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CHINA IPR NEWS
www.deqi-iplc.com
1.Establishment of Beijing Third Intermediate People's Court in August, 2013
In 2011, the Beijing First Intermediate People's Court and
the Second Intermediate People's Court concluded 60,000
cases, up 485% compared with the year of 1995 when the
Beijing Intermediate People's Court was divided into two
intermediate people's courts. In order to meet the challenge of
surgent adjudication work, the Beijing Third Intermediate
People's Court was established on August 6, 2013, and will be
officially opened on August 21, 2013.
Beijing First, Second & Third Intermediate People’s Courts
hear cases of first instance assigned by laws, and appealed and
protested cases from corresponding lower courts. From
August 21, 2013, their respective jurisdctions are as follows:
CHINA IPR NEWS
1. Establishment of Beijing Third Intermediate People's Court in August, 2013 1
2. Supreme People's Court Judgement Document Will Be Published Online in 2013 2
3. Several Provisions on Issuance of List of Dis-honest Persons Subject to Enforcement to Take Effect on October 1, 2013 2
PATENT COLUMN
1.Confidentiality Examination of Patent Appli-cation Intended to Be Filed Outside China 2
2. How to Determine Invention or Utility Model Developed in China For Chinese Confidentiality Examination 5
Q & A China 6
Scenery of China 6
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Beijing First Intermediate People’s Court
Haidian District, Shijingshan District, Mentougou District, Changping District and Yanqing County
Beijing Second Intermediate People’s Court
Dongcheng District, Xicheng District, Fengtai District, Fang-shan District and DaxingDistrict
Beijing Third Intermediate People’s Court
Chaoyang District, Tongzhou Distric, Shunyi District, Huair-ou Distric, Pinggu District and Miyun County
Source:http://www.bj.xinhuanet.com/bjyw/2013-08/06/c_116832161.htm
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Supreme Court judgment document posted on the Interim
Measures has been reviewed and approved and came into
effect in July, 2013. The first batch of judgments has been
published recently.
According to this approach, except as otherwise
provided by the law, all the judgments ,orders and
decisions made by the Supreme People's Court will
continue to be published on its official website
(www.court.gov.cn/zgcpwsw).
Before publishing judgment documents on the Internet,
it is necessary to perform technical processing on
individuals' private information as well as other contents
which are inappropriate to be disclosed. Where a party
considers that the case involves personal privacy or trade
secrets and requests for not publishing, the departments
handling the case shall review the reasons and decide the
case not to be published, if the reasons are found to be
justified and the case does not involve any public
interests.
Source:http://news.hbtv.com.cn/2013/0703/417434.shtml
Several Provisions on Issuance of List of Dishonest
Persons Subject to Enforcement were promulgated by the
Supreme People's Court, and shall come into force as of
October 1, 2013.
Supreme People's Court statistics show that among the
national court rulings from 2008 to 2012 in which the
debtor has property cases, more than 70% of the persons
subject to enforcement escaped, evaded and even
violently resisted the enforcement, less than 30%
performed automatically. These provisions aim to solve
the problem of "difficult enforcement” of judgment.
According to the provisions, people's courts at all levels
shall record the dishonest persons subject to enforcement
into the database of dishonest persons subject to
enforcement of the Supreme People's Court, and disclose
the list to public uniformly.
The provisions also state that people's courts at all levels
can publish the dishonest persons subject to enforcement
through newspapers, broadcast, television, Internet,
bulletin boards and other means according to actual
situations, and can periodically inform the public about
the situation of dishonest persons lists through press
conferences or other means.
The person subject to enforcement would be included
in the blacklist under one of the following circumstances
applies
1. Obstructing or resisting enforcement by means of
fabricating evidence, violence or threats, etc.;
2. Avoiding enforcement by false litigation, sham
arbitration or hiding and transferring property, etc.;
3. Violating the property reporting system;
4. Violating the high consumption restriction order;
5. The person subject to enforcement refuses to fulfill
or implement the settlement agreement without proper
reasons; or
6. Other circumstances where the person subject to
enforcement refuses to perform the obligations
established by effective legal documents while being
equipped with the ability to perform.
