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Focus on China:Successful Preparation and Prosecution
Samson G. YuKangxin Partners, P.C.
Beijing, [email protected]
www.kangxin.com
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Development of Patent Filings in ChinaDevelopment of Patent Filings in China
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Growth of Patent Applications Received by SIPO
203573252631
308487353807
476264
573178
694153
0
100000
200000
300000
400000
500000
600000
700000
800000
2001 2002 2003 2004 2005 2006 2007
Total
Domestic
Foreign
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Patent Applications Received by SIPO in 2007 Total (including domestic and foreign): 694,153 increased by 21.1 %
- Invention: 245,161 (36.7%) increased by 16.5% filed by Chinese entities: 153,060 increased by 5.1 %filed by foreign entities: 92,101 increased by 4.5 %
- Utility Model: 181,324 (28.2%) increased by 12.4 % - Design: 267,668 (35.1%) increased by 33.0 %
Invention
Design
Utility Model
Invention
Utility ModelDesign
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Patent Granted by SIPO in 2007
• Granted patents in total: 351,782, increased by 31.3 %• Patents for invention: 67,948, increased by 17.6 %• Patents for utility model: 150,036, increased by 39.4 %• Patents for design: 133,798, increased by 30.5 %
• Granted patents for foreign entities: 50,150, increased by 13.6 % • Granted patents for Chinese entities: 301,632, increased by 34.7 %
Design
Invention
Utility Model
Invention
Utility ModelDesign
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Development of IP Litigation in ChinaDevelopment of IP Litigation in China
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Proliferation of IP Litigation in ChinaIncreased averagely yearly by 15% in recent years
0
2000
4000
6000
8000
10000
12000
14000
16000
18000
2001 2002 2003 2004 2005 2006 2007
AcceptedCasesConcl udedCases
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IP Cases Distribution in 2001-2007
Distribution of IP Civil Cases in 1st Instance in 2001-2007
copyright38%
TM14%
patent24%
unfaircompetition
11%
technologycontract
7%
other6%
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Foreign-related IP Cases• Chinese court totally ruled 1,646 Foreign-related IP cases in 1st instance in 2001-2007• Increased yearly by 57.96% averagely
0
100
200
300
400
500
600
700
2005 2006 2007
Forei gn-rel atedcases
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IP Administrative Cases
– 2003-2007 totally ruled 3,156 IP administrative cases in 1st instance
– Increased by 4.87 times than the case number of 1997-2002
– 2,067 patent cases– 1,015 trademark cases– 83 copyright cases and the other cases
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Compensation Significantly Increased in Recent Cases
• Chint Group vs. Schneider– Sep. 29, 2007, in Wenzhou, Zhejiang, involved $81 million in
compensation– Chint Group, a Chinese low-voltage product company won a
n utility model patent infringement lawsuit, Court found Schneider earned $126.2 million by selling five models of devices, which fall in the protected scope of Chint’s patent, from 2004 to 2006, and made a profit of $82 million, which is ruled by court for compensation to Chint Group
• Tuopu vs. Beijing Tailong– Jun. 20, 2006, Henan province, Zhengzhou intermediate cou
rt ruled, Beijing Tailong compensate Tuopu $4.4 million
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Methods to Calculate Damages
• Principle of compensation– compensatory rather than punitive– full compensation of damages in IP cases
• Methods of calculation– loss of IP owner– gains of infringer (shifting burden of proof)– referring to royalty (1-3 times in patent
infringements)– statutory damages (around $70,000)
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Current Patent System in ChinaCurrent Patent System in China
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Patent Prosecution in China
• First File• 18 Months Publish• Substantive Examination Required
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Category and Definition of Patents• Patent for Invention
– Any new technical solution relating to a product, a process or improvement thereof
– Examination as to substance is required • Patent for Utility Model
– Any new technical solution relating to the shape, the structure, or their combination of a product
– Preliminary examination only – Search report rendered by SIPO prior to litigation
filed• Patent for Design
– Any new design of the shape, the pattern or their combination, which creates an aesthetic feeling and is fit for industrial application
– Preliminary examination only– Search report rendered by SIPO prior to litigation
filed
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Substantive Examination
• Initiated under Request by Applicant• Time Limit for Submission of the
Request– 3 years from the earliest priority date– Deemed withdrawn if request untimely
made or fee no fully paid– Restoration possible if surcharge is paid
within two month from the issued date of the Withdrawn Notice
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Patentability Requirements
• Any invention or utility model for which a patent right may be granted must possess novelty, inventiveness, and utility
• Software becomes patentable only when it combines with hardware, or is described as a method (logic flow chart)
• Business method per se is not patentable yet• Source code per se is not a patentable subject
matter• Medium storing computer software is not
patentable• “a computer-readable recording medium
storing a program”
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Novelty Requirements
• No identical invention or utility model has been publicly disclosed in publications in China or abroad;
• Or has been publicly used or made known to the public by any other person in China;
• Nor has any other person filed previously with the Chinese Patent Office an application which described the identical invention or utility model and was published after the date of filing.
