The “Opinions” proposed that the coordination mechanism should be optimized to facilitate rapid protection of intellectual property rights. It is necessary to increase the examination capacity of patents, trademarks and new plant varieties, and further reduce the examination cycle. The focus is on improving the quality of utility model and design patent examinations, and strengthening source protection.

The “Opinions” put forward the need to promote the quick handling of simple cases and disputes. To this end, it is necessary to establish a list of markets that are focused on, and to establish rapid processing channels such as administrative law enforcement, arbitration, and mediation for key areas such as E-commerce platforms, exhibitions, professional markets, and import and export; promote the e-commerce platform to facilitate effective use of the patent right evaluation report to quickly deal with complaints about utility model and design patent infringement.

(Source: China Intellectual Property Magazine)

Continuous reform and improvement of protection system -- China will comprehensively strengthen intellectual property protection

Recently, the General Office of the Central Committee of the Communist Party of China and the General Office of the State Council issued the Opinions on Strengthening the Protection of Intellectual Property Rights. The document points out that it is necessary to continuously reform and improve the intellectual property protection system, comprehensively use legal, administrative, economic, technological, and social governance measures to strengthen protection and promote the overall improvement of protection capabilities and levels.

Opinions suggest that, by 2022, infringements will be better deterred and IP right holders’ dilemma of “difficult to prove, long cycle, high cost, and low compensation” will be solved. By 2025, the social satisfaction of intellectual property protection will reach and maintain a high level, the protection capacity will be effectively improved, the protection system will be improved, the business environment that respects the value of knowledge will be optimized, and the basic guarantee function of the intellectual property system to encourage innovation will be more effectively played.

Opinions require that efforts be made to increase punishment for infringements and counterfeiting, strictly standardize evidence standards, strengthen case enforcement measures, and improve the new industry and new field protection system. Propose to accelerate the introduction of punitive damages compensation systems for patents, copyrights and other fields; explore and strengthen effective protection of trade secrets, confidential business information and their source code, etc.; intensify criminal crackdowns, study and reduce the criminalization standards for intellectual property infringement crimes, and increase sentencing penalties; explore the establishment of a drug patent linkage system and a drug patent term compensation system; formulate protection management standards for e-commerce platforms.

(Source: Xinhua News Agency)

The China National Intellectual Property Administration: suspend awards for conformity with pertinent technical standards in seven regions

On August 30, 2019, the China National Intellectual Property Administration issued a notice on standardizing the awards for conformity with pertinent technical standards in the intellectual property management system. Such measure intends to solve the problems of “insufficient integration of conformity certification and actual enterprise” and “inaccurate guidance of conformity certification support policies”, and to promote the high-quality operation of the intellectual property management system: prevent illegal arbitrage. Based on the principle of “no excess rewards”, rewards will be given to cover the actual cost of eminent innovation subjects for their intellectual property conformity certification. The cost of counselling and consulting services will not be included in the scope of awards.

Recently, Guilin City, Huancui District, Weihai City, Luoyang City, Guangxi Zhuang Autonomous Region, Qingdao City, Guangzhou Development Zone, and Changsha City have announced the suspension of the awards for conformity with pertinent technical standards in the intellectual property management system.

(Source: Beijing Intellectual Property Protection Association)

Notice on Further Expanding the Opening Scope of Patent Data and Optimizing Services

In order to further optimize the intellectual property innovation environment, meet the needs of the public and innovation entities for intellectual property data, improve the convenience of public access to data, and improve the level of public services for intellectual property, the China National Intellectual Property Administration will further optimize services and expand the opening of patent data range.

Since November 20, 2019, the China National Intellectual Property Administration will add five types of data to the patent data service test system (http://patdata.cnipa.gov.cn, hereinafter referred to as the “test system”): Chinese invention patents legal status standardization data, Chinese utility model patent legal status standardization data, Chinese design patent legal status standardization data, Chinese patent reexamination case decision data, and Chinese patent invalidation case decision data. The types of data that the test system can provide to the public for download will increase to 34. For details, see the “Data Resources Catalog” in the system. At the same time, the test system services will be optimized: double the download bandwidth and increase the data download speed; simplify the user application registration process and use electronic protocols instead of paper protocols. For details, see the “Data Service Process” and “Data Use Agreement” in the system.

