Patent Protection in Mainland China and Hong Kong€¦ · Tina Hong Tai Patent Attorney, Attorney-at-Law China Patent Agent (H.K.) Ltd. 22/F., Great Eagle Centre 23 Harbour Road,

China Patent Agent(H.K.)LtdChina Patent Agent(H.K.)Ltd

Patent Protection in Mainland China and Hong Kong

Tina Hong Tai

Patent Attorney, Attorney-at-Law

China Patent Agent (H.K.) Ltd.

22 November 2006

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Number of Patent Applications Filed and Patents Issued in China

0100,000200,000300,000400,000500,000600,000

1996 1997 1998 1999 2000 2001 2002 2003 2004 2005Year

Num

ber o

f Pat

ent

App

licat

ions

or

Pat

ents

Patent Applications Filed Patent Issued

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Brief Introduction to Chinese Patent System(1)

First to File18-month PublicationSubstantive Examination upon Request within 3 Years from the Priority DateRejection Appealable to PRBPRB’s Decision on Final Rejection Appealable to the CourtInvalidation (Before PRB)PRB’s Decision on Invalidation Request Appealable to the Court

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Brief Introduction to Chinese Patent System(2)

Substantive Requirements of PatentabilityInventiveness, Novelty and Industrial ApplicabilityCategories of Patents: Invention, Utility Model, DesignDuration for Patent Right: 20 years for Invention, 10 years for Utility Model and Design. Extension? NO

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Evolution of Patent Law

The Patent Law, Adopted in 1984Amended for the First Time on September 4, 1992Amended for the Second Time, Effective as of July 1, 2001The draft for the third amendment to the patent law, published on July 31, 2006, expected to come into force in the end of 2007 or early 2008

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Categories

Patent for InventionAny new product or process, or their improvements

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Categories (cont’d)

Patent for Utility ModelNew technical solution related to shape, structure or their combination of a product, which is fit for practical useLower patentability standardsNo substantive examinationCost effective and time saving10 years term from the Chinese filing date

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Categories (cont’d)

Patent for Industrial DesignShape, pattern or their combination, or color and shape combination of a product, which creates an aesthetic feeling and is fit for industrial applicationNo substantive examination10 years term from the Chinese filing date

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Patentable Subject MatterThree Elements determination

Computer program related applicationApplication for business method A technical solution of taking technical means to solve technical problems and to achieve technical effects

Method for the diagnosis or treatment of diseases not patentable

Swiss type claims acceptableUse of compound X in the manufacture of a medicament for the treatment of disease Y

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Filing Requirements(1)

Invention made in China by CN entity or individual required to be filed in China First

No penalty specified in the law for general violation Not a proper ground for patent invalidation Well drafted contract or agreement helpful

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Filing Requirements (2)

Changes in the draft of the third patent law: “Where any entity or individual intends to file an application in a foreign country for a patent for invention-creation completed in China, it or he shall file first an application for patent with the patent administration department under the State Council …"Punitive Article : no patent shall be granted

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AmendmentsVoluntary amendments allowed only

When requesting examination or within three months from the notification of entering into examination for invention applications

Restricted amendment in response to OA and during reexaminationDeleting or combining claims allowed during invalidation proceedings with the PRB No post grant amendmentNo amendment during the court proceedingsAbsolutely no new matter allowed

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ExaminationSimilar examination standards to European Patent OfficeFormal request for expedite examination unavailablePositive European or US examination results helpfulObjections & rejection mostly on novelty, inventiveness, enablement/insufficiency and lack of support/written descriptionInterview with the examiner usually helpfulTelephone discussion with examiner limited to deal with formality defects

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Response to the Office Action

A rejection decision would be made after at least two office actions. Applicant’s strategy: use the chance to argue for their applications in response to the first office actions by filing amendment and/or substantives rebuttal arguments to the applications before surrender

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Re-examination

Request including detailed arguments and amendments needed to be filed with the Patent Reexamination Board (PRB)Conducted in written form or oral hearing or a combined form For some important or complicated cases, it is worthwhile to take the oral hearing procedure.

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Invalidation

Filing a request for invalidation with PRBAt any time after a patent is grantedBy anybody including patenteeAmendments allowed for deleting or combining claims onlyDecision made by PRB can be appealed to Beijing Intermediate People’s CourtA further and final appeal to Beijing High People’s Court available

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EnforcementPatent Infringement

Making, using, offering to sell, selling or importing patented productUsing patented processUsing, offering to sell, selling or importing the product obtained directly by patented processMaking, selling or importing the product incorporating the patented designIndirect infringement held by the court

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Enforcement (cont’d)

16,583 IP related cases in 2005 and 3,567 IP infringement cases5,319 people found guilty and 2,963 people in prison Dual-track System

Judicial TrackAdministrative Track

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Administrative/Judicial Track Comparison

Local IP officeApply local and national regulationsInvestigation and/or on-site inspectionNo power to adjudicate damagesAppeal to intermediate court

Intermediate/higher courtApply national lawEvidence and/or property preservation & preliminary injunctionJudgment for damagesReview by a higher court

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Principles Adopted by CourtsAll Elements Rule (literal Infringement)

A infringing product or process shall Cover all necessary features in the independent claim

Doctrine of EquivalentsScope defined by equivalent featuresHaving the substantially same function, by the substantially same way and obtaining the substantially same result

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Principles Adopted by Courts(cont’d)

Prosecution History EstoppelsRequest by the defendant with sufficient evidencePrevail when conflict with Doctrine of Equivalents

Prior Art Defense

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Remedies

Preliminary and/or Permanent injunctionCompensation for damages(Public) ApologyElimination of adverse influence

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Damage Calculation

Actual damages: Plaintiff’s losses, or Defendant’s profitsUp to three times of reasonable royalty Statutory damages of less than RMB 500,000 Yuan ($62,500)

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Hong Kong Patent SystemIndependent patent systemCN pat. not automatically extended to HKThree types of patentsStandard patent

Two steps of requests related to Chinese, UK or European patentNo examination conducted20 years term from the filing in the corresponding patent officeIndependent patent

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Hong Kong Patent System (cont’d)

Short term patent and Design patentFiling directly with HK patent registryForeign priority claimedFormality examination onlyPatent term

4 years and extendable for 4 years for short term patent5 years and extendable 4 times for design patent (25years altogether)

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THANK YOU

Tina Hong TaiPatent Attorney, Attorney-at-LawChina Patent Agent (H.K.) Ltd.

22/F., Great Eagle Centre23 Harbour Road, Wanchai

Hong KongTel: 852 28284688Fax: 852 28271018

E-mail: [email protected]

Documents

Patent Protection in Mainland China and Hong Kong€¦ · Tina Hong Tai Patent Attorney, Attorney-at-Law China Patent Agent (H.K.) Ltd. 22/F., Great Eagle Centre 23 Harbour Road,