CCPIT Patent & Trademark Law Office Chuanhong Long, Hao Ma China Patent Agent Xiangling Zeng King & Wood Mallesons Wenping Chen Liu Shen & Associates Allen F. Tao Excellent. Assuming, all rejections are overcome, CNIPA will issue a 9. During prosecution of a Chinese invention patent application (as distinct from a utility model application ), the China National Intellectual Property Administration (CNIPA) will issue over 10 notices over the typical course of the prosecution process. As mentioned above, the key feature of “the V gene segment is a naturally-occurring V gene segment derived from human” was incorporated into claim 1 from its dependent claim at the time of filing the reexamination request before the CNIPA. China implemented a Patent Prosecution Highway program to expedite examination of invention patent applications in December 2011. The prosecution history of the patent, the divisional application, the parent application and other applications from the same patent family may all be considered when interpreting a claim. Common knowledge in the IP sense is generally a fact known or ought to be known to one skilled in the art and can be applied by such a person to solve specific technical problems. While there is no response required, the Applicant can voluntarily amend the claims at this stage as well as file a request to participate in the PPH assuming the application is published. We provide free expert advice with no additional attorney fees. Thus, the technical problem actually solved would not include such a feature. Notice of Publication will also likely come before the 4. However, due to ethical concerns, views are divided and jurisprudence varied as to the study and exploitation of human embryonic stem cells in different jurisdictions. CNIPA publishes applications at about 18 months from the priority date. The closest prior art cited is D1 (WO 02/085945A2) and one of the ascertained distinguishing feature is “the V gene segment is a naturally-occurring V gene segment derived from human”. In particular, procurement and enforcement of patent rights in China has become very important The most important steps during patent prosecution in China, include, patent filing, patent publication, patent examination, patent opposition and patent grant or patent rejection. Notification of entering the Chinese national phase of an international application or 1B. China (PRC). Notice of Entering Substantive Examination. No response is needed. The SPC expatiates on the application of different substantive requirements for granting a patent in this case. No response to this Notice is due. Notice of Formalities, if needed, CNIPA will send a 3. If the applicant has not requested substantive examination (e.g., at filing of the application), CNIPA will send a 4. Notice of Publication. 8. About 6 months (or longer) after filing a Request for Substantive Examination, CNIPA will issue a 6. A quick look at the essentials of patent prosecution in China, including key disclosure requirements for patent applications, expedited procedures, oppositions, timeframes and costs. During prosecution of a Chinese invention patent application (as distinct from a utility model application), the China National Intellectual Property Administration (CNIPA) will issue over 10 notices over the typical course of the prosecution process. The material on this site is for law firms, companies and other IP specialists. Patent Law Developments –Fourth Amendment to the Patent Law. In fact, the amended Patent Examination Guidelines implemented on November 1 2019 added the requirement of objective evidence in relation to common knowledge during the examination procedure. This would usually be for a missing power of attorney or priority documents. Also note the above are the most common notices an Applicant can receive. Notice of entering the Chinese national phase with a few weeks of filing while the 1B. – that is 10 times the number filed with the USPTO. To the best of their ability, the authors provide current and accurate information at the time of each post, however, readers should check for current information and accuracy. In December 2019, the Supreme People’s Court (SPC) issued a judgment revoking the reexamination decision made by the Reexamination and Invalidation Department of the CNIPA (previously known as the Patent Reexamination Board, and hereinafter referred to as the CNIPA). Add to Calendar2020-12-15 10:00:002020-12-15 10:00:00Understanding patenting in China Join the United States Patent and Trademark Office (USPTO) for a free webinar on how to obtain and enforce your patents in China. After the Beijing IP Court revoked the Reexamination Decision, the CNIPA appealed to the SPC but failed to reverse the judgment. It seems that the SPC would allow a certain amount of leeway in supplementing evidence in the judicial proceeding. The European Patent Office (EPO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), the China National Intellectual Property Administration (CNIPA) and the United States Patent and Trademark Office (USPTO), referred to as the IP5 Offices, have decided to extend the comprehensive Patent Prosecution Highway programme. Leading. Under the Global Patent Prosecution Highway (Global PPH) pilot, a request for accelerated processing can be made at any participating office based on work products, including PCT work products, from any one of the other participating offices under unified criteria. For help please see our FAQs. 20121005766.0 entitled “Binding Molecules” in the biotechnology field, specifically relating to a method for the production of a VH heavy chain-only antibody by immunising a transgenic rat expressing a heterologous VH heavy chain locus with an antigen. Global Patent Prosecution Highway. The