Source:http://news.sina.com.cn/o/2013-07-20/065927721301.shtml
1.Brief introduction
The Patent Law of the People's Republic of China that
goes into effect on October 1, 2009 (i.e., the third revision
of the Patent Law) puts forward a provision of
confidentiality examination for invention or utility model
developed in China while intended to be filed as a patent
PATENT COLUMN
1.Confidentiality Examination of Patent Appli-
cation Intended to Be Filed Outside China
By Nannan Lin
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2.Supreme People's Court Judgement Document Will Be Published Online in 2013
3.Several Provisions on Issuance of List of Dishonest Persons Subject to Enforcement to Take Effect on October 1, 2013
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application abroad. The invention or utility model
developed in China is admitted to be filed as a foreign
patent application only when it is determined upon
examination that the invention or utility model does not
need to be kept secret. When the provision is violated, a
corresponding patent application filed in China is not
patentable. Even if patented, the corresponding patent
right may be declared invalid for this reason. Specifically,
the invention or utility model developed in China refers to
those of which substantive content of the technical
solution were completed within the territory of China.
2.Three routes
The State Intellectual Property Office (SIPO) is
responsible for receiving a request for confidentiality
examination of patent application intended to be filed
outside China. Specifically, there are three routes to satisfy
the provision of confidentiality examination for filing a
patent application abroad.
①File a patent application abroad directly
②File a patent application abroad after a corresponding
patent application is filed to the SIPO
③File an international application, i.e., an international
patent application through the Patent Cooperation Treaty
(PCT)
For route ①, before applying for a patent application
outside China, the applicant shall submit a request for
confidentiality examination of patent application to be
filed abroad (hereinafter referred to as a request for
confidentiality examination) and the description of the
technical solution to the SIPO in paper form. The
applicant may also submit corresponding documents in
foreign languages for the examiner’s reference. The
description of the technical solution shall be consistent
with the contents of the patent application to be filed
abroad. If they are not identical, a corresponding Chinese
patent application may not be granted a patent in China.
For route ②, the applicant shall submit a request for
confidentiality examination at the same time when or after
a Chinese patent application is filed, surely before filing a
corresponding patent application abroad. The contents of
the corresponding patent application filed abroad shall be
identical with those in the Chinese patent application.
According to statistics, 60% of applicants prefer to submit
the Chinese patent application and the request for
confidentiality examination at the same time.
For route ③, the applicant shall be deemed to have
simultaneously filed a request for confidentiality
examination to the SIPO when it or he files the
international application designating the SIPO as the PCT
Receiving Office. That is, the applicant is not necessary to
submit an additional request for confidentiality
examination with route ③.
It should be pointed out that if an international
application is submitted by the applicant to another
Receiving Office (including the International Bureau)
other than the SIPO, the international application shall be
processed in accordance with route ①. In addition, acting
as the PCT Receiving Office of an international
application, the SIPO requires that at least one applicant
of the international application has a Chinese nationality
or has a residence in China. Under the requirement, if the
applicant is not entitled to file the international
application to the SIPO, the SIPO may not conduct the
examination for acceptance even if the international
application is submitted to the SIPO, but transmit the
application documents directly to the International
Bureau. In this case, it is not deemed that the applicant
has filed the request for confidentiality examination to the
SIPO.
In the above three routes, only Chinese is accepted by
the SIPO by use of routes ① and ②. As to route ③, the
SIPO is able to accept application documents in Chinese
or English. Therefore, route ③ may have linguistic
convenience to some foreign applicants. Moreover, route
① may have more cost savings than other two routes
since the request for confidentiality examination itself has
no official fees. In contrast, route ② requires to pay costs
associated with the Chinese patent application, while
route ③ may incur expenses relating to the international
application.
