Patent Marking Correctly in China

In 2012, National Intellectual Property Administration (CNIPA) enacted Measures for Affixing Patent Markings which came into force on May 1^st, 2012. Recently, on January 2^nd, 2019 CNIPA further issued the Guidelines for handling patent marking non-conformity cases (for trial implementation).  Based on the rules for affixing patent markings, improper patent marking could lead to serious punishments.

The Patent Law grants the patent rights owner to label the patent markings on its patented products on its products or packaging. Patent marking is not compulsory and is no 100% guarantee that compensation will be award in patent infringement. However, many patent owners still want to label their patent markings to alert others that the product is legally protected against infringement, and to give consumers better impressions such as the product is innovative and is originate.   

Not only the owner of the patent, licensees explicitly authorized by patentees can also have the right to label the product. Whoever does not have the right but falsifying patent marking on a product or on its packaging, such action we called patent counterfeiting. Patent counterfeiting further includes actions of continuing using a patent marking which the patent is no longer valid or has expired; using other people’s patent number on a product or on its packaging; misrepresentation; and falsifying a patent certificate and documents or application documents. According to Article 63 of the Patent Law in China, a person who counterfeits the patent shall confiscate all illegal earnings with a fine up to four (4) times of the illegal earnings. If there are no illegal earnings, the maximum fine will be RMB 200,000. If the act constitutes a criminal offense, criminal liabilities shall be pursued in accordance with the criminal law.

According to the current criminal law in China, for serious circumstances case, patent counterfeiting shall be sentenced to fixed term imprisonment of no more than three (3) years (Article 216 of the Criminal Law).

The patent marking is not limited to actual thing, it can be an electronic marking as well. In either way, the patent marking should include clear indications of the patent type (i.e., invention patent, utility model patent or design patent) and the patent number. If product is made from a method patent, the marking must explicitly indicate the product being obtained through a patented process. For pending patent application, the marking must include additional phrase indicating that the patent application is not yet granted. Only for the granted patents, the patent number begins with “ZL”.

In many scenarios, some patent applicant mis-used “ZL” in pending patent applications. It directly violates the regulation of proper patent marking. Another common scenario is that the product is only labeled with phrases like patented product, patent pending product or product is already apply for world/international patents. These actions are also considered non-standard patent marking.

Although the patent marking can also be an electronically label in a virtual environment such in an e-commerce website, marking on to an actual patented product with URL/QR code accessible to the public is not allowed in China.  

Moreover, the labeled patent/applications must be correctly corresponded to the product or its associated process. For instance, if the product is a cosmetic gel and the marking patent is direct to a gel machinery, it also violates the regulation of proper patent marking.

In conclusion, marking products with a patent number or patent application can be used to point out to the alleged infringer the existence of a patent application, which opens the possibility of claiming damage compensation. However, it is very important not to place any erroneous information on the product or worse, incorrect information. This could result in fines, especially for China as now strictly strengthening the supervision and administration of patent marking (patent counterfeiting).

美國專利商標局(USPTO)擬上調商標費用-申請官費預計從現行600美元調整為750美元

2020年6月19日美國專利商標局(USPTO）在聯邦公報公布，希望調整後的費用收入足以支應商標審查、再審上訴（TTAB）和行政作業。正式版本與施行日期仍尚未公告，詳細內容可以參考 按這兒

當前 USPTO 商標的收費標準

本次調整費用草案主要內容有：

商標註冊申請費：

• 紙本申請費由現行的每類 USD $600調漲為每類 USD $750；
• 若使用電子線上申請系統(TEAS）PLUS表單申請，每類由現行 USD $225調漲為 USD$250；
• 若使用TEAS 標準表單申請，每類由現行 USD $275調漲為$350；
• 國際註冊延伸保護申請案（66(a)），每類由現行 USD $400調漲為$500。