(Source: China National Intellectual Property Administration)

CNIPA Trademark Office Holds Symposium for Foreign Enterprises

On October 18, the Trademark Office of the China National Intellectual Property Administration held a forum in Shanghai to share the results of trademark reform and combat malicious registration. Du Hongyu, member of the Standing Committee of the CNIPA Trademark Office, Lin Haihan, a member of the party group of the Shanghai Intellectual Property Office and director of the Shanghai Trademark Review and Cooperation Center, attended the meeting and delivered a speech. Representatives of more than 100 well-known foreign companies in Shanghai and foreign-related trademark agencies were invited to participate in the discussion.

At the meeting, the Trademark Office introduced measures and results in terms of facilitating the reform of trademark registration and combating malicious registration of trademarks. Since 2018, in order to further strengthen the protection of intellectual property rights and better optimize the business environment, the Trademark Office has continued to deepen the reform of trademark registration facilitation, and various reform measures have achieved significant results. At present, the average period of trademark registration examination has been shortened to 5 months, reaching the international fast level, and trademark public services are more efficient and convenient. At the same time, the Trademark Office actively promoted the “forward move” and severely cracked down on malicious trademark squatting. In 2018 alone, about 100,000 applications for abnormal trademarks were rejected during the trademark examination and objection phases. According to statistics, in the first 9 months of this year, more than 32,000 applications for abnormal trademarks were rejected during the examination phase alone.

With the deepening of the reform of trademarks, the awareness of trademark intellectual property protection in China’s market entities has significantly increased. In the first nine months of 2019, the number of Chinese trademark registration applications reached 5.699 million, and China’s cumulative number of valid registered trademarks reached 24.16 million, with an average of 1 registered trademark per 5 market entities. The number of foreign applicants’ trademark applications in China reached 193,000, a year-on-year increase of 12.5%. The increase in numbers indicates that China’s investment environment and business environment, including the intellectual property system, are operating well, and that foreign companies are confident in the Chinese intellectual property system.

(Source: China Intellectual Property News)

Notice regarding public comment on the draft amendments to Chapter Nine of Part Two of the Patent Examination Guidelines (draft for comments)

In order to fully implement the spirit of a series of instructions of the CPC Central Committee and the State Council on strengthening intellectual property protection and respond to the needs of innovation subjects to further understand patent examination rules for new fields like artificial intelligence, blockchain, business rules and methods, CNIPA drafted the “Draft Amendment to Chapter Nine of the Patent Examination Guidelines (Draft for Comment)” (hereinafter referred to as the “Draft for Comment”). In order to solicit opinions from all walks of life, the consultation draft and its drafting instructions are published.

(Source: Legal person learning law)

Shanghai’s First Case of Triple Compensation for Intellectual Property Infringement

This case is the first punitive compensation case for intellectual property infringement in Shanghai. China’s “Trademark Law” stipulates that for serious violations of the exclusive right to use a trademark, the amount of compensation may be determined as more than one time and less than three times the actual loss of the right holder, the profit of the infringer, or the trademark license fee.

The defendant was warned by the plaintiff for suspected infringement of other trademark and patent rights of the plaintiff, and then signed a settlement agreement with the plaintiff to promise not to engage in infringement activities, but in this case, it was found again that the defendant conducted infringement. The defendant imitates the plaintiff’s trademark, products as they are, and sells them through online and offline channels; the products also have quality problems. After trial, the court found that its behavior complied with the applicable requirements of punitive compensation on “malicious” and “serious circumstances”.

In determining the compensation base, the court calculates the infringement profit based on the product of the infringing product sales and the infringing unit profit. On the basis that the defendant’s refusal to perform the obligation to disclose evidence has constituted a hindrance to proof, the superior evidence standard was sufficiently adopted for determination. The unit profit of the infringing goods may be determined at the discretion based on the similar products outside the case and the self-recognition of the defendant. Based on this, the court calculated the base number and, in the light of the defendant’s malice and the seriousness of the circumstances, determined the amount of compensation as three times.