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3.Examination situation
When the request for confidentiality examination is
received, the SIPO may give a conclusion according to
specific circumstance, and issue a notification of
confidentiality examination of patent application to be
filed abroad (hereinafter referred to as a notification of
confidentiality examination) to inform the applicant of the
conclusion. The conclusion may be to allow filing a patent
application abroad without keeping the corresponding
technical solution secret, to suspend filing a patent
application abroad due to national security or other vital
interests, to deem the request for confidentiality
examination not to have been made since the form of the
documents for the request does not comply with the
provisions, etc. When the conclusion in the notification of
confidentiality examination is to suspend filing a patent
application abroad, the SIPO may further issue a decision
on confidentiality examination of patent application to be
filed abroad, informing the applicant whether it is
required to keep the technical solution secret or not.
According to statistics, approximately 99.9% of the cases
having been examined by the SIPO have passed the
confidentiality examination and been permitted to be filed
as a foreign patent application.
If the applicant fails to receive the notification of
confidentiality examination within 4 months from the
filing date of the request, or the applicant fails to receive
the decision on confidentiality examination within 6
months from the filing date of the request when the
applicant is required to suspend filing the foreign patent
application, it or he is considered to have a permission to
file the foreign patent application. It should be noted that
4 months or 6 months is the upper time limit for
examination. It does not mean that every request for
confidentiality examination will take such a long time for
processing. In other words, the maximum time period
shall not exceed 4 months or 6 months respectively even
for the most complicated cases. According to statistics,
the average period from the submission of the request for
confidentiality examination to the issuance of an
examination conclusion for the first time by the SIPO is
approximately two weeks. In actual practice, by delivering
in person of the Chinese patent application and at the
same time raising the request for confidentiality
examination through route ②, the applicant may get the
first notification of confidentiality examination at the
same time when it or he gets a notification of acceptance
on the filing day of the Chinese patent application,
wherein most requests for confidentiality examination are
approved by Examiners for the first time they are
examined. As to route ③, the confidentiality examination
may generally be completed within a week.
4.Treatment recommendation
In summary, Applicants can determine whether to file a
request for confidentiality examination according to their
own situations, select a route to file the request for
confidentiality examination and provide documents
corresponding to the route with the SIPO. When
determining whether a technical solution is developed in
China, information relating to the applicant or inventor
(such as nationality, recent work place and place of
residence, etc.) may be used for reference. Also, factors
such as language, related costs, examination time, and
earliest filing date, etc. may be taken into account
comprehensively when selecting a route for confidentiality
examination. If a foreign applicant would like to use route
③ for his technical solution developed in China, that is,
to submit an international application with the SIPO as
the PCT Receiving Office, the international application
may probably be transmitted by the SIPO to the
International Bureau for acceptance on a ground that the
applicant is not a Chinese national or resident. Then, the
foreign applicant may not be regarded as having raised the
request for confidentiality examination to the SIPO,
which is better to be aware of beforehand.
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As to the confidentiality examination mentioned in
Article 20 of the Patent Law, Rule 8 of the Implementing
Regulations of the Patent Law of the People's Republic of
China provides a detailed provision, which specifically states that “the invention or utility model developed in
China as mentioned in Article 20 of the Patent Law refers
to an invention or utility model of which the substantive
contents of the technical solution were made within the
territory of China”. Normally, the territory of China refers to the territory within the China customs frontier,
excluding the regions of Hong Kong, Macao and Taiwan.
Take an invention for instance, detailed explanations on
how to determine “the substantive contents of the
technical solution” will be given below.
Firstly, the substantive contents of the technical
solution may be determined according to inventors
named in a patent application. Concerning the concept of
"inventor", Rule 13 of the Implementing Regulations of
the Patent Law states that “‘Inventor’ or ‘creator’ referred
to in the Patent Law means any person who makes creative contributions to the substantive features of an
invention-creation. Any person who, during the course of
accomplishing the invention-creation, is responsible only
for organizational work, or who only offers facilities for
making use of material and technical means, or who only takes part in other auxiliary functions, shall not be
considered as inventor or creator.”