TEAS PLUS的補正費由現行的 USD $125 調降為 $100。

請願（Petition）申請費：

• 根據 § 2.146 or 2.147的請願費用由現行 USD $100 調漲為 $250 (電子提交），紙本申請則由現行的$200 調漲為 $350；
• 根據 § 2.66 回覆申請案的請願請求，則由現行的 USD $100 調漲為 $150（電子提交），紙本則由現行的 USD $200 調漲為 $250。
• 此外，USPTO也針對第三方就審查中的商標申請案提供審查資訊制定了新的收費模式；現有的收費 是 0，新的收費標準則改為 USD $50/次，單次最高頁數限制為75頁。

對商標註冊案的修正

• 在第8條使用宣誓或第71條使用宣誓之後提出修正，則有新的收費方式，電子提交的費用調漲為 USD $250，紙本調漲為350。
• 但若在第8條使用宣誓或第71條使用宣誓前提出修正，原先走電子提交的費用為 $100，紙本提交為 $200，減免為0，主要是鼓勵所有商標權人可以準確且注意所登載使用證據的內容。

再審上訴（TTAB）的費用調整

TTAB調整有10項費用調整，6個新增的收費標準，本文整理比較重要的部分。

• 發出訴願通知(Notice of Appeal)，由現行的每件，修改為“每類” USD $225 （電子提交），紙本提交則為 $325元。
• 提出訴願理由（appeal brief），每類調漲為 USD $200（電子提交），紙本提交為 $300元。
• 申請人在發出訴願通知後，需要於兩個月內提出訴願理由，可以申請延期，第二次之後申請延期將有新的收費標準，每次費用為 USD $100（電子提交），紙本提交為 $200元。
• 口審費用將制定為 USD $500元。

USPTO 歡迎各界針對個別專利規費提議和政策預定達成目標提供意見， 並 在 2020 年 08 月 03 日 前 電 郵 至 TMFRNotices@uspto.gov.， 或 在 Federal eRulemaking 閘口網（http://www.regulations.gov）發送電郵。

NPEs are targeting companies in China for monetizing their patents

With major Non-Practicing Entity (NPE) quietly adopting Chinese litigation as part of their monetization strategies, Chinese government is now believing that social economy has developed to a stage where it should be driven by innovation and thus providing strong judicial protection on intellectual property (IP).  

Unlike systems in US or Europe, China has its special system on IP rights judicial protection. Litigation in the court is not the only judicial way to enforce the patent right. Administrative authority can also handle the patent infringement dispute as well.

In article 60 of the Patent Law of PRC: “If a dispute arises as a result of exploitation of a patent without permission of the patentee, that is, the patent right of the patentee is infringed, the dispute shall be settled through consultation between the parties. If the parties are not willing to consult or if consultation fails, the patentee or interested party may take legal action before a people’s court, and may also request the administration department for patent-related work to handle the dispute. If, when handling the dispute, the said department believes the infringement is established, it may order the infringer to cease the infringement immediately; if the infringer is dissatisfied with the order, he may, within 15 days from the date of receipt of the notification of the order, take legal action before a people’s court in accordance with the Administrative Procedure Law of the People’s Republic of China. If the infringer neither takes legal action at the expiration of the time limit nor ceases the infringement, the said department may file an application with the people’s court for compulsory enforcement….”

In article 79 of the Rules for the Implementation of the Patent Law of PRC: ” The administrative authority for patent affairs referred to in the Patent Law and these Rules means the department responsible for the administrative work concerning patent affairs set up by the people’s government of any province, autonomous region, or municipality directly under the Central Government, or by the people’s government of any city divided into districts which has a large amount of patent administration work to attend to and has the ability to deal with the matter.”

According to the statics of December 2019 made by CNIPA, there are 14,285 IP disputations handled by the administrative authorities in the nation. Nearly 30% of the cases were in Guangdong province and zero (0) case in some provinces.

Regardless the loadings of each administrative authority, the implement rules for administrative in patent disputations rules that the case should be closed within 3 months when the case is put on record and in some special instance the case can be closed up to 4 months (Article 21). Comparing to the patent litigation that may take years, the implement rules are very time efficient and friendly to NPE.

