Filing UM and Invention Simultaneously in China

 

For “products” (generally, mechanical inventions), Applicants can file both a utility model (UM) and invention patent simultaneously[1].The advantage of filing both UM and invention patent applications is that the UM will grant quickly (usually within 6 – 12 months since not substantively examined) thereby providing some patent protection while the invention patent application is undergoing examination, which can take several years. Note though UMs are only valid for 10 years from filing and do not protect methods.  Invention patents are generally considered more valuable than UMs since they last 20 years from filing and have a broader protection scope (i.e., can claim methods). Continue Reading Filing Utility Model (UM) and Invention Patent Applications Simultaneously in China

On May 7th this year, China National Drug Administration (CNDA) released a proposed draft of special review and approval procedure for innovative medical devices. The procedure intends to expedite approval for medical devices if the Applicant has patents or patent applications pending in China. This draft contains several major revisions compared with the previous version issued in 2014. Continue Reading China plans to revise the Special Review and Approval Procedure for Innovative Medical Devices

The State Council of China announced in April this year a plan to extend patent protection for up to five years for innovative drugs due to regulatory delay.  However, the State Council has not disclosed specific rules nor timetable for same.  Meanwhile, in May this year, China and the United States issued a joint statement in the economic and trade consultations, which clearly indicated that China would advance revisions on Patent Law, and it is speculated that revisions related to the above-mentioned patent term extension for drugs will be potentially reflected in the revised Patent Law[i].

It is likely that the patent term extension will only apply to patent applications filed after the revised Patent Law is in force.  Revisions in the Patent Law will probably complete late this year, and the implementation of the patent term extension will probably begin in early next year.  In addition, if a patentee of a patented drug product only applies for regulatory approval in China or if it only receives regulatory approval overseas but not in China, the patent term extension may not be available. The maximum term extension is 5 years, not to extend total remaining patent term beyond 14 years[ii].

Patent term extension will presumably apply to both foreign and domestic pharmaceutical companies.  Drugs developed in China or overseas will also probably entitled to patent term extension.  Also, yet to be determined, whether each drug patent is entitled to a single patent term extension (e.g., if a patent is relevant to two different drugs that underwent regulatory approval, is only one extension allowable?), and if only one patent per drug is entitled to the extension.

We can expect opposition from Chinese generic drug manufacturers as this will delay their ability to supply new generic drugs.  However, foreign drug companies with new drugs should benefit with longer patent monopolies.

[i] https://www.chinalawinsight.com/2018/05/articles/intellectual-property/金杜知识产权主题月-药品知识产权法律行业%EF%BC%9A新/

[ii] http://news.pharmnet.com.cn/news/2018/01/25/489761.html

China implemented a Patent Prosecution Highway program to expedite examination of invention patent applications in December 2011. In the year of 2016, (the year for which most recent data is available) the China State Intellectual Property Office had received 5,274 requests for expedited examination via the PPH program, among which 1,904 were filed by U.S. applicants and second only to Japanese Patent Office (JPO)[1]. We believe the number of requests will keep growing as USPTO is examining applications faster, which means faster grants and therefore more Applicants will be eligible to take advantage of the PPH in China.
Continue Reading China’s Patent Prosecution Highway: Tips For US Applicants

On March 17, 2018, the 13th National People’s Congress (“NPC”) approved the plan of restructuring administrative organs under the State Council. The implementation of the plan is already in process, but the State Council did not announce a date for completion. Specifically, on the IP side, the SIPO will take over registration and administration of trademarks from the State Administration for Industry & Commerce (“SAIC”) by incorporating the China Trademark Office (“CTMO”). The SIPO will also take over registration and administration of geographic indicators from the General Administration of Quality Supervision, Inspection and Quarantine (“AQSIQ”). The SIPO will retain its responsibility of registration and administrative adjudication of patents (including examination of patent applications, reexamination and invalidation proceedings). Currently, the SIPO will not take over the administration of copyright from the National Copyright Administration. Continue Reading China announces plan to restructure the State Intellectual Property Office (“SIPO”)

There are significant differences between U.S. and Chinese patent practice, particularly with respect to Office Action (OA) responses.  U.S. patent practitioners should know about these differences so that (1) when they are drafting U.S. cases to be translated and filed in China, they can avoid submitting claims and doing other things that will not work in China and that will have to either be redone by the Chinese firm before filing or will result in needless rejections and delay, and (2) when they are working with their Chinese counterpart counsel, they can have a better understanding of Chinese practice.

  Continue Reading What U.S. Patent Practitioners Should Know About the Differences Between U.S. and Chinese Prosecution Practices