Shen Changyu introduced the measures taken by the China National Intellectual Property Administration in response to the epidemic. He pointed out that the new crown pneumonia epidemic has brought huge challenges to global public health security, economic development and innovative activities. In this special period, it is of great significance for the BRICS to work together to respond to the epidemic, which fully reflects the determination and commitment of the BRICS to provide quality services to users. During the epidemic, the bureaus took a series of timely and effective measures to ensure stable operation, which received positive comments from all parties. While ensuring the orderly implementation of the projects under the “BRICS IP Cooperation Roadmap”, the BRICS Bureaus further strengthen digital-related cooperation, jointly respond to global challenges, and provide support to IP rights holders and the public.
The directors of the BRICS Bureaus heard the progress and report of the upcoming projects led by each bureau under the “Roadmap for BRICS Intellectual Property Cooperation”. The meeting focused on exchanges and discussions on the measures taken by the bureaus to reduce the impact of the new crown pneumonia epidemic and drug patent allowance during the epidemic, and discussed the application of digital technology in the bureaus and possible future cooperation.
The meeting was chaired by Goligory Ivliev, Director of the Russian Federal Intellectual Property Office. Claudio Villa Fetado, Director of the Brazilian Industrial Property Office, Ohm Pakash Gupta, Director of the Indian Patent, Design and Trademark Office, Roy Waller, Director of the South African Companies and Intellectual Property Registration Office, and others attended the meeting.
Since the initiation of the BRICS IP cooperation in 2012, the BRICS Bureaus have carried out cooperation and achieved significant results in eight areas including the promotion of intellectual property awareness, personnel training and examiner exchanges, trademarks and designs.
(Source: China National Intellectual Property Administration)
In the first half of the year, Beijing Intellectual Property Court conducted more than half of the cases in form of online trials
Online court trials have a positive effect on overcoming the impact of the epidemic, protecting the litigation rights of litigants, saving litigation costs, and helping enterprises resume work and production.
From January to July this year, the Beijing Intellectual Property Court actively changed its work model, hearing 6,281 cases online, accounting for 54.2% of the total number of cases received.
(Source: Intellectual Property Beijing)
The second review of the revised draft of the Copyright Law attracts attention
On August 8, the “Amendment to the Copyright Law of the People’s Republic of China (Draft)” (hereinafter referred to as the draft) was submitted to the Standing Committee of the National People’s Congress for the second review. In April of this year, the Standing Committee of the National People’s Congress reviewed the draft for the first time, and publicly solicited opinions from the public after the meeting. Social attention on related topics continued to increase.
The second review of the draft responded to a number of hot issues and improved the definition and type of “work”; relevant regulations were added to protect the copyright of audio-visual works in classes, and the regulation “shall not abuse the right to affect the normal dissemination of works” and related legal liability have been deleted. The adjustments to the legal system clauses and expressions need to be carefully considered, and the related adjustments to the second review of the draft have also attracted the attention of the industry.
(Source: China Intellectual Property News)
“Measures for the Administration of Trademark Registration Files” implemented
In order to meet the needs of the reform of trademark registration facilitation and to improve the management efficiency and management level of trademark registration files, according to the relevant provisions of the “Archives Law of the People’s Republic of China” and the “Implementation Measures of the Archives Law of the People’s Republic of China”, on the basis of the “Interim Measures for the Administration of Trademark Files” (hereinafter referred to as the “Interim Measures”) implemented in 1987, according to the relevant provisions of the “Trademark Law of the People’s Republic of China” and the institutional reform requirements of the State Council, the “Measures for the Administration of Trademark Registration Files” (hereinafter referred to as the “Measures”) were re-formulated.
In May 2017, the Trademark Office of the former State Administration for Industry and Commerce initiated the drafting and formulation of measures. After investigation and soliciting opinions, the “Trademark File Management Measures (Draft)” was formed. After the institutional reform of the State Council, CNIPA continued to advance the formulation work in accordance with the requirements of responsibilities. During the period, we exchanged opinions with the National Archives Administration for many times, and publicly solicited opinions from April 10 to April 25, 2020. A total of 14 opinions from units and individuals were received. CNIPA has fully studied the above opinions, revised and improved the content of the measures, and finally formed the “Administrative Measures for Trademark Registration Files”. After deliberation and approval by the Executive Council, and with the approval of the State Archives Administration, it will be implemented on August 20, 2020 in the China National Intellectual Property Administration Announcement (No. 370).