Accordingly, NPE may enforce their patent in the administrative authority, and look forward to receive settlements, licensing fees or any other compensations in later negotiations.  

iPEL, one of the high-profile NPE from US, has announced in 2017 that they had raised more than $100 million to purchase around 1,040 patents from Huawei and ZTE as the basis for patent infringement cases in China.

In May 2019, iPEL’s subsidiary, Global Innovation Aggregators, raised four patent infringement disputes against Netgear (US-based company) in administrative authorities of the Beijing Intellectual Property Office (IPO) and Hefei IPO respectively using patents No. 2011103890196 (hereinafter ‘196) and 2007101180340 (hereinafter ‘340). These two patents are brought from Huawei and ZTE.

According to CNIPA’s website, the 340 case was invalided on 10 April 2020, and the 196 case is maintained its patent rights on 27 April 2020. However, the decision made by Beijing IPO on 28 May 2020, the accused products of Netgear are not infringing the 196 case. The whole proceeding took only about a year.

Noting that when the case has entered for invalidation in CNIPA, the IPO will stop its trial until the invalidation decision has been made.  In general, the Patent Reexamination Board takes 4 to 6 months to issue invalidity decisions.

Although Netgear has fended off iPEL assertions in China, it provided a clear picture that administrative enforcements which can be considered as a good tool for NPE to force the defendant to react. According to the current patent law above-mentioned, the patent rights owner has the right to choose whether the patent infringement dispute is handled by the patent administrative or the people’s court.

There’s no jury in patent infringement litigation in China, the timeline from filing to judgment issuance in the first instance generally does not extend beyond 18 months. In other words, the cost of litigation in China is more efficient and less costly.

In the past, the amount of patent infringing damage remedy in China is low in cases we heard. On 24 November 2019, the General Office of Communist Party of China and the State Council jointly released the Opinions Concerning Enhancing Intellectual Property Rights Protection. In succession, CNIPA announced in April 2020, which plans to amendment the law according to this opinion which explicitly in introducing punitive damages. The specified provision of punitive damages will be incorporated in the future patent law amendment.

Higher remedy or compensation will encourage NPE’s activity. With an increase in statutory damages incorporation of punitive damages and time efficient for both injunctions and adjudicates, it is expected that NPEs would boom in China in the next few years.  

New USPTO’s COVID-19 Prioritized Examination for Trademarks

As the world is fighting COVID-19 virus, not just for patents, USPTO has launched new prioritized Examination for trademarks. (Here to see the USPTO’s prioritized examination for patents)

On 15 June 2020, USPTO announced a new COVID-19 prioritized examination program for certain trademark and service mark applications, which will accept petitions to advance the initial examination of applications for marks used to identify qualifying COVID-19 medical products and services. Additionally, the USPTO will waive the fee for such petitions. (see the official announcement)

To be eligible for this prioritized examination program, the COVID-19 medical-related goods and services must qualifying one or more described in below.

• Pharmaceutical products or medical devices such as diagnostic test, ventilators and protective equipments including surgical masks, face shields, gowns and gloves. Such pharmaceutical products or medical devices are subject to approval by US Food and Drug Administration (US FDA).
• COVID-19 related medical services or medical research services.

將音樂創作註冊成美國商標的饒舌歌手

這篇文章可能會洩漏了筆者的年紀，90後的年輕人可能對這位歌手不是那麼熟悉，但幾年前這位歌手的歌曲可是夜店國歌 ，只要DJ一放他的歌曲，才剛起頭，整個舞池都就開始狂熱，沒錯，他就是知名說唱歌手『嘻哈鬥牛梗 』- Pittbull 。

今天會提到他是因為筆者在影音分享平台看到了一則他的訪問，提到他將它歌曲音樂中的『尖叫/吼叫』聲— “EEEEEEEYOOOOOU”拿去註冊了美國商標。影片連結：https://www.youtube.com/watch?v=oG5I97SBwlQ

