Transcript 幻灯片 1 - Colorado Bar Association

Focus on China:
Successful Preparation and Prosecution
Samson G. Yu
Kangxin Partners, P.C.
Beijing, China
[email protected]
www.kangxin.com
Development of Patent Filings in China
Growth of Patent Applications Received by SIPO
800000
694153
700000
Total
Domestic
573178
600000
Foreign
476264
500000
400000
353807
308487
300000
252631
203573
200000
100000
0
2001
2002
2003
2004
2005
2006
2007
Patent Applications Received by SIPO in 2007
Total (including domestic and foreign): 694,153 increased by 21.1％
- Invention: 245,161
(36.7%)
filed by Chinese entities: 153,060
filed by foreign entities: 92,101
- Utility Model: 181,324
- Design: 267,668
(28.2%)
(35.1%)
increased by 16.5%
increased by 5.1％
increased by 4.5％
increased by 12.4％
increased by 33.0％
Utility Model
Design
Invention
Invention
Utility Model
Design
Patent Granted by SIPO in 2007
•
Granted patents in total: 351,782, increased by 31.3％
• Patents for invention: 67,948, increased by 17.6％
• Patents for utility model: 150,036, increased by 39.4％
• Patents for design: 133,798, increased by 30.5％
•
•
Granted patents for foreign entities: 50,150, increased by 13.6％
Granted patents for Chinese entities: 301,632, increased by 34.7％
Utility Model
Design
Invention
Invention
Utility Model
Design
Development of IP Litigation in China
Proliferation of IP Litigation in China
Increased averagely yearly by 15% in recent years
18000
16000
14000
12000
10000
Accepted
Cases
Concluded
Cases
8000
6000
4000
2000
0
2001
2002
2003
2004
2005
2006
2007
IP Cases Distribution in 2001-2007
Distribution of IP Civil Cases in 1st Instance
unfair
in 2001-2007
competition
11%
other
6%
technology
contract
7%
TM
14%
patent
24%
copyright
38%
Foreign-related IP Cases
•
Chinese court totally ruled 1,646 Foreign-related IP
cases in 1st instance in 2001-2007
Increased yearly by 57.96% averagely
•
700
600
500
Foreignrelated
cases
400
300
200
100
0
2005
2006
2007
IP Administrative Cases
– 2003-2007 totally ruled 3,156 IP administrative
cases in 1st instance
– Increased by 4.87 times than the case number
of 1997-2002
– 2,067 patent cases
– 1,015 trademark cases
– 83 copyright cases and the other cases
Compensation Significantly Increased in Recent
Cases
•
Chint Group vs. Schneider
– Sep. 29, 2007, in Wenzhou, Zhejiang, involved $81 million in
compensation
– Chint Group, a Chinese low-voltage product company won an
utility model patent infringement lawsuit, Court found
Schneider earned $126.2 million by selling five models of
devices, which fall in the protected scope of Chint’s patent,
from 2004 to 2006, and made a profit of $82 million, which is
ruled by court for compensation to Chint Group
•
Tuopu vs. Beijing Tailong
– Jun. 20, 2006, Henan province, Zhengzhou intermediate court
ruled, Beijing Tailong compensate Tuopu $4.4 million
Methods to Calculate Damages
•
Principle of compensation
– compensatory rather than punitive
– full compensation of damages in IP cases
•
Methods of calculation
– loss of IP owner
– gains of infringer (shifting burden of proof)
– referring to royalty (1-3 times in patent
infringements)
– statutory damages (around $70,000)
Current Patent System in China
Patent Prosecution in China
•
•
•
First File
18 Months Publish
Substantive Examination Required
Category and Definition of Patents
•
Patent for Invention
– Any new technical solution relating to a product, a
process or improvement thereof
– Examination as to substance is required
•
Patent for Utility Model
– Any new technical solution relating to the shape, the
structure, or their combination of a product
– Preliminary examination only
– Search report rendered by SIPO prior to litigation
filed
•
Patent for Design
– Any new design of the shape, the pattern or their
combination, which creates an aesthetic feeling and
is fit for industrial application
– Preliminary examination only
– Search report rendered by SIPO prior to litigation
filed
Substantive Examination
•
•
Initiated under Request by Applicant
Time Limit for Submission of the Request
– 3 years from the earliest priority date
– Deemed withdrawn if request untimely made
or fee no fully paid
– Restoration possible if surcharge is paid
within two month from the issued date of the
Withdrawn Notice
Patentability Requirements
• Any invention or utility model for which a patent right
may be granted must possess novelty, inventiveness,
and utility
• Software becomes patentable only when it combines
with hardware, or is described as a method (logic flow
chart)
• Business method per se is not patentable yet
• Source code per se is not a patentable subject matter
• Medium storing computer software is not patentable
• “a computer-readable recording medium storing a
program”
Novelty Requirements
•
•
•
•
No identical invention or utility model has been
publicly disclosed in publications in China or
abroad;
Or has been publicly used or made known to the
public by any other person in China;
Nor has any other person filed previously with the
Chinese Patent Office an application which
described the identical invention or utility model
and was published after the date of filing.
