According to the notice of the General Office of the State Council on extending the Spring Festival holiday in 2020, the court sessions, reception, and litigation services originally scheduled from January 31 to February 2 will be delayed, and the specific time will be announced separately. During this period, hearings involving announcements and foreign-related service cases will be postponed to February 3 in accordance with the law, and other litigation activities will be notified separately.

(Source: 1/30 Beijing Intellectual Property Court)

Shanghai High Court: Special notification and litigation tips during the prevention and control of pneumonia outbreak of new coronavirus infection

In order to facilitate epidemic prevention and control, according to the State Council’s notice of extending the Spring Festival holiday of this year on January 26, the court sessions, reception, litigation services and executions originally scheduled from January 31 to February 1 will be delayed, and the specific time will be announced separately.

(Source: 1/30 Shanghai High Court)

Provisions of “Announcement of Guangzhou Intellectual Property Court on Arrangement of Recent Sessions and Other Matters”

1. Apart from cases already announced for court session, court session, inquiry, hearing and other litigation activitiesoriginally scheduled from January 31 to February 2 (7th to 9th of the first month of the lunar calendar)will all be rescheduled. The specific time of change will be notified separately.
2. Apart from cases already announced for court session, court session, inquiry, hearing and other litigation activitiesoriginally scheduled from February 3to February 8 (10th to 15th of the first month of the lunar calendar) will also be rescheduled. The specific time of change will be notified separately. Schedules will not change for cases where both parties and their agents require not to change

(Source: 1 / 28 Guangzhou intellectual property court)

Provisions of “Announcement No. 350 of the China National Intellectual Property Administration”

1. Where a party delays the time limit prescribed in the patent law and its implementing rules or the time limit designated by the China National Intellectual Property Administrationdue to epidemic related reasons, resulting in the loss of its rights, the provisions of paragraph 1, Article 6 of the implementing rules of the Patent Law shall apply.The party concerned may, within two months from the date of removal of the obstacle, and at the latest within two years from the date of expiration of the time limit, request the restoration of the right. Where a claim for restoration of a right is made, there is no need to pay a fee for the restoration of right, but a request for restoration of the right shall be submitted, the reasons shall be explained, the corresponding supporting materials shall be attached, and the corresponding formalities that should have been handled before the loss of right shall be gone through at the same time.
2. If the party concerned delays the time limit prescribed by the trademark law and its implementing regulations or the time limit designated by the China National Intellectual Property Administrationdue to the epidemic situation, resulting in the party’s inability to handle the trademark affairs normally, the relevant time limit shall be suspended from the date when the obstacles to the exercise of the right arise, and shall continue to be calculated until the date when the obstacles to the exercise of the right are removed, unless otherwise stipulated by law.Where the trademark rights are lost due to the obstacles to the exercise of rights, a written application may be filed within 2 months from the date of the elimination of the obstacles to the exercise of rights, the reasons shall be explained, and the corresponding supporting materials shall be issued, so as to restore the right.

(Source: 1 / 28 State Intellectual Property Office)

Announcement on matters related to electronic patent certificate and electronic seal of patent application notice (No. 349)

On February 4, 2020, the website of the China National Intellectual Property Administration released “Announcement on matters related to electronic patent certificate and electronic seal of patent application notice (No. 349)”. According to the announcement: for electronic patent applications granted after March 3, 2020 (inclusive), the China National Intellectual Property Administration will issue electronic patent certificates through the patent electronic application system instead of the paper patent certificate. If necessary, users of electronic application registration can apply for a paper patent certificate through the patent electronic application website (http://cponline.cnipa.gov.cn).

(Source: IPRdaily)

In the year of 2019, up to 79,769 intellectual property cases were concluded by Beijing court, up 42.6% year on year

On January 11, the 10th China intellectual property new year’s forum and 2020 China intellectual property managers’ annual meeting was hosted by China National Intellectual Property Administration in Beijing. Yang Baiyong, President of the third civil division of Beijing Higher People’s court, attended the opening ceremony and delivered a keynote speech. China IP organized the speech content for the readers.

In addition to the criminal cases of intellectual property, in 2019, the three-level courts of Beijing accepted 80,165 IP cases, an increase of 35.7% year on year, including 57,124 IP civil cases, accounting for 71.3%; 23,041 IP administrative cases, accounting for 28.7%. A total of 79,769 IP cases were concluded, an increase of 42.6% year on year, including 55,803 IP civil cases and 23,966 IP administrative cases.