(Source: China National Intellectual Property Administration)
The result of “337 Investigation” came out, where will Dajiang and Daotong go?
Peak duels in the drone field have always been eye-catching. Recently, the U.S. International Trade Commission (ITC) made a final ruling on the “337 Investigation” of Shenzhen DJI Innovation Technology Co., Ltd. (hereinafter referred to as DJI): suspend the limited injunction for DJI, and wait for the final written decision of the US Patent and Trademark Office to determine whether the “184” patent (patent number: US9260184) is invalid. After learning the news, Xie Tiandi, DJI’s public relations director, shared the news on WeChat Moments immediately: “DJI has won!”
Previously, Shenzhen Daotong Intelligent Aviation Technology Co., Ltd. (hereinafter referred to as Daotong) and DJI exchanged lawsuits for patent infringement. With the continuous escalation of the patent war between the two sides, Daotong launched the “337 Investigation” against DJI in the United States, which caused great attention at home and abroad. Three months after ITC made a preliminary ruling in March this year on the DJI UAV “337 Investigation” (for details, please refer to the report on the 6th edition of this paper on May 20, 2020) and the US Patent Examination and Appeals Board (PTAB) made a ruling in May on the 3 patents involved in the “337 Investigation” of Daotong (for details, please refer to the report on the 6th edition of this paper on May 27, 2020), the patent contest between the two parties came again with news.
Industry insiders said that after ITC suspended the issuance of limited injunction, DJI can continue to sell drones in the US market that are involved in patent litigations. This gave DJI an edge. However, in addition to the current industry competition, external uncontrollable factors including the Sino-US trade conflict and the new crown pneumonia epidemic have already caused a great impact on the drone market. Experts urge that, in the long run, Chinese drone companies should consider giving up their previous controversy and overcome the difficulties together.
(Source: China Intellectual Property News)
Claim 200 million yuan! The latest development of the Chinese Academy of Sciences v. Intel FinFET patent infringement case is here
Recently, the Reexamination and Invalidation Department of the Patent Office of the China National Intellectual Property Administration (hereinafter referred to as the Reexamination and Invalidation Department) orally heard an invalidation request for an invention patent with patent number 201110240931.5 (hereinafter referred to as the patent involved). The petitioner in this case is Intel (China) Co., Ltd. (hereinafter referred to as Intel), and the patentee is the Institute of Microelectronics of the Chinese Academy of Sciences (hereinafter referred to as the Institute of Microelectronics). As the news is related to a patent infringement case with a claim amount of up to 200 million yuan between the two parties, it has attracted widespread attention in the industry.
(Source: China Intellectual Property News)
Compensation of 1 million! “Selfie Stick” Patent Infringement Case Final Judgment
The Supreme People’s Court held that: Although the patent involved in this case is a utility model patent, the patent rights are in a stable state after repeated examination procedures for invalidation requests. Pinchuang Company not only carried out the act of selling the alleged infringing product, but also carried out the act of manufacturing. It was the manufacturer of the infringing product and was at the source of the infringement of intellectual property rights. Prior to the lawsuit in this case, Pinchuang had experienced two civil infringement lawsuits for infringement of the patent involved, and the effective judgment of the previous cases had clearly determined that Pinchuang’s relevant actions infringed the patent right in the case. Under this circumstance, Pinchuang continued to manufacture and sell products that infringed the same patent right, and manufactured and sold multiple infringing products. Pinchuang subjectively infringed the patent right in the case with intention, and repeated the infringement, which is a serious infringement situation. The amount of compensation for economic losses shall be determined at a high level within the range prescribed by law.
In the case of Yuandesheng Company’s claim that statutory compensation should be applied, the court of first instance applied Article 65 of the Patent Law to determine that Pinchuang shall compensate Yuandesheng Company for economic losses and reasonable expenses totaling 1 million yuan. Based on the above analysis, this court believes that the amount of discretionary compensation is appropriate and in line with the provisions of the Patent Law.