是的，你沒看錯也沒聽錯，這段聲音分別成功註冊在（尼斯分類）第41類跟第9類。第9類是的商品項目主要為音樂錄製跟音樂影像錄製，第41類則是現場演出表演的服務項目。

允許聲音做為商標註冊標的已在多國行之有年，部分國家甚至允許『氣味』的商標註冊。但成功將聲音註冊為商標的數量這仍屬少數，比較知名的是諾基亞NOKIA的手機預設鈴聲以及英特爾INTEL Inside的旋律，音樂歌曲創作拿去註冊商標大多是影像廣告的配樂或是行銷口號，例如1974年漢堡王電視廣告的『Have it your way』；這些聲音商標共通的特性在於，利用歌曲的歌詞或旋律作為商品銷售的辨識特徵（而非直接提及商品的品牌或產品）。

Pittbull註冊在服務類別的聲音商標更是少見；根據訪問的影片得知，註冊的初衷在於，Pittbull說當年在街道上或是外面的活動裡，若有發生一些什麼特別的狀況，他與同夥之間便會利用這樣的『尖叫』聲通知彼此，因此，當這樣的聲音置入他的音樂後，他想藉由這樣的『尖叫』聲音，像是通知夥伴一樣，通知聽眾來讓人準備好來享受他的好音樂。

聲音商標註冊最容易失敗的地方在於一小段的聲音、曲調或旋律如何展現顯著性，讓消費者可以辨識商品或服務的來源，同時不能成為歌曲音樂中的功能組成部分；Pittbull的案子最特別的是如何證明該段聲音在歌曲跳脫出來，同時具有區別性的標示效果。

筆者認為 “EEEEEEEYOOOOOU”這段聲音本身是不具有顯著性，他與其他歌曲中的發聲並無特殊意義，若要成功取得商標註冊必須證明這段聲音具有後天顯著性（識別性），即所謂第二含義。

後天顯著性是指本來不具備顯著性的標誌通過長期使用，從而在消費者心中產生一個新的意義得以讓標誌與某商品或服務產生連結；以Pittbull具有特色的音樂表現與詮釋以及全球熱銷千萬唱片的巨星來說，Pittbull特有的“EEEEEEEYOOOOOU”深植在消費者（聽眾）是很容易的證明的，但是，要怎麼證明該標誌可以與商品或服務產生連結？

要滿足連結的最基本要求在於，單就一段非由Pittbull演唱或表演的歌曲，只要該特色的『尖叫/吼叫』聲一出現，聽眾可以立即將其聯想到即將播放的是Pittbull的歌曲，否則，一首歌曲的一段聲音只是歌曲的功能性的組成部分。

相較傳統文字或圖形的商標，聲音的商標註冊對於『使用樣態』的要求很高，申請過程有很高的機率審查員會要求提供顯著性證明，包括和不限於提供以下資訊來提高核准的機率：

1. 保留完整聲音商標實際使用的證明，最好也能包括廣告宣傳和對應銷售的歷史數據；
2. 聲音商標如果具有人聲口白，可加上具備顯著性的文字註冊商標；以及
3. 聲音商標避免過於冗長，擷取可以創造深刻印象的片段來申請。

Beijing Supreme People’s Court announced three new draft judicial interpretation – IPR Disputes involving e-Commerce platforms.

On 10 June 2020, the Beijing Supreme People’s Court announced three new draft judicial interpretation for public review. Public opinions are due by 27 July 2020.

• Interpretations on Several Issues Concerning the Application of Law in the Trial of Civil Cases Infringing on Trade Secret Infringements
关于审理侵犯商业秘密纠纷民事案件应用法律若干问题的解释
• Replies on Issues Concerning the Application of Laws Related to Infringement Disputes Concerning Internet Intellectual Property
关于涉网络知识产权侵权纠纷有关法律适用问题的批复
• Opinions on Adjudication of Intellectual Property Rights (IPR) Disputes in Cases Involving E-Commerce Platforms
关于审理涉电子商务平台知识产权纠纷案件的指导意见

In this article, we will take a quick look and summarize the draft provisions of IPR Disputes, particularly with patents involving e-Commerce platforms.

