On March 29, 2018, the State Council issued Measures for transferring Intellectual Property rights (IPR) to foreign parties (Pilot) (hereinafter called “Measures”). The Measures are effective immediately and apply to all technical IPR (i.e., patents, registered integrated circuit layout designs, computer software copyrights and new plant varieties rights). According to the Measures, in IPR export and M&A approval process, a relevant IP department under the State Council (e.g., the State Intellectual Property Office) must conduct additional review before IPR transfer to a foreign entity or before foreign investors acquire Chinese companies that include IPR transfer. Previously, in IPR export approval process, only non-IP departments reviewed IPR transfer. In M&A approval process, no government departments reviewed IPR transfer. Continue Reading China tightens scrutiny on Intellectual Property transfers to foreign parties
This March, the Beijing Intellectual Property Court (the court) held that the deadline for claiming domestic priority is when an applicant completes registration formalities (i.e., pays required fees) and not later, when SIPO actually grants a resulting patent. In an administrative trial ((2015) JingZhiXingChuZi No.:2822), Richtek Electronics Co., Ltd. (Richtek) sued the State Intellectual Property Office (SIPO) based on a Notification that a claim to priority in a later-filed application was deemed not to have been made since the later-filed application was filed after payment of fees but before grant of the parent application.
Unlike the U.S. Patent & Trademark Office (USPTO) which substantially increased some of its fees as of January 16, 2018, China’s State Intellectual Property Office (SIPO) has waived some of its patent fees as of August 1, 2018. This approach aims at reducing the financial burden to applicants and patent owners, and encouraging patent filings. Continue Reading The Chinese State Intellectual Property Office (SIPO) has waived some of its patent fees as of August 1, 2018
Filing UM and Invention Simultaneously in China
For “products” (generally, mechanical inventions), Applicants can file both a utility model (UM) and invention patent simultaneously.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.
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). 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.