SPC judgment addresses the following issues. This requires the examiner to produce evidence where the applicant opposes the use of common knowledge or the technical feature contributing to technical solution is objected to as common knowledge. CNIPA will issue 11. Notice of Time Limit to Request Substantive Examination in a Paris Convention application. Otherwise, the examination of novelty and inventiveness would be built on a shaky foundation, which would make the procedure uneconomical. It is possible to also receive a Final Rejection instead of Notice to Grant, which would require the Applicant to go through an appeal process similar to that at the USPTO. The SPC found the seven pieces of supplementary evidence adduced by the applicants before the Beijing IP Court admissible. Note that most CNIPA patent deadlines can be extended by 2 months with the payment of a fee. With respect to intellectual property (IP) and patent suits, China’s specialized IP courts have made china successful in its efforts to become a world center for IP disputes, said Rader. Depending on priority claimed, the next notice may be the 5. material subject to strictly enforced copyright laws. The amended Patent Examination Guidelines, which China National Intellectual Property Administration (CNIPA) has been implementing since November 1 2019, have brought significant changes to the utilisation of human embryonic stem cells. CNIPA will issue the patent approximately 2 months after payment of the fees although a paper patent will not longer be issued. Shuo Liu December 27, 2020 12:54 pm. Notice of Entering Substantive Examination. Statutory Provisions Addressed: Chinese Patent Law Abstract: China’s admission to the Word Trade Organization (WTO) in 2001 has brought increased attention to China’s patent law including enforcement of intellectual property rights. If you're happy with cookies click proceed. © 2020 Euromoney Institutional Investor PLC. Local Insights, This content is from: Published: 16/09/2020 Partial design is allowable now pursuant to the new rules. This option will also be influenced by technical decisions like the nature of the technology (as it relates to the applicant'… The SPC leveraged the opportunity to elucidate the role of different parameters for granting a patent. Notice of Passing Preliminary Examination of Invention Patent Application. Membership Options | One Week Trial. Notes; 1. So what are you waiting for? In patent prosecution, an examiner often mentions the term "common knowledge" when evaluating a step forward in an invention, as one cannot patent common knowledge. Notice of Entering Substantive Examination, as discussed below. This content is from: The deadline to request examination is 3 years from the earliest priority date or 2 months from the filing date of a divisional application. Subsequent office action have 2 months and 15 days to respond. The main divergence lies in how to define the technical problem actually solved by the invention. There is a big focus on improving IP-related services (Projects 1, 2, 62, 72, 74, 77, 86). China reiterates its commitment to plurilateral IP policy (Projects 82, 87). China: Avoiding hindsight assessment of inventiveness, Japan: Inventive step related to dosage and administration, Four cases and their lessons for utility models, Japan: IP High Court confirms validity of essential patent for blue LED. As a precursor to identifying specific Patent Prosecutionmechanisms, one needs to be cognizant that all patent applicants will have a range of preferred patenting strategies, which are directly influenced by their broader strategies. In China there is no grant fee and the first annuity is due at the time of registration. Both the SPC and CNIPA has been emphasising the role of prior art as evidence, including common knowledge. Notice of Acceptance usually arrives within a few days of filing. Further, CNIPA allows the revival of patent applications in most cases. After the Applicant files a response to the 2. However, unlike the multitudes of routes for accelerating patent prosecution in the United States, China has two main programs to accelerate patent prosecution: the Patent Prosecution Highway[2] and prioritized examination. As in practice the scope of reexamination is generally limited to the contents of the rejection decision, the CNIPA opined that the aforesaid feature is obvious over D1 and there is no proof of the corresponding technical effect of “producing a functional human VH heavy chain-only antibody” in the description. The time limit to reply is 4 months plus 15 days. Notice of Entering Substantive Examination if a request for examination was filed earlier. Depending on if the applicant filed in China via the Patent Cooperation Treaty (PCT) or Paris Convention , the applicant will either receive, respectively, 1A. Representation by a patent attorney; Foreign applicants must perform patent prosecution in China through an agent, a Chinese patent attorney registered before the China National Intellectual Property Administration. China Releases Report on Development Status of the National Patent Agency Industry (2019), Beijing Fines Alibaba 100,000 RMB for Malicious Trademark Filings, China National Intellectual Property Administration, also request participation in the Patent Prosecution Highway program to accelerate examination, USPTO Releases Report on Distortions Caused by Chinese Monetary Incentives for U.S. Filings, Accusation of Chinese Patent Infringement Leads to Slander Lawsuit Victory, Wyeth Wins 30.55 Million RMB in Chinese Trademark Infringement Case with Punitive Damages, Amazon Hit With 76 Million RMB Verdict for Chinese Trademark Infringement, NBA Star Michael Jordan Wins Huge Chinese Victory Against Qiaodan (Jordan) Sports