Article 7 of the current provision draft
According to Article 42 of the electronic commerce law, IPR owners are able to send notices to the operator of the e-commerce platform, the notice should be in paper form and contain the following information:

• The IPR certificate and a valid identity of the IPR owner;
• Clear representation of the suspected, infringed goods or services;
• Preliminary evidence of infringement;
• Specific measures required of the e-commerce platform;
• A sworn affidavit of the provided materials.

If the notice involves patent rights, the operator of the e-commerce platform may request the IPR owner to provide technical or design characteristic comparison, or an evaluation report if the patent is a utility model or design patent.

Article 9 of the current provision draft
On the other hand, as an e-commerce platform seller, according to Article 43 of the electronic commerce law, the seller is allowed to send a non-infringement declaration. The non-infringement declaration should be in paper form and generally include the following:

• A valid identity of the seller;
• Clear representation of the suspected, infringed goods or services;
• Preliminary evidence of non-infringement such as fair use;
• Specific measures required of the e-commerce platform;
• A sworn affidavit of the provided materials.

Article 11 of the current provision draft
The IPR owner should obtain an acceptance notice from the people’s court or the administration, which is provided to the operator of the e-commerce platform within 25 business days from the date of receiving the non-infringement declaration. Otherwise, the operator of the e-commerce platform would terminate all actions and measures.

The current provision draft does not strictly enforce the e-commerce platform to take any specific actions or measures regarding the compliance of infringement. However, in Article 14, it states that if the e-commerce platform did not take measures after receiving the infringement notices, the e-commerce platform shall undertake joint liability for infringement damages incurred. The draft in Article 14 was very interesting as it listed three different scenarios:

1. If the operator of the e-commerce platform is awarded or should be awarded the infringement of IPR, and did NOT take any measures after receiving the infringement notices, the e-commerce platform shall undertake joint liability for all infringement damages;
2. the operator of the e-commerce platform is awarded the infringement of IPR, and takes measures after receiving the infringement notices; the e-commerce platform shall undertake joint liability for any infringement damages before measures;
3. though the operator of the e-commerce platform is not awarded or should not be awarded the infringement of IPR; increased damages resulting from silence after receiving the infringement notices, the e-commerce platform shall undertake joint liability for the increased portions of the infringement damage.

In my two cents, the Supreme People’s Court has given high standards to the e-commerce platform. In order to eliminate the risks of undertaking joint liability as listed above, the e-commerce platform will ask all sellers to provide their non-infringement declaration prior to taking any action.

Article 14 of the provision, if adopted, could make infringement alerts to be very effective, wherein the e-commerce platform must promptly take measures to block the goods on the e-commerce platform.

I can’t breathe

Unlike COVID-19 trademark registrations, many people have applied to trademark the words “I can’t breathe” and “I CAN’T BREATHE BUT WE CAN VOTE”, amid worldwide protests over the death of African-American man George Floyd.

“I can’t breathe” has been used as a protest slogan since Mr Floyd died after repeating it while a Minneapolis police officer knelt on his neck during his arrest.

The phrase of “I can’t breath” isn’t the first time people use it to apply for trademark registration.

Garner, a cigarette seller, who died in July 2014 following an altercation with two police officers in New York. Witnesses at the scene claimed Garner was put in a choke hold by the officers and shouted the words “I can’t breathe” repeatedly.

The hash-tagged phrase ‘#Icantbreathe’ has been tweeted more than 1.3 million times at that time.

The applications cover the terms ‘I can’t breathe’ and ‘#Icantbreathe’. They were filed by US resident Catherine Crump and Ublerb, a Chicago-based social media management company, respectively.

USPTO rejected “I can’t breath” trademark applications, and said “Although Eric Garner is not connected with the goods provided by the applicant under the applied-for mark, this phrase associated with Eric Garner is so famous that consumers would presume a connection”.

In 2020 its happened again, will USPTO reject with same reason or allow it? Let’s wait and see.