(Source: Lawyers learning law)
Qualcomm and Huawei reached a long-term global patent license, stocks soared
Qualcomm announced its third quarter financial report on July 29. According to the financial report, the company’s GAAP income, pre-tax income (EBT), net income per share, and diluted earnings per share in the third quarter of 2020 have all declined by more than 50% compared with the same period in 2019. The financial report specifically emphasized that the above figures did not include the income derived from the settlement agreement with Huawei and the global patent license agreement. Qualcomm stock rose sharply.
(Source: IPRdaily)
Dragon Special Report and Agency Practice
Analysis on the Application of Article 59 of the Patent Law
Claims are the most important legal documents in patent documents, which define the scope of protection of inventions or utility models. In actual allowance, right confirmation and infringement procedures, it is often necessary to interpret the claims when determining the scope of protection of an invention or utility model. Therefore, the interpretation of the claims has become an important link in the allowance, right confirmation and infringement procedures.
I. Legal regulation
First paragraph of Article 59 of the “Patent Law of the People’s Republic of China” reads:
The extent of protection of the patent right or invention or utility model shall be determined by the terms of the claims. The description and the appended drawings may be used to interpret the content of the claims.
II. The author’s understanding of First paragraph of Article 59 of the Patent Law
First paragraph of Article 59 of the Patent Law stipulates that the description and drawings “may” rather than “should” be used to interpret claims. In other words, when the technical features recited in the claims are defined sufficiently clear, there is no need to use the description for interpretation. Only when the claims are unclear or ambiguous, will the description and drawings be used to interpret the claims.
However, when determining whether the patent or patent application in question is novel or inventive in the allowance or right confirmation procedures, it is necessary to compare the technical features in the claims of the involved patent or patent application with the reference documents. In the infringement procedure, it is necessary to compare the technical features in the claims of the involved patent with the suspected infringing product. In the above comparisons, some seemingly clear technical features may be controversial and considered to be ambiguous, thus requiring interpretation. Furthermore, different comparisons or comparison objects are likely to produce different disputed technical features.
Therefore, the reference documents used in the allowance, right confirmation and infringement procedures and the suspected infringing products may need interpretation, because they are likely to in turn affect whether there is any ambiguity in the specific technical features of the patent or patent application in question.
III. Cases involved
The following two cases are used for illustration:
Case #1 (Patent Right Confirmation Procedure)
This case involves an administrative litigation concerning the invalidation of a utility model patent with the patent number ZL200620113601.4, titled “a spectacle sheet with pattern inside”.
Claim 1 of the involved patent recites: A sheet of glasses with patterns inside, characterized by having a sheet for glasses, comprising an upper, a middle and a lower layers, the lower layer being a solid color thermoplastic sheet, and the upper layer being a transparent thermoplastic sheet, the inner surface of one of the upper and lower sheets being fixed with the middle layer of the pattern produced by the transfer method.
Embodiment 1 of Evidence 1 discloses the following: ... part or all of the sublimable dye contained in the sublimation ink 2a penetrating into the polymer molecules on one side of the resin sheet 4, so as to obtain the pattern sheet 5, and the pattern sheet 5 having a pattern layer 2 with a thickness of about 30-100 μm impregnated with a sublimable dye on one side …
One of the focus of contention in this case is: whether the pattern layer 2 formed by the sublimation dye infiltration on one side of the pattern sheet 5 in Evidence #1 can be equivalent to the middle layer obtained by the transfer method of the involved patent, that is, whether the transfer method in the involved patent includes sublimation transfer.
AOC Optical Company (the patentee) believes that the pattern layer 2 in the evidence 1 is impregnated into the resin sheet 4 by sublimating the sublimation ink 2a, which does not belong to the transfer method mentioned in the patent in question.
In this regard, the court of second instance held that claim 1 of the patent involved used the “transfer method”. According to the explanation of the transfer method in the patent specification, the transfer method includes thermal transfer, water transfer and air dye transfer, and the sublimation transfer used in Evidence #1 is one of the transfer methods. Therefore, the transfer method in this patent had been disclosed in Evidence 1. The grounds for appeal of AOC Optical Company lacked basis, and the court of second instance did not support it.