Worldwide publication or domestic use
Inventiveness Requirements (1)
•
•
An invention that has prominent substantive
features, and represents a notable progress
Interpretation of “prominent substantive features”
– the invention is non-obvious over the prior art to a
person skilled in the pertinent art;
– An invention shall be regarded as obvious or having
no prominent substantive features if it is capable of
being made or obtained by means of logical analysis,
deduction or experiment
Inventiveness Requirements (2)
•
Interpretation of “notable progress”
– The invention has a considerable progress over the
closest prior art in the pertinent art
– The considerable progress resides in overcoming
drawbacks and shortcomings which are associated
with the prior art, or lies in a certain tendency of
emerging technology development represented by
the invention undergoing the examination; usually,
any advantageous effects of the invention are
indicative of the notable progress
Utility Requirements
•
•
The invention or utility model can be
industrially made or used, and produce
effective results
The invention is industrially applicable, and
generates positive effects
Requirements under Art. 26 (3)
•
The description shall set forth the invention
or utility model in a manner sufficiently clear
and complete so as to enable a person skilled
in the relevant technology to carry it out
– Indefiniteness requirements
– Full disclosure requirements
– Enablement requirements
Indefiniteness Requirements
•
The lack of indispensable technical features
– Make sure the technical solution required by the claim is a
complete one and distinguished from the prior art
•
The use of correct terms
– Many objections, e.g. non-statutory measurement units
– The inconsistence of the terms used in description and
claims
– Features in description is missed in drawings or vise verse
•
Other issues
– A system claim contains a method
– The examiner does not understand the invention
– The examiner wants to narrow claims but lack of legal
basis
Full Disclosure Requirements
•
Support for each element of a claim
– Each element of independent claim should have a
full disclosure (computer program of a medical
detecting method)
•
Convincible technical effects
– The technical effects should be convincible for
one skilled in the art
– The objections, technical effects, and advantages
of the technical solution required in claims must
be disclosed
Enablement Requirements
•
•
•
•
The derivation should be given for an equation
unless it is commonly known
A broad claim needs more embodiments to
support
A system claim comprises in its characteristic
portion a method
The advantage of the technical solution sought for
protection should have support in description
The Completeness Requirements
•
Eight portions of the description
– Title of the invention
– Technical field of the invention
– Background of the invention
– Summary of the invention
Objectives
Technical solutions
Advantages & technical effects
– Description of drawings
– Embodiments
•
Title of the Invention
Technical field is narrowly defined
•
Background
(1)
(2)
•
Containing unnecessary prior art or the background
is too long to be logically clear
Containing problems of prior art which cannot be
solved by the present invention
Summary of the Invention
Advantages should be supported by the description
combining the
technical features with the technical
problem to be solved
Embodiments
(1)
(2)
(3)
(4)
Too simple or incomplete, unclear technical solution
Only one embodiment but a generic concept in claims
required
Failure to incorporate the prior art, which is helpful to
understand the present invention or is necessary
Process embodiment without device embodiments which
implement this process
Abstract
Lack of one or more items such as the title of the
invention, the technical field to which the invention pertains,
the technical problem, and the principal use or uses of the
invention
Claims:
(1) An independent claim cannot reach the object or the technical
solution is inconsistent with the subject matter
required in claims
(2) Independent claim shall require a scope matching with the
description, not too narrow or broad
(a)
the scope shall be the embodiments and all changes
and/or
varieties one skilled could reasonably
anticipate
(b)
for an apparatus claim, it would not be defined by
function
and/or effective features only
(3) A dependent claim includes technical features dispensable for
reaching its advantages, which renders that the claim is
improperly narrowed
(4) Data structure, signaling structure or algorithm
(5) Functional limitations are not used properly
(6) Terms such as “algorithm”, “program”, “commercial method”,
“data
structure”, “signaling”, “frame (structure)”, or the like