(Source: China Intellectual Property Journal)

The main work statistics and relevant information in 2019 of China National Intellectual Property Administration were published, and the invention allowance rate was 44.3%

On January 14, on the occasion of the 40th anniversary of the establishment of the China Patent Office, the China National Intellectual Property Administration held a press conference to release the annual statistical of patent, trademark, geographical indication and integrated circuit layout design in 2019, and analyze the new features and trends behind the data. It is worth noting that, according to statistics, in 2019, China’s total number of patent applications for invention was 453,000, and the total number of patent applications for invention was 1,023,000. Therefore, it can be calculated that in 2019, the patent allowance rate for invention was 44.3%. Compared with the invention allowance rate of 53.5% in 2018, it has declined significantly.

(Source: those little things about intellectual property)

The National Unified Examination of “Professional Titles in Intellectual Property” will officially begin in 2020!

Recently, the China National Intellectual Property Administration convened a qualification review meeting for senior professional and technical positions, and evaluated the first batch of senior titles of CNIPA intellectual property professionals. According to the public announcement, 28 people have the qualifications of being a senior IP professional, and 392 have the qualifications of being a deputy senior IP professional.

In recent years, the CNIPA has actively communicated with the Ministry of human resources and social security. In 2015, it promoted the addition of the category of “intellectual property professionals” in the category of “economic and financial professionals” in the “career classification ceremony of the people’s Republic of China”, making the professional identity related to intellectual property formally established at the national level. In 2019, it successfully promoted the official addition of intellectual property in the economic title series at the national level, and the title name is directly named by the specialty. Intellectual property is the only newly added specialty in the reform of the economic title system.

According to relevant arrangements, it is expected that the national unified examination after the reform of the intellectual property title will be officially launched in 2020. At that time, at the beginning and the middle level, examination will take the place of professional title evaluation or identification; the deputy senior level will take the form of the combination of examination and evaluation, and the senior level will still be based on evaluation.

(Source: State Intellectual Property Office)

Xiaomi life: 50 million yuan for infringement

Zhongshan Benteng company applied for the registration of “Xiaomi life” trademark in November 2011, which was registered in 2015 and declared invalid by the Trademark Review and Adjudication Board in 2018 (in the litigation process).

Xiaomi company believes that Benteng company prominently uses the “Xiaomi life” logo in its commodities, business premises, websites, domain names, WeChat public number and other places. Benteng uses a large number of propaganda words to carry out business publicity, such as “Xiaomi lives for quality”, “we only make art in life”, orange and white color matching, etc. Benteng also sells goods accused of infringement in Suning, Jingdong, Taobao and other mainstream e-commerce platforms.

According to the first instance of Nanjing Intermediate Court, the plaintiff “Xiaomi” trademark constitutes a well-known trademark, and the defendant infringes on the plaintiff’s exclusive right to use the trademark and constitutes unfair competition. The infringement has obvious malice, and the circumstances are extremely bad, which has exceeded the plaintiff’s claim for compensation of 50 million yuan based on twice the defendant’s profit.

According to the second instance of Jiangsu high court, it can be concluded that before Zhongshan Benteng company applied for the registration of “Xiaomi life” trademark, the plaintiff’s “Xiaomi” registered trademark had reached a well-known status and was eligible for cross-class protection of well-known trademarks. During the second trial of this case, Zhongshan Benteng company and other companies continued to publicize and sell the alleged infringing goods, with obvious malicious infringement. The court of second instance adjusted the standard of double compensation determined by the court of first instance to three times, and differentiated Benteng company to calculate the sales volume of its own stores and dealers. It found that the defendant’s infringement profit totaled more than 20.39 million yuan, which was more than 61.18 million yuan calculated by three times. The court of first instance fully supported the plaintiff’s claim of 50 million yuan.

(Source: Intellectual Property Library)

Media focus: 12 million in damages! Xiaomi loses the first instance of the trademark case of “ Mika”

Lianan company has the exclusive right of No. 10054096 “Mika” registered trademark, which is approved to be used in class 9 network communication equipment, cameras, video recorders and other commodities. Because Xiaomi communication company and Xiaomi technology company use the trademark of “Mika” on Xiaobai camera, dash cam and other goods and sell it in Jingdong and other channels, Lianan believes that this leads to confusion and misunderstanding of the source of goods by the relevant public, which constitutes trademark infringement. Lianan company sued seven related companies to Hangzhou intermediate court.

Recently, the court ruled in the first instance that Xiaomi communication company and Xiaomi technology company violated the exclusive right of registered trademark of Lianan company, and they need to compensate Lianan for more than 12 million yuan of economic losses. Jingdong e-commerce company does not constitute an infringement. At present, the case is still in the period of appeal.

(Source: Beijing Intellectual Property Protection Association)

“Gun battle of the whole people” was sentenced to copy the map of “crossing the line of fire”. Tencent won 45.24 million compensation in the first instance!

