except with the consent of the pledgee;

4. The licensed patent is declared invalid in its entirety, that is, the status on the CNIPA website is shown as: being invalid by invalidation declaration, etc.

5.Where a dispute arises over the ownership of the patent right or the people's court decides to take protective measures against the patent right, and the relevant procedures for the patent right are suspended.

Preparation 3: confirming the eligibility of license contract for exploitation of a patent (referred as "the Contract" below)

The following information must be agreed in the Contract and meet the following requirements:

1. The licensed patent: the Contract must include the valid patent(s)/patent application(s) as described above;

2. The licensor's name and address;

3. The licensee's name and address;

4. The license type: agreed according to the actual situation;

5. The patent license scope: refers to the territorial scope, generally agreed to be global or China;

6. The effective date of the Contract: it shall be clearly agreed in the Contract, but shall not be earlier than the application date of all licensed patents;

7. The termination date of the Contract: it shall be clearly agreed in the Contract, but shall not be later than the expiration date of the last licensed patent;

8. The royalty and payment: it shall be agreed according to the customer's situation, and the royalty can be zero.  If the royalty is zero, the payment shall be free of charge;

9. Signature/seal: For individuals in Mainland China, their Chinese names shall be signed on the Contract; for enterprises in Mainland China, they shall stamp their official seal on the Contract; For individuals or enterprises in Hong Kong, Macao, Taiwan or foreign countries, they are only required to sign the Contract.

10. Document submission: the original copy of the Contract or the notarized copy notarized by a notary office shall be submitted.

Apart from the aforementioned contents, other contents can be agreed upon according to the actual situation.

Preparation 4: confirming the qualifications of the subject qualification certificates of both parties

For individuals in Mainland China, the copies of their ID cards are required; for enterprises in Mainland China, the originals of the copies of their business license stamped with their official seal are required.

For individuals in Hong Kong, Macao, Taiwan or foreign countries, notarized copies of their identity certificates are required; for enterprises in Hong Kong, Macao, Taiwan or foreign countries, a notarized copy of their subject qualification certificate are required. Please note that both are not required to be authenticated.

Preparation 5: confirming the eligibility of the Power of Attorney

The Power of Attorney shall be signed separately or jointly by the licensor or the licensee, and shall specify: in patent license contract registration within the scope of services of the China National Intellectual Property Administration.

For individuals in Mainland China, their Chinese names shall be signed on the Power of Attorney; for enterprises in Mainland China, their official seal shall be stamped on the Power of Attorney; for individuals or enterprises in Hong Kong, Macao, Taiwan or foreign countries, they shall sign on the Power of Attorney.

    Preparation 6: Time for registration

    The owners shall register the license contract within three months from the date of entry into force of the contact. Where the party concerned fails to do so within the time limit, they shall sign a new Contract or submit a declaration on the validity of the original Contract signed by both parties.

    The aforementioned preparations must be done before registering the Contract,  but are only for the routine process. In the case of special circumstances, the CNIPA needs to be consulted to obtain more accurate information.  The author hopes that this article can help the owners of patents or patent applications to go through the formalities of registering at the CNIPA more conveniently.