Case #2 (Patent Infringement Procedure)
This case involves an infringement lawsuit for a utility model patent with the patent number ZL200820176937.4 and the name “a direct-printable magnetic paper product”.
Claim 1 of the involved patent recites: A direct-printable magnetic paper product, comprising a printing layer capable of direct printing and writing, characterized in that: one side of the printing layer is provided with a magnetic paint layer, and the magnetic paint layer is closely connected to the surface of the printing layer.
The “Utility Model Content” section in the specification of the patent involved recites: The magnetic coating can be composed of metal powder (such as iron powder), alloy powder (such as neodymium iron boron), metal oxide (such as ferrite magnetic powder), and rare earth materials. It can be one of them, or a mixture of two or more … Because this product is relatively light in weight, it can obtain greater magnetic force, and can be more firmly adsorbed on the surface of iron or magnetic appliances to beautify and decorate.
One of focuses of the dispute is whether the iron powder layer of the alleged infringing product belongs to the magnetic coating layer defined in claim 1 of the patent involved.
Magtech (the accused infringer) claimed that the description explained the “magnetic coating layer” in claim 1. According to the recitation of the patent specification in question “This product ... can obtain greater magnetic force and can be more firmly adsorbed on the surface of iron or magnetic appliances”, the “magnetic coating layer” in the patent involved should be interpreted as a “magnetic coating layer” with magnetic force. Since the iron powder layer of the alleged infringing product does not have magnetic force, the iron powder layer of the alleged infringing product does not belong to the magnetic coating layer defined in claim 1 of the patent in question.
The court of second instance held that the claims of the patent involved in this case only recited that “the printing layer is provided with a magnetic coating layer on one side, and the magnetic coating layer is closely connected to the surface of the printing layer”, and did not define that the “magnetic coating layer” must exhibit suction force. The specification of the patent in question also recites: “The magnetic coating can be composed of metal powder (such as iron powder), alloy powder (such as neodymium iron boron), metal oxide (such as ferrite magnetic powder), and rare earth materials. It can be one of them, or a mixture of two or more”. It can be seen that, according to the above explanation of the specification, the “iron powder layer” should belong to the “magnetic coating layer”.
As for Magtech’s claim that the magnetic coating layer of the patent in question should be defined as having suction force based on the recitation in the specification of the case “this product ... can obtain greater magnetic force and can be more firmly adsorbed on the surface of iron or magnetic appliances”, the court of second instance held that the recitation was only an expression of the advantages and effects of the patent involved. Even if the magnetic coatings involved in the patent are mainly composed of soft magnetic materials such as iron powder, they can also obtain magnetic force through the magnetization process, which is in line with the situation of “a large magnetic force can be obtained”. Besides, the object to be adsorbed also satisfies the optional object of “iron or magnetic”. Therefore, it is impossible to obtain from this sentence that the “magnetic coating layer” of the patent involved must have magnetic force. For those of ordinary skill in the art, by reading the patent claims and specification, especially the recitation of the magnetic coating composition in the specification, one can clearly understand that the “magnetic coating layer” of the patent involved does not require magnetization process to exhibit magnetic force. Therefore, Magtech’s request for a restrictive interpretation of “magnetic coating layer” based on one sentence in the specification cannot be established, and the court of second instance did not support it.
IV. Opinions and suggestions of the attorney
Due to differences in understanding, deviations in drafting, etc., the technical features in the claims are likely to be unclear or ambiguous. Therefore, the technical features in the claims of many patents or patent applications may be explained using the specification and drawings.
Although the specification cannot be used to directly limit the scope of protection of patent rights, it is crucial in interpreting the scope. Therefore, when drafting a patent application document, the description should be written with great care, and more Examples are preferred to better support the claims. In addition, when describing technical effects, it is better to use positive languages (for example, through a certain feature, a certain effect is better) and to avoid negative languages (for example, in the absence of a certain feature, a certain effect will be worse). By doing this, it is possible to avoid the consequences of restrictive interpretation of claims.
V. Conclusion
This article briefly analyzes the application of first paragraph of Article 59 of the Patent Law through two cases, in the expectation of providing reference for practical agency work.
(Author: Yonghui WANG)
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