Recently, the Shenzhen intermediate people’s Court of Guangdong Province (hereinafter referred to as the Shenzhen intermediate court) made a first instance decision on the copyright dispute case of “Gun battle of the whole people”. It is determined that the six maps of “gun battle of the whole people” and the game scene map of “crossing the line of fire” constitute the same or substantially the same, which violates the copy right and information network dissemination right of “crossing the line of fire” enjoyed by Shenzhen Tencent computer system Co., Ltd. (hereinafter referred to as Tencent). The seven defendants, Changyou cloud (Beijing) Technology Co., Ltd. (hereinafter referred to as Changyou cloud) and Yingxiong mutual Entertainment Technology Co., Ltd. (hereinafter referred to as Yingxiong mutual entertainment), were judged to stop the infringement immediately and jointly compensate Tencent for the economic losses and reasonable rights maintenance costs of more than 45.24 million yuan.

(Source: China Intellectual Property News)

Dragon Special Report and Agency Practice

Case study on supplementary experimental data in chemical patent invalidation and litigation (1/2)

1. Introduction

In the field of chemistry, it has always been a matter of great concern for the applicants to supplement experimental data after the application date. On January 15, 2020, article 1.10 of Chapter I of the first phase economic and trade agreement signed by China and the United States also stipulates the relevant contents of drug patents:

“Section 1.10 regarding supplementary data

1. China shall allow drug patent applicants to rely on supplementary data to meet the requirements of patentability in patent examination, patent reexamination and judicial procedures, including the requirements of full disclosure and inventiveness.
2. The United States confirms that the measures in force in the United States give equal treatment to the provisions of this article.”

For the specific implementation of the above agreement, it is still to be further observed.

Beyond the field of drugs, in most chemical fields, supplementary experimental data may become the most important part of a case in proving full disclosure and inventiveness, even in proving whether the products are infringing in infringement lawsuits. Therefore, this paper studies and analyzes the relevant provisions and cases in China’s invalidations and litigations in recent years, in order to find out what should be paid attention to when supplementing experimental data.

1. Relevant regulations

In 2017, in section 3.5, Chapter 10, Part II of the guidelines for examination, the relevant provisions on supplementary experimental data were revised. The original provision “Examples and experimental data submitted after the application date will not be considered” was amended to “The examiner shall examine the supplementary experimental data submitted after the application date. The technical effect proved by the supplementary experimental data shall be obtained from the contents disclosed in the patent application by those skilled in the art”.

In the 2015 typical case (2014) Xing Ti Zi No. 8 ①, the Supreme People’s Court pointed out that “If it can be proved that the invention can be realized with the knowledge level and cognitive ability of those skilled in the art before the application date and through the content disclosed in the specification, the experimental evidence submitted after the application date to prove the full disclosure of the specification shall be taken into consideration and shall not be rejected just because the evidence is submitted after the application date. When considering whether the experimental evidence shall be adopted, the two conditions of time and subject shall be strictly examined. First, the experimental conditions, methods, etc. involved in the experimental evidence should be obtained directly or easily conceived of by those skilled in the art before the application date or the priority date through reading the specification; second, on the subject, it should be based on the knowledge level and cognitive ability of those skilled in the art.” ①

III. Case study

For the supplement of experimental data in invalidation and administrative proceedings, from the perspective of evidence form, the authenticity of evidence should be examined; from the point of view of the content of the evidence entity, it focuses on examining whether the evidence can prove the facts to be proved.

For the authenticity of evidence, the main concerns are as follows:

Whether the experimenter and the tester sign the evidence and appear in court for cross examination;

Whether there is any interest between the experimenter, the tester and the party who submits the evidence;

Is there any contradiction between the experimental process and the results?

As for whether the evidence can prove the facts to be proved, the main concerns are as follows:

Whether the experimental raw materials, products, reaction conditions, experimental equipment, test data, test equipment, test methods, test conditions, etc. are consistent with the evidence to be proved or the embodiment of the patent;

Whether the experimental effect to be proved has been recited in the original specification or attracted attention;

In addition, the experimental data submitted in the substantive examination process are not necessarily recognized in the invalidation or litigation proceedings.

3.1 Supplement data when proving full disclosure of the specification

Article 26.3 of the PRC Patent Law:

“The description shall set forth the invention or utility model in manner sufficiently clear and complete so as to enable a person skilled in the relevant field of technology to carry it out; where necessary, drawings are required. The abstract shall state briefly the main technical points of the invention or utility model.”

For the invention of chemical products, “enable a person skilled in the relevant field of technology to carry it out” means that those skilled in the art can confirm and prepare the chemical products according to the contents disclosed in the specification, and can realize one or more uses and/or corresponding effects.