Over Misuse of His Name. Please be advised of the following changes: Partial design patentable. Notice of Time Limit to Request Substantive Examination about 3 months before the deadline to request examination. In this case, the dispute focused on whether the claimed invention is inventive. These omissions could suggest a lack of CNIPA commitment to Phase 1 pharmaceutical IP reforms. Patent linkage does not appear in this list of tasks. Notice of Formalities. Implementing Regulations of the Patent Law of the People's Republic of China; General Introduction to the Third Revision of the Patent Law of the People's Republic of China and Its Implementing Regulations; Decision of the Standing Committee of the National People's Congress on Amending the Patent Law of the People's Republic of China Like the U.S. Patent & Trademark Office, CNIPA will almost always issue a 7. first office action for lack of novelty, inventiveness, etc. Patent International utilizes its wholesale negotiation leverage to get you the lowest translations, filing, and prosecution rates available via top-tier firms. The new guidelines allow technology relating to the stem cells isolated or procured from human embryos within 14 days after fertilisation but without developing in vivo, to be eligible subject matter, which means such technology will no longer be deemed non-patentable on the grounds of “contrary to social morality” as stipulated in Article 5 of the Patent Law. Human embryonic stem cell is a promising technology that may hold the keys to innovative treatment of various human diseases. There are two main paths for expediting patent prosecution in China: one is Prioritized Examination and the other is the Patent Prosecution Highway (PPH), both of which are free of official fees. No response is due except in 1B if the applicant did not pay application fees at the time of filing, in which case the applicant has 2 months plus 15 days to pay the application fees from the date of the notice. These prohibit the research and utilisation of human embryonic stem cells for any reproductive purposes by providing that: 1) for utilising the blastula obtained from fertilisation in vitro, nuclear transplantation of somatic cells, parthenogenesis or genetic modification, its developing period in vitro should not exceed 14 days; 2) human blastula obtained for research purpose should not be implanted into the reproductive system of human beings or any other animals; and 3) germ cell of human beings should not be combined with that of any other species. The applicant will also have 2 months to file any divisional patent applications. Note that when requesting examination, an Applicant can also request participation in the Patent Prosecution Highway program to accelerate examination. In this case, the CNIPA and the courts utilised a substantially identical approach to assess inventiveness: 1) determining the closest prior art; 2) determining the distinguishing features of the invention and the technical problem actually solved by the invention; and 3) determining whether the claimed invention is obvious to a person skilled in the art. The maximum protection period of a utility model in China is ten years from the date of filing. It is for information only. The deadline to voluntarily amend the claims is 3 months plus 15 days from the date of the Notice. The case is listed in the 36 exemplary technology-related IPR cases, which the SPC’s Intellectual Property Court concluded in 2019. In India, the patent prosecution consists of only a single phase comprising of several steps. The SPC rebutted in two aspects: 1) the CNIPA redefined, in the appeal request, the technical problem solved, as compared with that in the reexamination decision, and 2) such an issue would fall into the scope of insufficient disclosure and should not be mixed up with the inventiveness for assessment. This application was subjected to reexamination before the CNIPA after final rejection due to lack of inventiveness, then to administrative litigation before the Beijing IP Court in the first instance and the SPC in the second instance, with the proceedings illustrated in the appendix. The SPC held that although the evidence was not submitted during the reexamination stage, considering its authenticity, legality and relevance, refusal of such corroborative evidence, which may help understand the state of the art, would deprive the applicants of the opportunity for any remedies. The amended Patent Examination Guidelines, which China National Intellectual Property Administration (CNIPA) has been implementing since November 1 2019, have brought significant changes to the utilisation of human embryonic stem cells. Features, Instant access to all of our content. China: Patent Laws and Regulations 2021. Notice of acceptance of patent application/Notice of Payment of Application Fees. The applicants are Erasmus University Medical Centre Rotterdam and Mr Craig in the Netherlands. As for the order of examination, in principle, sufficient disclosure, claim support and amendments beyond the original disclosure shall precede novelty and inventiveness. These might include business decisions such as the likelihood of foreign competition, the size of foreign markets, as well as foreign manufacturing and/or licensing strategies. Notice to Grant giving the Applicant 2 months plus 15 days to pay the grant fees. This could insinuate the importance of evidence in evaluation of technical motivation of the claimed invention from the prior art. Our patent lawyers, working with a network of firms around the world, regularly handle patent prosecution for clients on five different continents, including major global corporations, emerging companies and innovative institutions such as manufacturers, service