Huawei v. LG on patent invalidation dispute is recorded as top 10 reexamination case by China National Intellectual Property Administration (CNIPA) in 2019

The China National Intellectual Property Administration (CNIPA) has announced the top 10 patent invalidation and reexamination cases of 2019. The case No. 39900 has caught our attention because it is a communication-related patent invalidation dispute between Huawei Technologies and Optical cellular technology LLC (original applicant: LG Electronics Inc). According to reports from most medias, six companies owned 80% patents mostly close to the 5G standard – Huawei, Samsung Electronics, LG Electronics, Nokia, Ericsson AB and Qualcomm.   

With no questioning, these company will rule the 5G standard and their patents will become Standard Essential Patents (SEP).

This patent invalidation and reexamination case discussed multiple bases for invalidation including claim scope has beyond the claims, independent claim does not contain necessary technical features to solve its technical problems, entitlement to a priority date and insufficient disclosure of supporting the claims. Huawei does not success in this case.

The Patent number ZL200880112278.0

Title: Method for transmitting uplink signals

Originally filed on 04 September 2008 and Entering National Phase Date is 19 April 2010

Although 5G initial standard for commerce is 3GPP-Release-15, the patent is included in the 3GPP-Release-8 standard. The 3GPP- Release-8 standard is the first release to define the LTE standard for creating the next generation of communications technology. The LTE standard is what we are using in our 4G phones. However, many of us still rely on 3G when 4G isn’t available and that’s exactly what will happen with 5G. The idea that 5G is a direct replacement for 4G is erroneous. In fact, it’s a complementary technology. With the two working in concert, we should be able to get good speeds wherever we are.

ZL200880112278.0 patent is related to mobile communication technology, in particular, relates to techniques for transmitting an uplink signal, the uplink signals including ACK/NACK signal, in addition to the ACK/NACK signal other than the control signal, and data signals.

[Claim 1.] A method for reference signal is transmitted to the receiver and an uplink signal of the method, wherein the uplink signal including the ACK/NACK signal, in addition to a control signal is ACK/NACK signals on, and the data signal, the method comprises: The reference signal is mapped to a predetermined range of 2-dimensional resource time-domain unit, and a 2-dimensional resource range includes a plurality of time-domain units a plurality of frequency domain elements, the time-domain units correspond to SC-FDMA symbols corresponding to the virtual sub-carrier and the frequency domain elements; Multiplexing control signals and data signals in sequence, and the ACK/NACK signal is not multiplexed; The sequencing and multiplexing the range of 2-dimensional resource mapped to the signal, such that the sequentially multiplexed signal from the 1st frequency domain elements of the 1st to the last start time-domain unit, 2nd frequency domain elements of the 1st to the last time-domain units are mapped to 2-dimensional resource range, until all of the multiplexed signals are mapped; ACK/NACK signal is mapped to the reference signal is mapped to the station to which the predetermined time-domain units of two adjacent time-domain units, whereby the multiplexed ACK/NACK signal and the sequentially multiplexed signal, wherein, in the ACK/NACK signal is overwritten on the portion of the multiplexed signal in sequence; and 2-dimensional resource scopes mapped to the transmission to the receiver reference signal and the uplink signal.

Huawei filed invalidation request on 30 September 2018, the reexamination board made their decision on 05 April 2019. It took only 9 months. Although the board’s decision is that patent right is maintained, the overall strategy of Huawei is good.

Huawei firstly attacks the patent’s priority date benefits. The patent had claimed 4 priority which the earliest date is 13 September 2007, and the second priority date is 13 December 2007. During the oral examination, applicant gave up on its first priority which gives Huawei 3 more months to find any prior art published before December 13^th. Moreover, Huawei argued that “The reference signal is mapped to a predetermined range of 2-dimensional resource time-domain unit” in the claim 1 does not reflect to the second and third priority. The priorities only disclosed “ACK/NACK signal is mapped to a matrix that does not contain reference signal and is in a time sequence based on its priority, wherein the matrix is 12×12 matrices.