(Product sales × product unit profit = profit from infringement) × 3

(Source: Xinhuanet)

Beijing Intellectual Property Court administrative case revocation rate: trademarks 31.8%, patents 13.8%; foreign-related awards average 1.36 million Yuan

On the morning of November 6, the Beijing Intellectual Property Court held a press conference on the fifth anniversary of its establishment.

The Beijing Intellectual Property Court is China’s first specialized intellectual property court, which has exclusive jurisdiction over administrative cases for the authorization of intellectual property rights such as patents and trademarks nationwide, as well as civil and administrative cases for intellectual property rights in Beijing.

From the establishment of the court on November 6, 2014 to the end of September 2019, the Beijing Intellectual Property Court has handled a total of 70924 intellectual property cases, with an average annual increase of 26%. A total of 44924 cases of intellectual property authorization and right determination were received, 87% of which were trademark cases and 13% were patent cases.

The cases of Beijing Intellectual Property Court canceling administrative decisions of the national trademark administration account for 31.8%, and the cases of Beijing Intellectual Property Court canceling administrative actions of the national patent administrative authority account for 13.8%.

(Source: Legal person learning law)

 Dragon Special Report and Agency Practice

Analysis of invalidation cases relating to webpage evidence

I. Introduction

In the context of China’s continued strengthening of intellectual property protection, the number of infringement litigations has basically increased year by year, and accordingly, invalidation cases have also increased. If invalidation cases are counted according to patent categories, invalidation cases for designs account for a large proportion. For example, 32% of the requests for invalidation in 2018 involve designs.
Design invalidation cases, compared with invention and utility model invalidation cases, are more likely to use evidence other than patent documents, especially webpage evidence.

In the following part, the attorney takes the latest invalidation case (in which all the webpage evidence submitted by the requester has not been accepted) as an entry point, explores the rules for determining webpage evidence in the invalidation process, and puts forward opinions and suggestions to provide a reference for practical work.

III. Introduction of the invalidation case

Regarding the design patent No. 201330013435.6 (hereinafter referred to as the patent involved), the claimant filed a request for invalidation on July 29, 2019, and the China National Intellectual Property Administration made the No. 42021 examination decision for invalidation request on October 23, 2019. In this case, because none of the prior design evidence submitted by the claimant was accepted, no comparative analysis was performed.
Specifically, the claimant has submitted the following evidence to prove that the patent in question does not meet the requirements of Article 23, paragraph 1, of the Patent Law.

Evidence 1: Screen print of the TECHFEVER website page and Chinese translation;

Evidence 2: Screen print of Repubblica website and Chinese translation;

Evidence 3: Screen print of the CENT website page and Chinese translation;

Evidence 4: Screen print of PRWEB website page and Chinese translation;

Evidence 5: Printed PCT Patent Publication No. WO2014 / 106812A3 and Chinese translation;

Evidence 6: A copy of the notary certificate (2019) Zhehangdong Zhengzi No. 6114 issued by the Oriental Notary Office of Hangzhou, Zhejiang Province;

Evidence 7: A screenshot of a webpage snapshot obtained by Bing searching for evidence 3;

Evidence 8: A screenshot of a webpage snapshot obtained by Baidu searching for evidence 3;

Evidence 9: A screenshot of a Darphyniasdiary website page;

Evidence 10: A copy of the notary of (2019) Zhehangdong No. 13449;

Evidence 11: Chinese translation of evidence 7;

Evidence 12: Chinese translation of evidence 8;

Evidence 13: Chinese translation of evidence 9.

Among them, evidence 6 is a notarized document of evidence 1-4, and evidence 10 is a notarized document of evidence 7-9. The combination of evidence claimed by the claimant is as follows: evidence 1, evidence 2 and evidence 3 are prior designs; evidence 5 is used to corroborate the authenticity of evidence 1; evidences 7 and 8 are used to corroborate the authenticity of evidence 3; evidence 9 is used to corroborate the exhibition publicity of evidence 1 and 2.

