Thus, the technical problem actually solved would not include such a feature. Notice of Entering Substantive Examination. CNIPA publishes applications at about 18 months from the priority date. 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. 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. Such a feature was incorporated into claim 1 from its dependent claim at the time of filing the reexamination request before the CNIPA. 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 … There is a big focus on improving IP-related services (Projects 1, 2, 62, 72, 74, 77, 86). Note that when requesting examination, an Applicant can also request participation in the Patent Prosecution Highway program to accelerate examination. 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. 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. All 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 could insinuate the importance of evidence in evaluation of technical motivation of the claimed invention from the prior art. Features, Instant access to all of our content. The time limit to reply is 4 months plus 15 days. Depending on priority claimed, the next notice may be the 5. This content is from: For the purpose of initially filing a patent application outside China, the Chinese Patent Law does not consider an inventor’s citizenship or residency. 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. The applicants are Erasmus University Medical Centre Rotterdam and Mr Craig in the Netherlands. China: Patent Laws and Regulations 2021. The most important steps during patent prosecution in China, include, patent filing, patent publication, patent examination, patent opposition and patent grant or patent rejection. Notes; 1. Thank you for the comments above. 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The Chinese State Intellectual Property Office (SIPO) is the government authority that receives and examines patent applications. 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. Its publication does not create an attorney-client relationship nor is it a solicitation for business. For help please see our FAQs. Note that most CNIPA patent deadlines can be extended by 2 months with the payment of a fee. 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. Local Insights, This content is from: 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”. 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. If the applicant has not requested substantive examination (e.g., at filing of the application), CNIPA will send a 4. In this case, the dispute focused on whether the claimed invention is inventive. material subject to strictly enforced copyright laws. No response to this Notice is due. 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. Further, CNIPA allows the revival of patent applications in most cases. The main divergence lies in how to define the technical problem actually solved by the invention. 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. 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. We provide free expert advice with no additional attorney fees. 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. Otherwise, the examination of novelty and inventiveness would be built on a shaky foundation, which would make the procedure uneconomical. 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 content is from: 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. 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. The SPC expatiates on the application of different substantive requirements for granting a patent in this case. © 2020 Euromoney Institutional Investor PLC. Notice of Time Limit to Request Substantive Examination in a Paris Convention application. In India, the patent prosecution consists of only a single phase comprising of several steps. 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. China reiterates its commitment to plurilateral IP policy (Projects 82, 87). – that is 10 times the number filed with the USPTO. 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. 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. 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. Applicants usually receive the 1A. The Patent Prosecution Highway leverages fast-track patent examination procedures already available at the offices to allow applicants to obtain corresponding pat… Most of these notices require responses with varying deadlines, which will be discussed further below. These omissions could suggest a lack of CNIPA commitment to Phase 1 pharmaceutical IP reforms. China - Best Firms for Patent Prosecution - 2020 Intellectual property consulting. Please read our Terms and Conditions and Privacy Notice before using the site. 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. 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. 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. 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. Aaron Wininger is a Senior Attorney and Director of China Intellectual Property at Schwegman Lundberg & Woessner. Notification of entering the Chinese national phase of an international application or 1B. 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. 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. CNIPA will issue 11. 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. After the Beijing IP Court revoked the Reexamination Decision, the CNIPA appealed to the SPC but failed to reverse the judgment. About 6 months (or longer) after filing a Request for Substantive Examination, CNIPA will issue a 6. Further, the applicant can voluntarily amend the application only when filing the request for substantive examination or after receiving the 6. Global Patent Prosecution Highway. The SPC held that the parameters of inventiveness, sufficient disclosure and claim support play different roles in ascertaining patentability and need to apply independently. No response is needed. The SPC found the seven pieces of supplementary evidence adduced by the applicants before the Beijing IP Court admissible. Notice of Passing Preliminary Examination of Invention Patent Application. Partial design is allowable now pursuant to the new rules. 