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)[1] 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.[1] 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.[1] 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.[1] 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


[1] No. 48204, see

http://reexam-app.cnipa.gov.cn/reexam_out2020New/searchdoc/decidedetail.jsp?jdh=48204&lx=wx.

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.

Continue Reading CNIPA Goes Paperless—Ceases Issuing Paper Trademark Registration Certificates as of January 1, 2022

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.”

Continue Reading CNIPA’s New Formalities Requirements for Petitioning for Protection of Well-Known Marks: Letter of Good Faith of Applicants and Agents

Northeast Ecological Agriculture Development Co., Ltd. (Northeast), v. Jikang Green Valley Planting Professional Cooperative (Jikang), No. 724 [2019], Final, Civil Division, the Supreme People’s Court of the People’s Republic of China.

Continue Reading Bidding Document Available Only To Bidders May Not Be Publication For Prior Art

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.[1] 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.[2]

 


[1] 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.

[2] Id.

The Standing Committee of the National People’s Congress promulgated the long-awaited amended PRC Copyright Law on November 11, 2020, which became effective on June 1, 2021. In tandem with the effective date of the amended PRC Copyright Law, the People’s Courts and the National Copyright Administration recently held some press releases, announcing model cases involving internet disputes and copyright protection. Some of the important announcements include the following:

Continue Reading The PRC People’s Courts and Governmental Authorities Issue Model Cases regarding Internet Disputes and Copyright Protection

The Standing Committee of the National People’s Congress promulgated the amended PRC Patent Law on October 17, 2020, and the new PRC Patent Law became effective on June 1, 2021. Article 70.1 of the new PRC Patent Law provides that “the patent administrative department under the State Council may, at the request of the relevant patentee or the interested parties, handle the patent infringement dispute that has a major impact nationwide.” Continue Reading Measures Issued on Administrative Adjudication of Major Patent Infringement Disputes