The patentee submitted a statement of observation and counter proofs on September 18, 2019 as follows:

Counter-proof 1: Notarization certificate, used to prove that the webpage of evidence 1 is inaccessible, and the content of the webpages of evidence 2 and 3 is different from the content submitted by the requester;

Counter-proof 2: Notarization certificate used to prove that the content of the same Bing snapshot is different from evidence 7.

Based on the above evidence submitted by the claimant and the patentee, the China National Intellectual Property Administration made the following determination.

1. Evidence 1-TECHFEVER website page

The claimant believes that the webpage of Evidence 1 originated from a foreign website that introduces scientific and technological information by way of publishing news. Judging from the page, there is no function to modify and edit. The page was published on January 11, 2013. This webpage is cited in the International Search Report for Patent Documents in Evidence 5. Therefore, the webpage is real and its publication time is January 11, 2013. The pictures recorded on this webpage are the prior designs of the patent involved.

International search report of evidence 5

In order to refute the evidence, the patentee filed a counter-proof. The counter-notarization certificate showed the input of URL of evidence 1 but could not open the corresponding web page.

CNIPA determined that, first of all, the website management of Evidence 1 and the publication, modification, and editing of the page content on the website were not clear. The webpage address in Evidence 5 is different from Evidence 1, and is not relevant. Moreover, Counter-proof 1, which shows failure to log on to the website through the same steps, can at least prove that the operation stability of the website is insufficient. Therefore, Evidence 1 cannot be used to evaluate the patent in question.

2. Repubblica website page of evidence 2 and CNET website page of evidence 3

The claimant claimed that Evidence 2 was an article published on the official website of the Italian Republic Daily on January 14, 2013. The counter proof submitted by the patentee shows that the same page as the website of Evidence 2 shows different picture content.

Same as Evidence 1, the CNIPA determined that the website management of Evidence 2 and the publication, modification, and editing of specific pages are not clear. Besides, the counter proof shows that the same webpage displays different contents. Therefore, it cannot be confirmed that the picture in Evidence 2 was in a state where the public can know it if wanting to know before the filing date.

Similar to Evidence 2, the CNET website page for Evidence 3 was unaccepted by CNIPA because the right holder submitted the same webpage showing different pictures.

3. About other evidence

In order to prove the authenticity of evidence 1 and 2, the claimant submitted evidence 9. Evidence 9 is a blog post published by an author in his U.S. blog, which states that “I had previously made a short comment to Luna Mini that could not actually be called a comment. I didn’t buy Luna Mini at that time, but I bought it shortly thereafter. I happened to be at the Foreo booth during the CES electronics show in 2013...” Related product pictures are also attached.

In this regard, although the patentee did not submit any counter proof, the CNIPA determined that the qualifications and operation of the U.S. blog site were unclear. The visible range of the blog can be set, and, after publishing, the publisher can also modify the content of the article and there is no record for query. Therefore, the existing evidence alone cannot prove whether the Luna Mini product had been disclosed at the 2013 CES show.

Regarding the Bing snapshot of evidence 7, although the snapshot time is earlier than the filing date, because the patentee submitted a counter-proof to prove that the Bing snapshot at the same time showed a different page picture than the evidence 7, CNIPA believed that the time of the Bing snapshot did not uniquely correspond to a specific web page and unsupported that Bing snapshot time in Evidence 7 can testify the publication time of the pictures in evidence 3.

CNIPA believed that Evidence 8 could not support evidence 3, because Baidu snapshot of evidence 8 was taken after the application date and Baidu snapshot could only grab text content.

It can be seen that the CNIPA did not accept evidence 1-3 as prior design, and further determined that the invalidation grounds proposed by the claimant were not valid.

III. Opinions and suggestions of the attorney

In this invalid case, the fact that the claimant intends to establish is that before the filing date of the patent in question, Luna mini products with the same appearance as the patent in question were exhibited at the CES electronics show in 2013; then, the news reports in Evidence 1, Evidence 2, and Evidence 3, showed pictures of Luna mini. The author believes that there is a high possibility that the facts claimed by the claimant are true. However, because the claimant’s preservation of evidence was insufficient, the probative force of the evidence submitted by the claimant was not obviously higher than that of the counter proof provided by the patentee. Therefore, the collegial panel was unable to support its claim for evidence.

