On January 13, the China National Intellectual Property Administration (CNIPA) circulated a draft amendment to the PRC Trademark Law for public comment (“TML Draft Amendment”). The TML Draft Amendment is the product of deliberations that officially commenced in 2018. This deliberation process resulted in the 2019 stop-gap revisions to the Trademark Law that were primarily focused on addressing the issue of trademark hoarding. The current TML Draft Amendment was prepared by a CNIPA working group established in 2022 to consolidate prior survey and research efforts and prepare a first draft of proposed revisions. This first draft is a comprehensive and ambitious effort to update the law to address both new and longstanding issues, including – among many others – the issue of bad faith filings and issues around trademark use. Many industry groups and professional organizations (including INTA and the USCBC) will be submitting comments on behalf of their members before the February 27 deadline for public comment.Continue Reading CNIPA Issues Significant Draft Amendment to the PRC Trademark Law
On December 29, 2021, the Beijing Intellectual Property Court (the Court) maintained the validity of CN Invention Patent No. ZL200680025545.1 (the ’545 patent), which reversed an invalidation decision made by the Patent Reexamination and Invalidation Department of the China National Intellectual Property Administration (CNIPA). The Court held that the claimed invention is inventive because one person of ordinary skill in the art would not have been motivated to modify three specific positions of the asserted prior art compound (right) with specific substituents, respectively, to obtain the claimed compound (left) in view that one prior art reference discloses the possibility of making at least 200 million compounds:
(1) Substituting C=O at the 2-position of the imidazole ring with C=S.
(2) Substituting a chlorine-substituted benzene ring with a fluorine-substituted benzene ring.
(3) Substituting -NHCO- with -CONH-.
The Court acknowledged the low predictability in the pharmaceutical inventions, and therefore appreciated the non-obviousness of the claimed compound in view of the prior art.
The Patent Reexamination and Invalidation Department (PRID) of the China National Intellectual Property Administration (CNIPA) invalidated the CN Invention Patent No. 201310567987.0 (the ’987 patent) because the patentee failed to submit a request for grace period for a novelty art (“the Request”) within two months after the patentee knew or should have known about the novelty art. The novelty art is an article published within the grace period (i.e., within six months before the priority date of the ’987 patent), and all the inventors of the ’987 patent are also authors of the article. In addition, the article was cited by the patentee for related projects after the ’987 patent was granted. Therefore, the PRID found that the patentee knew about the novelty art at least when the patentee cited the novelty art. The PRID further found that 1) the patentee should have known the novelty art would anticipate the claims of the ’987 patent; and 2) it is the patentee’s responsibility to file the Request in time after the patentee knew or should have known about the novelty art after the application was filed.Continue Reading A Request for Grace Period for a Novelty Art Should Be Submitted Within Two Months When the Patentee Knew or Should Have Known About the Novelty Art After the Patent Application Was Filed
The Patent Reexamination and Invalidation Department (PRID) of the China National Intellectual Property Administration (CNIPA) maintained the validity of CN Invention Patent No. ZL02123000.5 (the ’000 patent) in an invalidation proceeding. The PRID held that the claimed invention is inventive because: (1) one person of ordinary skill in the art would not have been motivated to increase the water-solubility of butylphthalide by complexation with hydroxypropyl-β-cyclodextrin; and (2) one person of ordinary skill in the art would not have expected that the increase of the water-solubility would be sufficient to allow a therapeutically effective amount of butylphthalide to be delivered in aqueous formulations. The PRID appeared to adopt the “reasonable expectation of success” requirement in the U.S. patent practice. Although prior art references establish that cyclodextrin derivatives can improve water solubilities of compounds having low or no water solubilities, the claimed invention is not obvious because one person of ordinary skill in the art would not have had reasonable expectation that the increase of the water-solubility of the complex of butylphthalide with hydroxypropyl-β-cyclodextrin allows the therapeutic use of butylphthalide in aqueous formulations.Continue Reading “Reasonable Expectation Of Success” Considered in an Invalidation Proceeding of a Chinese Invention Patent
On February 05, 2022, the World Intellectual Property Organization (WIPO) announced that China had joined the Hague International Design System (the Hague System) that allows registering up to 100 designs in 94 countries through one international application. Continue Reading China Joins the Hague International Design System for the International Registration of Industrial Designs
The Patent Reexamination and Invalidation Department (PRID) of the China National Intellectual Property Administration (CNIPA) maintained the validity of Chinese design patent No. ZL201730205645.3 (the ’645 patent) in an invalidation proceeding. The PRID held that the patented designs are patentable because the more squared-off design of the ’645 patent is significantly different compared to the more rounded corners of the prior designs for smartwatches having square faceplate for “general consumers.” The PRID stated that it is common for a smartwatch to have a square faceplate and therefore “general consumers” would notice specific shape changes of the square faceplate and find the patented design “significantly different” from the prior design.
Faceplate of the ’645 patent
Faceplate of a prior design
 No. 48204, see
On October 12, 2021, the China National Intellectual Property Administration (CNIPA) announced that from January 1, 2022, the CNIPA will issue only electronic copies of trademark registration certificates regardless of whether applications were filed as standard paper filings or as e-filings. This procedural change follows a number of formatting changes to the registration certificate template initiated in 2018, including the addition of a QR code on each registration certificate for publication/verification purposes.
On August 6, 2021, the China National Intellectual Property Administration (CNIPA) announced that effective September 1, 2021, an applicant and its trademark agency will be required to submit a letter of good faith in support of any opposition, opposition appeal, and invalidation submission that includes a claim for well-known protection under Article 13 of the PRC Trademark Law, which provides generally broad (and cross-class) protection for marks that are “well-known.”
Northeast Ecological Agriculture Development Co., Ltd. (Northeast), v. Jikang Green Valley Planting Professional Cooperative (Jikang), No. 724 , Final, Civil Division, the Supreme People’s Court of the People’s Republic of China.
The Center for Drug Evaluation (CDE) of the National Medical Products Administration (NMPA) in the People’s Republic of China (PRC) issued a notice that the patent information registration platform of drugs approved in the PRC will be put into official operation soon. The CDE attached a user manual to specify (1) that the indications provided in each use patent to be registered should be consistent with the indications provided in the package insert of the approved drug; and (2) that each patent to be registered should cover the corresponding technical solution of the approved drug.
 The CDE of the NMPA issued the advance notice on ending the testing of the patent information registration platform on June 25, 2021, http://www.cde.org.cn/news.do?method=largeInfo&id=e666ea385204a565.
See https://zldj.cde.org.cn/ for the platform’s official website.