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LONGAN IP Newsletter No.1 2024

Contents

Long An News

  • Chambers and Partners releases “Greater China Region Guide 2024”: Long An included in two professional lists
  • Long An selected into the ALB 2024 China Regional Rankings: Circum-Bohai Sea Area Law Firms
  • Lawyer Chengyan Alice Zhao from Long An Law Firm appointed as a member of the Brand Protection Professional Committee of the China Council for Brand Development

Long An Notable Cases

  • Long An Assists a Technology Company in Tianjin in Winning Patent Infringement Disputes

China IP News

  • CNIPA: Intellectual Property Developments in 2023
  • CNIPA: New Changes to Design Patent System
  • Changes to the Patent Examination Guidelines (2023) Regarding Patent Application and Examination Procedures

Summary of the Judgments of Intellectual Property Court of the SPC 2022

  • Selection of Patent Civil Cases

 

  • Long An News

Chambers and Partners releases “Greater China Region Guide 2024”: Long An included in two professional lists

On January 18, 2024, the internationally renowned legal rating agency Chambers and Partners released the “Greater China Region Guide 2024”. Long An was once again included in the Corporate/Commercial: Beijing list for the sixth consecutive year and on the Intellectual Property: Litigation list for the fifth consecutive year.

https://mp.weixin.qq.com/s/CL-6FYGhmpxmLHqqKH2MXQ

Long An selected into the ALB 2024 China Regional Rankings: Circum-Bohai Sea Area Law Firms

On January 19, 2024, the renowned legal media Asian Legal Business (ALB) released the “ALB 2024 China Regional Rankings”. Long An Law Firm was selected in the “ALB China Regional Rankings: Circum-Bohai Sea Area Law Firms” for three consecutive years.

https://mp.weixin.qq.com/s/gYXwXQiq5qQ3CerktOKneg

Lawyer Chengyan Alice Zhao from Long An Law Firm appointed as a member of the Brand Protection Professional Committee of the China Council for Brand Development

On January 4, 2024, the first “Brand and Credit” Seminar and the unveiling ceremony of the Brand Protection Professional Committee of the China Council for Brand Development were held at the Beijing Jingyi Hotel. Lawyer Chengyan Alice Zhao from Long An Law Firm was appointed as a member of the Brand Protection Professional Committee of the China Council for Brand Development.

https://mp.weixin.qq.com/s/kwqoQvW_RZOzasQnYZ1t5w

 

Long An Notable Cases

Long An Assists a Technology Company in Tianjin in Winning Patent Infringement Disputes

Recently, Cindy Quan, Jianjun Fu, and Xiaojun Zheng, lawyers of Long An, handled a series of two patent infringement cases related to the “Intelligent Coarse Coal Slurry Sorting Machine”, and obtained favorable outcomes. In both cases, the Shenyang Intermediate People’s Court supported our claims, ordering the defendant to cease manufacturing, selling, and offering to sell the infringing products involved, and to compensate the plaintiff for economic losses and reasonable expenses incurred to cease the infringement, totaling CNY 600,000, within ten days from the effective date of the judgment.

During the trial, the court compared the images of the infringing products and related working interfaces, which were preserved by notarization, with the technical features of the claims of the patents involved. The court concluded that the infringing products fell within the scope of patent protection, constituting patent infringement. As the defendants produced, sold, and offered to sell the infringing products involved without the plaintiff’s permission, they were held responsible for ceasing the infringement and compensating for the losses.

https://mp.weixin.qq.com/s/L8QnMR2mmvSwk42pcg9hrg

 

China IP News

 

CNIPA: Intellectual Property Developments in 2023

 

On January 16, 2024, the State Council Information Office held a press conference, where Wenhui Hu, Deputy Director of the CNIPA, introduced the developments of intellectual property in 2023.