For this case, the author thinks the following three points are worthy of reflection.

(1) The notarization procedure can only prove that the webpage is in the public state since the date of notarization, and the public content is the content saved in the notarial certificate. However, it cannot be proved that the publishing date recorded in the web page is the publishing date and the content of the web page has not changed since the publishing date.

In order to prove that the publishing day of a web page is the publication day and that the content of the web page has not changed, it is necessary to prove the nature of the web site, the management mechanism of the web site, the publishing, modification and editing rules of the content of the web page. For example, if the website is an authoritative and well-known website in China, the claimant may refer to the determination of the website in the previous invalidation examination decision or judgment; if the website is unfamiliar to Chinese examiners, the claimant may consider sending an email to the administrator of the website, asking the website about the rules of publishing and modifying specific pages, and then notarizing the email. For the authority of the website, it may help to quote the introduction of related websites in Baidu Encyclopedia, Wikipedia, etc.

In addition, the evidence saved by time stamp, blockchain and other means has the same problem. The openness and publishing time of the web content itself need other evidence to prove.

(2) Archive can be used for evidence preservation of website publication content

“Web.Archive.Org”, also known as “Internet Archive”, is a non-profit digital library that provides permanent, free storage and access to digital data. Data is automatically collected by the self-contained web crawler, and the content recorded on the captured web page is in the public state at least before the capture time of the web page. In the process of Web evidence preservation, if the archive website grabs relevant web pages, it is recommended to use archive to collect evidence.

If we retrieve the previous invalidation decisions, we can find many decisions using Archive evidence. For example, in invalidation decision No. 31014, the petitioner submitted the official testimony of archive which explains the working principle of archive website in detail, especially the working principle of grabbing PDF and other attachments in the web link. Finally, it was determined that the Internet Archive assigned a URL to each archived file on its website; the form is: http://web.archive.org/web/[yyyy][mm][dd][Timecode is hh:mm:ss]/[ Archived URL]. Therefore, the crawl time of each webpage or file linked to each webpage accessed on the archive website can be determined by the URL of the webpage or file, and the crawl time can be regarded as the publication time.

Returning to the aforementioned invalidation case, the requester visited and screened the webpage in Evidence 1 at the notary office, but the website was no longer accessible when the patentee conducted the notarization. Therefore, the authenticity of Evidence 1 was questioned. However, if the requester uses Archive to access the webpage of Evidence 1 captured by Archive before the filing date, the possibility of the webpage of Evidence 1 to be accepted can be greatly increased.

It should be noted that the Archive website is currently not accessible in China. In order to collect evidence through Archive, it is necessary to do it in Hong Kong, Taiwan or outside of China, and go through the corresponding notarization and authentication procedures.

(3) Whether the claimant has fully expressed his opinion on the counter-proof of the patentee

A store operator of e-commerce sites is likely to modify the pictures of products with high frequency, but news web pages rarely need modification. In this case, the news pages of Evidence 2 and Evidence 3 were both pointed out that the page notarized by the requestor was different from the picture on the page notarized by the patentee. However, the invalidation decision did not clearly indicate whether the difference was a picture relating to design or another part of a web page. If it refers to the pictures of other parts of the webpage (other than the body of the article), it is true that the page display may be different at different time points and on different computers.

For example, in the following Sohu webpage published on May 6, 2017, left part of the page recites the article body “Only after using Luna Mini 2 facial cleanser, I know that my face has never been truly washed …” whereas the right part is some recommendations which differ with time and devices. For example, the right side usually recommends the latest and hottest news which is certainly different with the change of time. Therefore, the screenshots generated by different notary offices and at different time points may vary significantly, but these differences do not mean that the body content of the article has changed.

In conclusion, when using webpages publication evidence, notarization procedure alone is not enough. It is also necessary to collect other evidence that can establish the credibility of the website, the release, modification and editing rules of the article content to prove the publicity and time of the evidence.

(Author: Jialu DU)

Please feel free to contact us at:
Tel: 0086-10-82252547
Fax: 0086-10-82250563
Email: marketing@dragonip.com