• Worldwide publication or domestic use
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Inventiveness Requirements (1)
• An invention that has prominent substantive features, and represents a notable progress
• Interpretation of “prominent substantive features”– the invention is non-obvious over the prior art
to a person skilled in the pertinent art;– An invention shall be regarded as obvious or
having no prominent substantive features if it is capable of being made or obtained by means of logical analysis, deduction or experiment
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Inventiveness Requirements (2)
• Interpretation of “notable progress”– The invention has a considerable progress
over the closest prior art in the pertinent art
– The considerable progress resides in overcoming drawbacks and shortcomings which are associated with the prior art, or lies in a certain tendency of emerging technology development represented by the invention undergoing the examination; usually, any advantageous effects of the invention are indicative of the notable progress
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Utility Requirements
• The invention or utility model can be industrially made or used, and produce effective results
• The invention is industrially applicable, and generates positive effects
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Requirements under Art. 26 (3)
• The description shall set forth the invention or utility model in a manner sufficiently clear and complete so as to enable a person skilled in the relevant technology to carry it out– Indefiniteness requirements– Full disclosure requirements – Enablement requirements
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Indefiniteness Requirements
• The lack of indispensable technical features– Make sure the technical solution required by the claim
is a complete one and distinguished from the prior art• The use of correct terms
– Many objections, e.g. non-statutory measurement units
– The inconsistence of the terms used in description and claims
– Features in description is missed in drawings or vise verse
• Other issues– A system claim contains a method– The examiner does not understand the invention– The examiner wants to narrow claims but lack of legal
basis
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Full Disclosure Requirements
• Support for each element of a claim– Each element of independent claim
should have a full disclosure (computer program of a medical detecting method)
• Convincible technical effects – The technical effects should be
convincible for one skilled in the art– The objections, technical effects, and
advantages of the technical solution required in claims must be disclosed
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Enablement Requirements
• The derivation should be given for an equation unless it is commonly known
• A broad claim needs more embodiments to support
• A system claim comprises in its characteristic portion a method
• The advantage of the technical solution sought for protection should have support in description
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The Completeness Requirements• Eight portions of the description
– Title of the invention– Technical field of the invention– Background of the invention– Summary of the invention
ObjectivesTechnical solutionsAdvantages & technical effects
– Description of drawings– Embodiments
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• Title of the InventionTechnical field is narrowly defined
• Background(1) Containing unnecessary prior art or the
background is too long to be logically clear
(2) Containing problems of prior art which cannot be solved by the present invention
• Summary of the InventionAdvantages should be supported by the
description combining the technical features with the technical problem to be solved
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Embodiments(1) Too simple or incomplete, unclear technical solution(2) Only one embodiment but a generic concept in claims required(3) Failure to incorporate the prior art, which is helpful to understand the present invention or is necessary(4) Process embodiment without device embodiments which implement this process
AbstractLack of one or more items such as the title of
the invention, the technical field to which the invention pertains, the technical problem, and the principal use or uses of the invention
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Claims:(1) An independent claim cannot reach the object or the technical solution is inconsistent with the subject matter required in claims
(2) Independent claim shall require a scope matching with the description, not too narrow or broad(a) the scope shall be the embodiments and all changes
and/or varieties one skilled could reasonably anticipate(b) for an apparatus claim, it would not be defined by f
unction and/or effective features only(3) A dependent claim includes technical features dispensable for reaching its advantages, which renders that the claim is improperly narrowed(4) Data structure, signaling structure or algorithm (5) Functional limitations are not used properly (6) Terms such as “algorithm”, “program”, “commercial method”, “data structure”, “signaling”, “frame (structure)”, or the like appear in claims