(1) Patents:

Throughout the year, 921,000 invention patents, 2.09 million utility model patents, and 638,000 design patents were granted. 65,000 patent reexamination cases, and 7,700 invalidation cases were closed. 74,000 PCT international patent applications were accepted. Chinese applicants submitted 1,814 international design applications through the Hague System.

As of the end of 2023, the number of valid invention patents in China was 4.991 million. Among them, the number of valid domestic (excluding Hong Kong, Macao, and Taiwan) invention patents was 4.015 million. China’s high-value invention patent ownership per 10,000 people reached 11.8.

(2) Trademarks:

There were 4.383 million trademarks registered throughout the year. 153,000 trademark opposition cases were closed. 373,000 trademark review cases were closed. Chinese applicants submitted 6,196 international trademark registration applications through the Madrid System.

As of the end of 2023, the number of valid trademark registration in China was 46.146 million.

(3) Geographic Indications:

13 geographical indication products were approved throughout the year, and 201 geographical indications were approved as collective trademarks or certification trademarks. There were 5,842 entities approved to use the special geographical indications.

As of the end of 2023, China had approved 2,508 geographical indication products, registered 7,277 collective trademarks or certification trademarks, and had 26,000 entities using special geographical indications. The annual output value of geographical indication products exceeded CNY 800 billion.

(4) Integrated Circuit Layout Design:

There were 11,000 registrations of integrated circuit layout designs throughout the year.

As of the end of 2023, China had accumulated 72,000 registrations of integrated circuit layout designs.

(5) Intellectual Property Protection:

Throughout the year, the construction of the first batch of 10 national intellectual property protection demonstration zones was launched, and the selection and public announcement of the second batch of 15 demonstration zones were completed. 8 new intellectual property protection centers and 7 fast-track protection centers were established, bringing the total to 112. 21 new overseas intellectual property dispute resolution guidance branch centers and 2 overseas branch centers were established, bringing the total to 45. The social satisfaction index of intellectual property protection rose to 82.04.

(6) Application of Intellectual Property:

Throughout the year, the registered amount for patent and trademark pledge financing reached CNY 853.99 billion, benefiting 37,000 enterprises. Statistics show that in 2022, the added value of China’s patent intensive industries reached CNY 15.3 trillion, a 7.1% increase from the previous year (including price factor), accounting for 12.7% of GDP.

https://mp.weixin.qq.com/s/LoA-QZSiuoc0yimOu9F8hQ

 

CNIPA: New Changes to Design Patent System

On January 20, 2024, the revised Implementing Rules of the Patent Law of the People’s Republic of Chinaofficially came into effect. The CNIPA summarized the following system updates in the Rules:

  1. Extension of Design Patent Protection Period:

   The protection period for design patents has been extended from ten years to fifteen years. For applications filed before June 1, 2021, the protection period is ten years, and for applications filed on or after June 1, 2021, the protection period is fifteen years.

  1. Introduction of Protection System for Partial Design:

   The system now explicitly provides patent protection for partial design.

  1. Addition of National Priority System for Design:

   Applicants who file a patent application for the same subject matter within six months from the first filing of a design in China can enjoy priority.

  1. Improvement of Evaluation Report System:

   Requester: The evaluation report request can now be submitted by the alleged infringer in addition to the patentee and interested parties.

   Timing: Patentees can now request an evaluation report as early as when going through patent registration procedures.

  1. Expansion of Preliminary Examination Scope for Design:

   Preliminary examination will now include an examination of whether the design patent application clearly violates the provisions of Article 23, Paragraph 2, of the Patent Law.

  1. Addition of Provisions for International Design Applications:

   China acceded to the Hague Agreement Concerning the International Registration of Industrial Designs(1999 Text) on February 5, 2022, which has became effective in China on May 5, 2022.

https://mp.weixin.qq.com/s/10SJewwz1PiGYic6pTRKwA

 

Changes to the Patent Examination Guidelines (2023) Regarding Patent Application and Examination Procedures

To further guide patent application and examination practices, the CNIPA clarified major changes to the Patent Examination Guidelines.