The board refused to accept the argument made by Huawei, and said that since the 12×12 matrix is a 2-dimensional matrix, and the priority has disclosed that each two SC-FDMX can be a reference signal for ACK/NACK signal using 12 OFDM as carriers in the matrix. Therefore, it is obvious for a person skilled in the art being able to adapt 2 SC-FDMXs as a reference to a 2-dimensional resource time-domain unit.

Moreover, the above-mentioned situation also happened in the patent which its description only disclosed that 12 OFDM sub-carriers transmit a sequence of information, the information is transmitted via one sub-frame, and each subframe includes 14 SC-FDMA symbols, and 2 of the 14 SC-FDMS symbols are used as reference signals (which are pilot signals). Huawei interpreted that there’s insufficient disclosure of supporting the claim.

My two cents is that this patent is being lucky on the determination whether the patent can benefit the priority of the prior document. The priority explicitly disclosed the matrix does not contain reference signal, it taught that a reference signal can be transmitted on the matrix nevertheless. Thus, regardless the prior document neither implied nor teach-away disclosed in the disclosure, the key point is that whether the priority in its disclosure somewhere other has sufficiently described.

THINGS MAY CHANGE ON DETERMINATION OF SUPPLEMENTARY EXPERIMENTAL DATA IN CHINA AFTER US-CHINA TRADE DEAL AGREEMENT

On 15 January 2020 the United States and China announced an economic and trade deal (“Agreement”), which China has agreed to permit pharmaceutical patent applicants to rely on supplemental data to satisfy relevant requirements for patentability, including sufficiency of disclosure and inventive step, during patent examination proceedings, patent review proceedings, and judicial proceedings (i.e., article 1.10 of the agreement).

Although this agreement is only applied for drug-related patent applications, it will make huge difference and impact in the future invention patent examination. Notwithstanding the provisions in the revised Guidelines for Patent Examination effective on 1 April 2017 which is stipulating in Section 3 of Chapter 10 in Part 2 that: “with respect to experimental data submitted after the date of filing, they should be examined by the examiner. The technical effect proved by the supplementary experimental data should be one deducible by a person skilled in the art from the disclosure of the patent application as filed.”

The 2017 revised Guideline for patent examination has removed the statement of “any experimental data submitted after the date of filing shall not be taken into consideration.” However, in actual practice, China still take a very strict examination standard toward supplementary experimental data, especially to the amendments. As to whether a person of ordinary skill in the art is capable of knowing a technical effect, Examiners in CNIPA normally take account whether the disclosure explicitly disclosed such technical effect in the original experimental data of the originally filed application. If the technical effect does not disclose in the originally filed application, CNIPA generally will refuse the supplementary experimental data to be used for proving the inventive step of an invention at the time of filing a patent application, even if there is explicit depiction of relevant technical effect in the description accompanied by the proof of said technical effect by experimental data or embodiments submitted by the applicant after the filing date.

The United States (U.S.) has relatively loosen regulations compared to China on the determination of supplementary Experimental Data. The provision is prescribed in section 716 of the Manual of Patent Examining Procedure (MPEP) – “Affidavits or Declarations Traversing Rejections, 37 CFR 1.132 [R-11.2013].

Evidence traversing rejections, when timely presented, must be considered by the examiner whenever present. All entered affidavits, declarations, and other evidence traversing rejections are acknowledged and commented upon by the examiner in the next succeeding action. The extent of the commentary depends on the action taken by the examiner.  

According to MPEP 716.01(a), Affidavits or declarations, when timely presented, containing evidence of criticality or unexpected results, commercial success, long-felt but unsolved needs, failure of others, skepticism of experts, etc., must be considered by the examiner in determining the issue of obviousness of claims for patentability under 35 U.S.C. 103. Any supplementary Experimental Data followed can be used.

On 28 April 2020, the Supreme Court of the People’s Republic of China published the amended draft Provisions concerning interpretation of certain norms of the patent law and its implementing regulations about the administrative litigation of patent rejections and invalidations, namely the Provisions on Several Issues Concerning the Trial of Administrative Cases Concerning Patent Authorization and Confirmation of Power (I). The Provisions offer the Supreme People’s Court the opportunity to address new issues and matters not expressly regulated by the patent law.