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. 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. This option will also be influenced by technical decisions like the nature of the technology (as it relates to the applicant'… Published: 16/09/2020 The case is listed in the 36 exemplary technology-related IPR cases, which the SPC’s Intellectual Property Court concluded in 2019. This would usually be for a missing power of attorney or priority documents. Shuo Liu December 27, 2020 12:54 pm. China (PRC). Human embryonic stem cell is a promising technology that may hold the keys to innovative treatment of various human diseases. 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. After the Applicant files a response to the 2. The SPC leveraged the opportunity to elucidate the role of different parameters for granting a patent. Patent linkage does not appear in this list of tasks. If you're happy with cookies click proceed. The above case relates to the patent application No. Notice of Time Limit to Request Substantive Examination about 3 months before the deadline to request examination. 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 … 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. The deadline to voluntarily amend the claims is 3 months plus 15 days from the date of the Notice. 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. Patent Law Developments –Fourth Amendment to the Patent Law. China implemented a Patent Prosecution Highway program to expedite examination of invention patent applications in December 2011. 8. It seems that the SPC would allow a certain amount of leeway in supplementing evidence in the judicial proceeding. These paths can provide applicants with relatively effective ways to pursue a fast patent allowance in China without incurring extra official costs. The applicant will also have 2 months to file any divisional patent applications. Notice of Publication will also likely come before the 4. Notice of Formalities, if needed, CNIPA will send a 3. 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. Please be advised of the following changes: Partial design patentable. This blog, China IP Law Update, does not contain legal advice and is for informational purposes only. 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. Notice of Acceptance usually arrives within a few days of filing. Notice of Formalities. Patent International utilizes its wholesale negotiation leverage to get you the lowest translations, filing, and prosecution rates available via top-tier firms. Assuming, all rejections are overcome, CNIPA will issue a 9. 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 maximum protection period of a utility model in China is ten years from the date of filing. Subsequent office action have 2 months and 15 days to respond. Notice of Entering Substantive Examination if a request for examination was filed earlier. Like the U.S. Patent & Trademark Office, CNIPA will almost always issue a 7. first office action for lack of novelty, inventiveness, etc. So what are you waiting for? In particular, procurement and enforcement of patent rights in China has become very important Recognition of the patentability of human stem cell technology will fuel innovation and promote its commercialisation in the biomedicine field in China. Both the SPC and CNIPA has been emphasising the role of prior art as evidence, including common knowledge. In China there is no grant fee and the first annuity is due at the time of registration. Notice of entering the Chinese national phase with a few weeks of filing while the 1B. It is for information only. 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. 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. 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. The 5. ICLG - Patent Laws and Regulations - covers common issues in patent laws and regulations – including enforcement, amendment, licensing, term extension, and prosecution – in 28 jurisdictions. 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 of Publication. Notice of acceptance of patent application/Notice of Payment of Application Fees. 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. 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). The deadline to request examination is 3 years from the earliest priority date or 2 months from the filing date of a divisional application. There are three categories of patent in China: invention, utility model and design. The response deadline is 2 months plus 15 days from the date of the notice. Leading. 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. 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. Annuity payment notices annually after grant with the deadline for payment being the anniversary of the application date. A quick look at the essentials of patent prosecution in China, including key disclosure requirements for patent applications, expedited procedures, oppositions, timeframes and costs. Also note the above are the most common notices an Applicant can receive. Notice of Entering Substantive Examination, as discussed below. [3] 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. Membership Options | One Week Trial. The Applicant may then receive a 2. Notice of Entering Substantive Examination. CNIPA will issue the patent approximately 2 months after payment of the fees although a paper patent will not longer be issued. 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. As for the order of examination, in principle, sufficient disclosure, claim support and amendments beyond the original disclosure shall precede novelty and inventiveness. Depending on if the applicant filed in China via the Patent Cooperation Treaty (PCT) or Paris Convention , the applicant will either receive, respectively, 1A. This notice may come together with the 6. It may also include a unity rejection. 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. Otherwise, the Applicant would need to wait for publication and 6. Notice to Grant giving the Applicant 2 months plus 15 days to pay the grant 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. 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