  1. Introduction of Incorporated by Reference System:

Article 45 of the Implementing Rules of the Patent Law of the People’s Republic of China introduces the Incorporated by Reference system, allowing applicants, under certain conditions, to supplement missing or correct content in the application documents through reference of prior applications. This preserves the original filing date, providing relief to applicants in cases of omissions or incorrect submissions.

The Guidelines specify that:

  • Priority claims should be requested and the Incorporated by Reference declaration made when submitting the initial patent application.

  • The applicant must submit an Incorporated by Reference declaration within two months from the first filing date or within the specified period designated by the patent office, along with the relevant documents, including copies and translations of the prior application.

  1. Addition or Correction of Priority Claims:

The Guidelines specify that:

  1. The request should be made within sixteen months from the priority date or four months from the filing date and before the patent office prepares for publication.
  2. The written request for addition or correction of priority claims is required.
  3. In cases of adding priority claims, the payment of a fee for the priority claim is required.

  1. Refinement of Other Priority Procedures:

   The deadline for submitting copies of the prior application documents and the priority transfer certificate for invention and utility model patent applications has been extended. It now specifies that these documents should be submitted within sixteen months from the priority date (or the earliest priority date for multiple priorities).

  1. Modification of Grace Period Provisions for Novelty:

The Guidelines added a new circumstance regarding grace period to Article 24 of the Patent Law, stating that disclosures made during a state of emergency or under extraordinary circumstances for public interest purposes will not be considered novelty-destroying. The Guidelines specify that relevant certificates should be issued by departments above the provincial level.

The scope of the grace period under “academic or technical conferences” is expanded to adapt to the modification in Paragraph 2, Article 33, of the Implementing Rules.

Regarding disclosures at international exhibitions held or recognized by the government of China, the Guidelines broaden the range of entities that can issue certificates, adding “Exhibition Organizing Committees” to the exhibition’s organizers.

For cases of disclosure by others without the applicant’s consent, the Guidelines introduce procedures that the applicant should follow when learning about the disclosure only after receiving a notification from the patent office, providing better protection for the applicant’s legitimate rights and interests.

https://mp.weixin.qq.com/s/ss_Tf2jwhUETDp6CyDWNNA

 

Summary of Judgments of Intellectual Property Court of the SPC 2022

 

Selection of Patent Civil Cases

 

In order to present the judicial philosophy, trial approach, and judgment methods of the Intellectual Property Court of the Supreme People’s Court in technology-related intellectual property and antitrust cases, the Court has selected 61 typical cases from the 3,468 cases concluded in 2022, and extracted 75 key points of the judgments to form the Summary of Judgments of Intellectual Property Court of the Supreme People’s Court (2022).

In the following, we present some of the classic cases from this Summary.

Special definition of technical terms in the specification and distinction between specific embodiments

Case No. (2020) SPC Zhi Min Zhong 580

[Judgment Summary]

When interpreting a patent claim, it is necessary to accurately identify whether the relevant content recorded in the specification belongs to the special definition of the terms of the claim or the specific embodiments of the claim. Where there is a clear statement in the specification, the statement shall prevail; if there is no clear statement, factors such as the purpose of the invention, the inventive concept, and the technical solution to be protected by the claims to which the relevant terms belong shall be considered comprehensively.

Rules for the use of external evidence in claim interpretation

Case No. (2022) SPC Zhi Min Zhong 580

[Judgment Summary]

If the specification does not specifically define the technical terms in the claims, they should first be interpreted according to the general understanding of the technical terms by those skilled in the art, rather than directly according to the general meaning in daily life. The general understanding of technical terms by those skilled in the art can be combined with relevant technical dictionaries, technical manuals, reference books, textbooks, national or industry technical standards and other evidence of common general knowledge, and those with a higher degree of similarity to the field of the patented technology involved can be preferred.

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