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Special Requirements for Chemical Inventions
• As an invention of new use of a known compound, experimental evidences need to be given in the description to prove its use and effects– the lack of technical data is insufficiency– supplementary data filed late is not accepted
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Cope with Rejections
• In the Original Description– more examples– enough technical data– statement for the mechanism of
the invention• In the Response to Office Action
– legal requirements burden of proof
– filing prior art document– level of the skilled person– mechanism of the invention– filing divisional application
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Responding to Office Actions
• Arguments on novelty and inventiveness– Arguments shall focus on the claims with
reference to the prior art, not those only disclosed in specification but not required in the claims
– Attention should be paid at the difference between the present invention and prior art and further, the unexpected technical effects from the difference
– A reference discloses all technical features except for distinguished ones that are disclosed by the other reference
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Amendments in Examination
• When to Make Voluntary Amendment:– Substantive Examination Request is
Made– Within 3 Months after Receipt of the
Notification on the Entry into Substantive Examination Stage
• How to Make– may not go beyond the scope of the
original disclosure• After the two occasions, amendments
are allowed only as Required by the Office Action
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Allowable Amendments
• Amendments are made on the basis of PCT applications
• Amendments might be directly and undoubtly rendered from the original specification, drawings, and claims
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Unallowable Amendments
• Amendments on the basis of priority documents
• Adding a new independent claim which has broader scope than the original one that has been amended in response to office action, while the new claim is supported by the specification
• Deletion of technical feature from an independent claim without suggestions from office action
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Amendments After Patent Granted
• Only obvious errors of the SIPO can be corrected at the request of the patentee
• In Reexamination– the scope of claims is not allowed to be
broadened– the class of claims should not change, and – the number of claims should not be increased
• In Invalidation– Scope of claims is not allowed to be enlarged– Addition of any new claim is not allowed– Only deletion and/or combination of claims is
allowed– Technical features in the description are not
allowed to be introduced into claims
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Divisional Application
• Time Limited for Filing Divisional Applications:– Within 2 months from date of receipt of the Notice
of Granting the Patent or before the rejection comes into effect
– Applicant is entitled to file divisional application • within three months upon receipt of a rejection
regardless whether or not a Request for Re-examination is filed with the PRB; or
• during the re-examination procedure, or • under judicial review procedure
• Filing a divisional application based on another divisional application on the applicant’s own initiative is restricted
• No new matter is allowed to be introduced
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Amending Claims by Disclaimer
• As Required in the Examination Guide, Two Alternative Preconditions are Set for Disclaimer:– Applicant must prove the Invention cannot
be practiced with the “Disclaimed” range, or
– Applicant must prove the invention after excluding the “Disclaimed” range possess novelty and inventiveness over prior art
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Double Patenting
• Controversial Views on Double Patenting• COURT: only one patent right can be granted
to one invention for its whole patent life, • SIPO: the identical invention shall not have
multiple co-existing patent rights in valid state
• The last version of Examination Guide confirms partially overlap is not “identical”
• The applicant makes a statement that the previously granted patent is abandoned since the filing date of the previous application
• Strategy• co-file utility model and invention with
different scopes of Claims• file divisional application to overcome the
deficiencies in parent application
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Final Rejection
• A rejection would be made after at least two office actions, especially:– If the applicant’s response to the first office
action includes amendments, and/or– Substantives arguments have been provided
in the response
• Applicant’s strategy– Take advantage of the chance in response to
first office actions by amendments and/or arguments
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