The Article 11 of the draft Provision is that when a patent applicant or a patent owner submits experimental data with respect to a pharmaceutical patent after the date of application, the People’s Court shall examine this new evidence. Such data may be provided to show that the technical effects provided in the description have been adequately disclosed, and could be confirmed by the person skilled in the art on the date of application in accordance with the illustrative statements, annexed graphs and common knowledge. Such data may be provided to show that the patent has technical effects different from those in the comparative documents, and these technical effects could be directly and undoubtedly confirmed by the person skilled in the art on the date of application on the basis of the publicly available contents of patent application documents.

These provisions, if adopted, could make significate impacts to invalidations. For patent infringement litigations, it is common to see the defendant filed a request for invalidation of the patent right on the grounds of insufficient disclosure of the specification according to Article 26, paragraph 3 of the Patent Law against the plaintiff. Therefore, submitting experimental data with respect to a pharmaceutical patent after the date of application may help the patent owner get away from invalidation because of insufficient disclosure.

Supplementing the experimental data rules is more conducive to the patent stability of the original drug manufacturers. The difficulty of invalidating the patents involved in the case only on the ground of lack of experimental data will greatly increase the difficulty.

It will be interesting to observe how this arrangement will be handled. We will need to wait and see whether and when the State Council of China will decide to provide more guidance by implementing legislation that will concretely implement the Economic and Trade Agreement (US-China trade deal agreement).

Patent acquisition in China within 2 months

In our previous blog post, we have introduced two ways to speed up your patent examination in China – Patent Prosecution Highway and Prioritized Examination program. However, there’s another and new option to accelerate your invention patent application called “preliminary examination (Pre-examination)”.

In November 2019, the General Office of the Communist Party of China (CPC) Central Committee and the General Office of the State Council issued the opinions on strengthening the Protection of Intellectual Property Rights, which has provided the fundamental principles and guidelines for IP protection work. Based on such decision and arrangement, CNIPA supports the construction of local IP protection centers and aims at competitive industries of various provinces and cities to provide one-stop service integrating quick examination, quick right confirmation and quick right protection for enterprise and public institutions within the areas under administration.

Positive attention and responses have been received from local government regarding the establishment of the local IP protection center. Currently, there’re 33 IP protection centers distributed in 18 provinces.

Pre-examination is one of the core businesses of IP protection center, which helps applicants to eliminate text errors and defects before formally submitting patent applications and improve the quality of application texts. The pre-examination report is an important reference for follow-up patent examination. According to Zhang ZhiCheng, General Director of IP protection department of CNIPA, the examination period of patent applications after pre-examination by IP protection centers are largely shortened, and the approval rate are much higher than national average level. By February 2020, IP protection centers totally assisted in handling 9,038 pre-examination cases.

According to the announcement from Kunshan China government website, The examination period for a solid-state battery related invention patent only took 51 days (35 working days), and the normal examination period for an invention patent application is 22 months. The IP protection center aims to shorten the examination period from 22 months to 6 months.

Limitations

Not every applicant is able to apply a patent pre-examination. The patent applicant must be an organization registered in the province that had an IP protection center, and the subject of the invention must meet specific technical fields. The specific technical fields can be varied among IP protection centers.

Furthermore, the patent application cannot be a notational entry PCT application, patent applications applied both utility model and invention patents on the same day under the first paragraph of article 9 of the China patent law, and applications that require confidentiality review.

Pre-examination overview

The persecutions in IP protection center and CNIPA are independent. The material for apply pre-examination must include all required documents to be filed before CNIPA such as specification, drawings and application form. The IP protection center will review the material and provide an opinion report to applicant or agent via emails.

Once the pre-examination has passed, the materials must be covered to XML format document before officially file to CNIPA. The set period for responding the first and two office actions are 5-10 days (including holidays).

Notably, if applicant is unable to solve all the rejections and objections raised in two previous office action, the set period for responding to the third and successive office action will automatically convert to “normal”.