patent

Playing the winning cards in Chinese patent invalidation appeals

[By Arthur Tan-Chi Yuan]

[Author’s note: Key lessons for non-Chinese litigants: Patent Reexamination Board, retroactive application of the third amendments to the Chinese patent law, standing, registered Chinese trademarks as evidence in invalidating Chinese design patents]

Translated Decisions: 
IP: 

TIPS and UPDATES Regarding Chinese Patent Prosecution & Litigation

While the US patent and innovative community is grapping with, and suffering from, the impact of Alice from SCOTUS since 2014, China has also been busy updating and refining its patent law.  Goals to improve utility model patents' quality (through some sort of substantive examination) and strengthening local SIPO enforcement powers are on the agenda, among other things.

Programs: 

SIPO Order No. 68 Amending Guidelines for Patent Examination

[Arthur Tan-Chi Yuan]

The State Intellectual Property Office (SIPO) released its Order No. 68 to amend the Guidelines for Patent Examination (equivalent to the MPEP for USPTO) on March 17, 2014 (original text in Chinese here).  The amendments will come into effect on May 1, 2014, same day as the Third Amendments to the Trademark Law.

The amendments are made to the following sections/subsections of the Guidelines for Patent Examination:

SIPO is seeking comments on proposed changes to its Patent Examination Guidelines on GUI

[Arthur Tan-Chi Yuan]

For the first time, the State Intellectual Property Office (SIPO) of P. R. China is considering patent protection of graphical user interface (GUI).  On October 22, 2013, SIPO has published a request for comment notice seeking views on its proposed changes to the Patent Examination Guidelines related to GUI as a patentable subject matter of a design patent.  This is part of the ongoing work that SIPO started in March of 2013. 

The foci of the changes are:

A.  Amendments to Part I, Chapter 3:

IP: 

Prioritized Examination of Chinese Patent Applications

[Arthur Tan-Chi Yuan]

Following the footsteps of the USPTO, State Intellectual Property Office has also began implementing rules* on a prioritized patent examination program starting on August 1, 2012.

The program, however, excludes the applications on invention patent applications that are subject to bi-lateral or multi-lateral agreements between SIPO and other patent offices of other countries or regions.

IP: 

New PRB Rules Effective on September 1, 2012

[Arthur Tan-Chi Yuan]

As a late follow-up to our August 24, 2012 program, State Intellectual Property Office (SIPO) released a set of amendments to rules governing Patent Reexamination Board (PRB) on July 18, 2012.  These new rules went into effect last Saturday, September 1, 2012. 

As a brief background, in China, the PRB handles:

IP: 

National IP Strategy

[Arthur Tan-Chi Yuan]

IP: 

Are You an Innocent Carrier of Infringing Products?

 

 

Tianjin Jiegao Architectural Materials LLC.

v.

Tianjin Jiegao Kemao LLC. v. Shaohui LIU

(Supreme People’s Court, December 15, 2009)

Translated Decisions: 
IP: 

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