Foreign Filing Licenses for Patents in China

written by Toby MAK

 

China introduced requirements for foreign-filing licences for inventions in 2010 (when the third revision of the Patent Law came into force). It has become increasingly common for an invention to involve research teams in China and at least one foreign country. Multinational companies need to be aware that compliance with the foreign-filing licence requirements may become an issue – potentially aff ecting the validity of a corresponding Chinese patent.

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Like the US, China has its foreign-filing licence requirement for inventions. This was introduced in 2010 when the third revision of the Chinese Patent Law came into force. In my view, this was reasonable, as China has more and more inventions, and some of these could be related to national security. Various other countries have similar measures (according to www.wipo.int/pct/en/texts/nat_sec.html, in addition to the US, there are 28 countries with domestic law requirements similar to the US foreign filing licence, including China, India, France, Germany, Spain, Malaysia, Vietnam). So China having the same should be expected.

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This article was written by our IP Expert Toby Mak and originally published in the CIPA Journal. To access the full article, please click here.

What Is A Well-Known Trademark (WKTM)?

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by Fabio Giacopello

 

Reading article 14 TML, we understand that a WKTM is a trademark that is extensively used and advertised, and enjoys high reputation in its field…

Chinese Trademark Law (TML) does not give a precise definition but it can be easily implied from the requirements posed for its recognition. Reading Article 14 TML, HFG Law & Intellectual Property it is understood that a WKTM is a trademark that is extensively used and advertised, and enjoys high reputation in its field[i].

Why Is Having A Well-Known Trademark Important?

From a merely legal point of view – leaving apart marketing considerations – the well-known trademark is a super hero, in the sense that it has “special powers” that “normal” trademarks don’t have. Such special powers are described in Article 13 of TML and are different, based on the fact that the WKTM is already registered or not in China. Provided below is a graphic representation to better explain the statute of rights or scope of protection granted to registered or unregistered WKTM.

Trademarks

A Well-Known Trademark That Is Not Registered In China Must Be Protected For Goods That Are Identical Or Similar To The Goods For Which The WKTM Is Famous.

Special powers consist in obtaining a protection identical to that granted to a registered trademark in the lack of registration and this is a big exception. Indeed a nonregistered and non-WKTM has almost zero rights. In any case, it is to be noted that having a non-registered WKTM is a very rare circumstance: the trademark shall be reputed, widely used and advertised, but its owner has not applied and registered it as a trademark.

More interestingly, the second part of Article art.13 takes into consideration the case of a Well-Known Trademark that is already registered. In such case, the special power granted is the so-called cross-class protection.

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Measures on Security Assessment of Cross-Border Transfer of Personal Information (2019 Draft)

Article by Daniel Albrecht

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Summary: The Cybersecurity Law of the People’s Republic of China was issued on November 7, 2016, and officially put into effect June 1, 2017. The Cyberspace Administration of China (CAC) has released supportive measures to implement provisions of the Cybersecurity Law. These draft Measures provide guidelines for cross-border transfer of data, data security assessments, and the protection of data in relation to national and public interest. In 2017, the CAC published Measures on Security Assessment of Cross-Border Transfer of Personal Information and Important Data. The draft received immense feedback, leading to a second draft released in June 2019, Measures on Security Assessment of Cross-Border Transfer of Personal Information. The new draft will affect a wide range of domestic and foreign entities in China that have cross-border transfer needs.

Separating “Personal Information” and “Important Data”

On June 13, 2019, the Cyberspace Administration of China (CAC) released Measures on Security Assessment of Cross-Border Transfer of Personal Information. Regulations and guidelines provided in the draft pertain to network operators that export personal information data to recipients outside of China. It should be noted that the 2017 draft Measures applied to both “important data” and “personal information” data. However, the 2019 draft legislation omits the term “important data” and solely focuses on the export of “personal information.” The removal of the term implies that the CAC is now treating important data and personal information as separate categories that are subject to different requirements.[1] Therefore, the content in the new draft regulation only concerns the cross-border transfer of “personal information” collected within the territory of China.[2]

Data Localization Requirement

China’s Cybersecurity Law requires data localization for “critical information infrastructure operators” (CIIO’s) that collect and generate data within China. In other words, the provision requires that personal information and important data collected by CIIO’s within the territory of China will be stored in Chinese servers. The 2017 draft Measures attempted to bring clarification to this data localization rule. However, the draft expanded the data localization requirement to all “network operators,” causing controversy and confusion in the international community. Since “network operator” is more vaguely defined than CIIO’s, the 2017 Measures broadened the scope for the data localization requirement.

To make things more complicated, the CAC published the 2019 draft Measures without any mention of data localization requirements. Although there is no data localization provision in the new draft, it does not mean that network operators are exempt from data localization. Legal experts point out that China’s Cybersecurity Law overlaps with the new draft Measures, and CIIO’s are still obligated to follow data localization rules. However, with the cybersecurity law referring to “CIIO’s”, and the Measures only referring to “network operators,” there is room for interpretation regarding what entities will be impacted by data localization requirements.

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EUIPO: New Image Recognition Technology in Design and Trade Mark Search

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The European Union Intellectual Property Office (EUIPO) has implemented a new  artificial intelligence solution to allows its users to carry out image-based searches for designs and trade marks, with new algorithms both in eSearch Plus and TMView.

In the advanced search function of eSearch Plus, the new algorithms can make Locarno and Vienna class suggestions based on uploaded images, thus making searches for trade marks and designs easier. Users can upload up to seven view images of a design to see if anything similar is already registered at the EUIPO. This service is free of charge, supporting users before filing and afterwards, for monitoring purposes.

More details about the new AI solution and image-based searches are available at the EUIPO website.