providers, universities and other law firms. In the second instance, the CNIPA held that the technical effect of “naturally-occurring V gene segment derived from a human” was not demonstrated in the description of the patent application. The above case relates to the patent application No. For the purpose of initially filing a patent application outside China, the Chinese Patent Law does not consider an inventor’s citizenship or residency. It may also include a unity rejection. China - Best Firms for Patent Prosecution - 2020 Intellectual property consulting. As the title suggests, this article compares the inventive step in Chinese patent law … China’s National IP Strategy sets a goal of doubling the number of patent filings between 2015 and 2020 Result: By 2020, 7 million patent applications filed annually. Recognition of the patentability of human stem cell technology will fuel innovation and promote its commercialisation in the biomedicine field in China. Annuity payment notices annually after grant with the deadline for payment being the anniversary of the application date. The Patent Prosecution Highway leverages fast-track patent examination procedures already available at the offices to allow applicants to obtain corresponding pat… [3] This notice may come together with the 6. Design patent witnesses two crucial revisions in the newly amended China Patent Law, which will significantly impact on the design patent prosecution and protection as of 1 June 2021, the effective date of the new rules. There are two main paths for expediting patent prosecution in China: one is Prioritized Examination and the other is the Patent Prosecution Highway (PPH), both … Most of these notices require responses with varying deadlines, which will be discussed further below. Otherwise, the Applicant would need to wait for publication and 6. Please read our Terms and Conditions and Privacy Notice before using the site. Based on the description of this patent application and in view of such evidence, the SPC concluded that it is not obvious over D1 by using “a naturally-occurring V gene segment derived from human” to substitute “a camelid V gene segment” in the claimed technical solution to obtain a human VH heavy chain-only antibody of better water solubility. These paths can provide applicants with relatively effective ways to pursue a fast patent allowance in China without incurring extra official costs. Applicants usually receive the 1A. Thus, any applicant who intends to file “any invention or utility model developed in China” must apply for a confidentiality examination in China before seeking patent protection on the same subject matter abroad. ICLG - Patent Laws and Regulations - covers common issues in patent laws and regulations – including enforcement, amendment, licensing, term extension, and prosecution – in 28 jurisdictions. The SPC held that the parameters of inventiveness, sufficient disclosure and claim support play different roles in ascertaining patentability and need to apply independently. All This blog, China IP Law Update, does not contain legal advice and is for informational purposes only. There are three categories of patent in China: invention, utility model and design. Aaron Wininger is a Senior Attorney and Director of China Intellectual Property at Schwegman Lundberg & Woessner. The Applicant may then receive a 2. Patent Prosecution Highway ... As different patent provisions and examination criteria exist in different countries, such as, medical treatments are patent-eligible in the U.S. but not in China, therefore theoretically the same technical scheme may not receive the same scope of … Its publication does not create an attorney-client relationship nor is it a solicitation for business. Such a feature was incorporated into claim 1 from its dependent claim at the time of filing the reexamination request before the CNIPA. The amended guidelines are in line with the Guiding Principles on Ethics of Human Embryonic Stem Researches, jointly issued by China’s Ministry of Science and Technology and the Ministry of Health on December 24 2003. The National Intellectual Property Administration and foreign intellectual property offices have adopted the Patent Prosecution Highway project to speed up the examination pace of patent applications submitted by foreign applicants and facilitate foreign companies to obtain patents in China as soon as possible, Long said. Further, the applicant can voluntarily amend the application only when filing the request for substantive examination or after receiving the 6. It is possible that for the sake of examination efficiency, the CNIPA, when making the reexamination decision, focused on the inventiveness findings of the rejection decision, considering that the sufficiency requirement might be easier to reach. However, it is much more intriguing that it is one of the few cases where the SPC overturned the reexamination decisions made by the CNIPA in a patent administrative litigation, given that statistics in 2018 indicate that only 1.56% of the patent administrative suits challenging the CNIPA’s reexamination decisions are brought by applicants and among these cases, the first instance court upholds an astonishing 91.72% of CNIPA decisions (meaning only 8.28% decisions are rescinded). The 5. Protect your innovations: In order to obtain patent protection in China, the inventor or the owner of the invention has to file a Chinese patent application. The response deadline is 2 months plus 15 days from the date of the notice. To avoid hindsight, the SPC opined that the motivation derived from the prior art should be concrete and definite technical solution(s), rather than research direction or needs in general. 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