In the substantive examination, invalidation and administrative proceedings of some cases, in order to prove that the specification has been fully disclosed, the applicant or patentee needs to supplement the experimental data to prove that the preparation method recited in the specification can prepare the relevant products.

Case 1: No. 13582 invalidation decision ②, (2014) Xing Ti Zi No. 8 ① (judgment date: April 16, 2015), referred to as atorvastatin case

Claim 1. A type I crystalline atorvastatin hydrate containing 1-8 moles of water, which is characterized by the following X-ray powder diffraction pattern (XPRD) …

In the process of patent invalidation, the main disputes between the two parties are as follows:

“1. Is the XPRD of hydrates of the same compound containing different moles of water the same?

2. Is it possible to confirm and prepare the type I crystal atorvastatin hydrate containing 1-8 moles of water according to the disclosure in the specification of the patent? “ ②

In the specification of the patent, it is not clear how many moles of water are contained in the type I crystal atorvastatin hydrate of the XPRD data; the XPRD data of the prepared compound or moles of water are not recited in the embodiments.

In the invalidation decision, it is believed that the specification of the patent indeed does not clearly disclose the above two points. Therefore, the patent is declared invalid on the ground that the disclosure of the specification is not sufficient.

In the trial process of second instance, the patentee submitted an experimental report completed by a third party to illustrate that a person skilled in the art can realize the invention according to the description.

The dispute between the two parties is whether the experimental conditions and methods in the test report completed by the third party are consistent with the patent documents, mainly involving the heating time and cooling method, as shown in Table 1 below.

Table 1

Patentee’s reply: due to different scales of experiment, “There is a teaching in the specification of the patent that the crystallization step is preferably carried out at elevated temperature. Based on the above information, those skilled in the art will think of keeping the reactant at a higher temperature for a longer time, so as to better complete crystallization” ①. Therefore, the third-party experiment extended the heating time and conducted controlled cooling.

According to the Supreme People’s Court, “Before the priority date of the patent, it is not easy for those skilled in the art to think of how long the heating time needs to be extended to obtain the hydrate claimed in the patent after the large-scale in the specification is reduced to the laboratory scale”. ① Therefore, the evidence was not accepted, and the above invalidation decision was maintained.

In this case, the experimental report of the third party was fully considered during the retrial. Based on the cognitive level of those skilled in the art, the court held that the different scale of experiments may affect the cooling rate. From the large-scale experiment (1300L) in the specification to the third-party experiment (125ml), the experimental conditions should be different. However, it is not easy for those skilled in the art to think of what change of experimental conditions can be identified as the large-scale experiment in the specification. Therefore, the experimental results of the third party cannot prove that the specification has fully disclosed the technical solution.

From the judgment, the Supreme People’s Court does not specifically evaluate the authenticity of the third party experimental report submitted by the patentee in this case. Instead, from the point of view of whether the experimental report can prove the facts to be proved, a detailed analysis is carried out with clear thinking. The case plays a guiding role in the examination of the supplementary experimental data after the application date.

Case II No. 39707 invalid decision ③ (invalidation decision date: April 2, 2019), hydrophobic modified polyamine dirt inhibitor case

Claim 1. A polymer comprising a repeating unit of formula (I) and a repeating unit of formula (II): …

In the embodiment of the specification, for the same test liquid and test method, the difference between test results is 22-41%.

The patentee claims that there will be deviation in the experimental results, for example, temperature and stirring force will affect the experimental results. At the same time, the patentee gives counterevidence 1: the verification experiment report on the embodiment of invention patent CN101522571B issued by a third party, and the experimenter testified in court.

The collegial panel first considered the experimental evidence as follows: The witness attended the oral hearing, and confirmed that the counter evidence 1 is the experiment conducted according to embodiment 7, 10, 11 and 26 of the patent repeated according to the scheme designed by the patentee. “ ③.

However, the collegial panel also believes that if the same test method is used in counterevidence 1, the test results will also have deviation. It is further concluded that: “Although the patentee does not need to recite all aspects of the technical solution in the specification, it is still necessary to recite or make necessary clarification for some key contents or contents that may cause reasonable doubt. Otherwise, it will lead those skilled in the art to wonder whether the technical solution can be implemented or whether the claimed technical effect can be generated. In this case, if, as described by the patentee, it is true that the temperature and stirring force will affect the experimental results, it shall be recited in the specification, so that those skilled in the art can realize the technical solution of the patent and achieve the claimed technical effect according to the content recited in the specification of the patent.” ③ Finally, it is concluded that the technical solution of the relevant claims is not fully disclosed.

For the above invalidation case in 2019, although the counter evidence submitted by the patentee does not prove that the specification has been fully disclosed, the authenticity of the counter evidence itself has been recognized by the collegial panel.

(Author: Wenyun DING, legal department)

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