The CNIPA’s decisions I am talking about are re-examination decisions (against a rejection decision of a patent application), and invalidation decisions (against a request for invalidation of a granted patent. The appeals against these CNIPA’s decision can only be filed in Beijing, as the CNIPA is always the defendant in such appeals. At present, only the Beijing IP Court will accept such appeals. A further appeal against the Beijing IP Court’s decision used to be filed at the Beijing High Court. However, from 1 January 2019, all appeals against the Beijing IP Court’s decisions on patent and utility model cases will be handled by the IP Tribunal of the China Supreme People’s Court (the CSPC) directly.
Such appeals had low, if not very low, reversal rate statistically. According to data kindly provided by Darts-IP:
The reversal rate of the invalidation decisions increased every year from 2014 to 2017, from about 10% to 15%; and
The reversal rate of the re-examination decisions increased every year from 2014 to 2017, from about 7% to 10%.
Together with the change of handling all appeals on patent and utility model cases by the IP Tribunal of the CSPC directly, the CSPC also now has a set of stipulations to handle such appeals, bring the Chinese patent re-examination/invalidation system closer to the international norm. Some major points are as below:
More open interpretation of sufficiency (than the CNIPA).
More open view on generalization (than the CNIPA).
Relevant technical field should refer to the lowest level in the international patent classification.
What a patentee says during infringement proceedings would be considered at invalidation.
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.
Today’s blog post has been kindly drafted to you by our IPR expert Dr. Toby Mak from Tee & Howe Intellectual Property Attorneys and Ms. Constance Rhebergen from Bracewell LLP .In their article, which was first published in UK Chartered Institute of Patent Attorneys (CIPA) Journal, Dr. Mak and Ms. Rhebergen give a detailed overview of China’s patent security interest market and explain how to register for patent security. Lending money to patentees with patent on mortgage is gaining popularity in China and this is something that European SMEs could also benefit from.
In China, intellectual property assets, including patents, have certain similarities to other property rights such as real estate and tangible property, and the owner is able to dispose of such asset in any legally allowable manner. Typical transactions involving real estate include buying and selling, renting, and mortgaging. Although patents are extensively the subject of buying and selling (assignment), and renting (licensing), mortgaging (security interest or pledge) of patent rights is less common and often overlooked. Some top reasons contributing to this include the difficulty and expense in evaluation of security interest status of patents, instability of rights due to invalidation challenges, and the challenge of foreclosing upon a security interest to ensure realization (whether recovery of monies or transfer of secured asset), particularly compared to a required selling of real estate.
While intellectual property shares certain similarities with real estate and tangible property, the treatment of intellectual property differs in important aspects and is not intuitive. Therefore, expertise regarding intellectual property security should be included in early stage development of strategy to ensure optimization of rights and value, both for financial institutions offering financing and companies involved in transactions. Notably, while there is large group of patent attorneys knowledgeable about prosecution, managing security interests in patents is not necessarily part of their training. Similarly, while corporate attorneys focus on security interests and financing, these specialist may be unversed in the unique aspects of intellectual property. Identifying the right expert early in the process allows for structures and for drafting that will streamline efforts at a later date. Continue reading “Patent Security Interest in China” »
Today’s blog post has been kindly brought to you by our IPR expert Mr. Toby Mak from Tee & Howe Intellectual Property Attorneys. In his article, which was first published in UK Chartered Institute of Patent Attorneys (CIPA) Journal, Mr. Mak gives a detailed overview of the Chinese State Intellectual Property Office’s final draft of the proposed revisions to the Chinese Patent Law.
In December 2015, the Chinese SIPO published their final draft of the proposed revisions (the proposal) to the Chinese Patent Law (the Law) to seek public opinion. Compare to the draft in April 2015 (please see my report in the May issue of the CIPA Journal), there are a lot of significant changes in this proposal, while many changes proposed in April 2015 were retained. This article reports these proposed revisions in the final draft, together with my comments.
As this article closely relates to mine published in May 2015 issue of the CIPA Journal, I will continue to use the same number scheme for various topics so that the two articles could be referred to each other.