appear in claims
Special Requirements for Chemical Inventions
•
As an invention of new use of a known compound,
experimental evidences need to be given in the
description to prove its use and effects
– the lack of technical data is insufficiency
– supplementary data filed late is not accepted
Cope with Rejections
•
•
In the Original Description
– more examples
– enough technical data
– statement for the mechanism of the
invention
In the Response to Office Action
– legal requirements burden of proof
– filing prior art document
– level of the skilled person
– mechanism of the invention
– filing divisional application
Responding to Office Actions
•
Arguments on novelty and inventiveness
– Arguments shall focus on the claims with
reference to the prior art, not those only
disclosed in specification but not required
in the claims
– Attention should be paid at the difference
between the present invention and prior art
and further, the unexpected technical
effects from the difference
– A reference discloses all technical features
except for distinguished ones that are
disclosed by the other reference
Amendments in Examination
•
•
•
When to Make Voluntary Amendment:
– Substantive Examination Request is Made
– Within 3 Months after Receipt of the
Notification on the Entry into Substantive
Examination Stage
How to Make
– may not go beyond the scope of the original
disclosure
After the two occasions, amendments are
allowed only as Required by the Office Action
Allowable Amendments
•
•
Amendments are made on the basis of
PCT applications
Amendments might be directly and
undoubtly rendered from the original
specification, drawings, and claims
Unallowable Amendments
•
•
•
Amendments on the basis of priority documents
Adding a new independent claim which has
broader scope than the original one that has
been amended in response to office action, while
the new claim is supported by the specification
Deletion of technical feature from an independent
claim without suggestions from office action
Amendments After Patent Granted
•
•
•
Only obvious errors of the SIPO can be corrected at the
request of the patentee
In Reexamination
– the scope of claims is not allowed to be broadened
– the class of claims should not change, and
– the number of claims should not be increased
In Invalidation
– Scope of claims is not allowed to be enlarged
– Addition of any new claim is not allowed
– Only deletion and/or combination of claims is
allowed
– Technical features in the description are not
allowed to be introduced into claims
Divisional Application
•
Time Limited for Filing Divisional Applications:
– Within 2 months from date of receipt of the Notice of
Granting the Patent or before the rejection comes into
effect
– Applicant is entitled to file divisional application
• within three months upon receipt of a rejection regardless
whether or not a Request for Re-examination is filed with
the PRB; or
• during the re-examination procedure, or
• under judicial review procedure
•
•
Filing a divisional application based on another divisional
application on the applicant’s own initiative is restricted
No new matter is allowed to be introduced
Amending Claims by Disclaimer
•
As Required in the Examination Guide, Two
Alternative Preconditions are Set for Disclaimer:
– Applicant must prove the Invention cannot be
practiced with the “Disclaimed” range, or
– Applicant must prove the invention after excluding
the “Disclaimed” range possess novelty and
inventiveness over prior art
Double Patenting
•
Controversial Views on Double Patenting
• COURT: only one patent right can be granted to
one invention for its whole patent life,
• SIPO: the identical invention shall not have
multiple co-existing patent rights in valid state
•
•
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The last version of Examination Guide confirms
partially overlap is not “identical”
The applicant makes a statement that the
previously granted patent is abandoned since
the filing date of the previous application
Strategy
• co-file utility model and invention with different
scopes of Claims
• file divisional application to overcome the
deficiencies in parent application
Final Rejection
•
A rejection would be made after at least two
office actions, especially:
– If the applicant’s response to the first office
action includes amendments, and/or
– Substantives arguments have been provided in
the response
•
Applicant’s strategy
– Take advantage of the chance in response to
first office actions by amendments and/or
arguments
THANK YOU
KANGXIN PARTNERS, P.C.
Beijing · Shanghai · Hunan · U.S. · Germany
Floor 16, Tower A, InDo Building,
A48 Zhichun Road Haidian Distrct,
Beijing 100098, P. R. China
Tel: (8610)58731888
Fax: (8610)58731999
www.kangxin com