It should be noted that confidentiality examination shall
be requested for an invention completed by its inventor
within China regardless whether the inventor is a Chinese or a foreigner. Of course, it should pay more attention
regarding confidentiality examination on an invention
where one or more of its inventors are Chinese nationals
or residents.
In an example, it is assumed that a multinational
corporation has a parent company abroad, and sets up an R&D center in China. A technical solution developed by
the R&D center has a foreign project manager (or has a
project manager living abroad). If the project manager is
merely responsible for organizational work, and does not
participate in substantial work of research and development, the project manager does not play a
decisive role in confidentiality examination determination.
In other words, we can not lightly draw to a conclusion
that the technical solution is completed in a foreign
country and does not subject to confidentiality examination in China just because it has a foreign project
manager.
Secondly, contents of claims may be taken into
consideration. The “substantive contents” in paragraph 1
of Rule 8 of the Implementing Regulations of the Patent
Law refer to those created by an inventor and not disclosed in the prior art, which may correspond to
contents described in characterizing portions of the
claims (especially an independent claim). For example, as
to an invention accomplished under the cooperation of
research staffs from multiple countries, distinguishing features of an independent claim are relied on to
determine whether the invention is done in China or not.
As a general principle, if it can be determined definitely
that a technical solution is not an "invention or utility
model developed in China", a request for confidentiality examination is not necessary. Otherwise, the request for
confidentiality examination is proposed. In particular,
when there is an ambiguity on determining whether the
invention or utility model is developed in China, it is
recommended to request the confidentiality examination.
The reason is stated in detail hereinafter.
Complying with the provision of confidentiality
examination may simply add some extra operations on an
application process, while ignoring the provision of
confidentiality examination may have serious
consequences. Generally, a vast majority of inventions or utility models are not related to national security or other
vital interests, and are not required to be kept secret. As
long as a request for confidentiality examination is filed to
the State Intellectual Property Office (SIPO), an
allowance for filing a patent application abroad may be obtained easily and quickly. However, in the case that a
confidentiality examination is probably necessary for an
invention or utility model while skipped during the
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2.How to Determine Invention or Utility Model Developed in China For Chinese Confidentiality Examination
By Nannan Lin
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application process, the patent right obtained in China
may be unstable.
If someone raises a request for invalidation directed to a
Chinese patent based on a ground that confidentiality
examination necessary for the patent has never been
requested, the right of the Chinese patent is very likely to
be declared as invalid if the confidentiality examination in
China is really needed for the patent. In particular, when
there is a conflict of interest between competitors, a
competitor may use all means to prove that an invention
or utility model of its opponent is done in China when it
or he finds that a confidentiality examination requirement
has not been met, in order to invalidate the patent right
for the invention or utility model obtained in China. By
requesting confidentiality examination beforehand, we can
avoid the aforesaid ambiguity in order to eliminate the
potential threat to the stability of the patent right.
The submission time of division application in China is
as follows:
1.After the initial application has been filed and there is
no Notification to Grant Patent Right or decision of rejection
received, the applicant shall file a division application. If
the initial application has been withdrawn, or is deemed to
have been withdrawn and the right has not been restored,
no division application shall be filed in general.
2.The applicant shall file a divisional application no later
than the expiration of two months (i.e. the time limit for
going through the formalities and registration) from the
date of receiving the Notification to Grant Patent Right to the
initial application issued by Patent Office.
3.With regard to the initial application to which the
examiner has issued the decision of rejection, the applicant
may file a divisional application within three months from
the date that the applicant receives the decision of
rejection regardless of whether the applicant requests for
reexamination or not.
4.The applicant, after requesting for reexamination or
during the initiation of the administrative litigation against
the reexamination decision, may also file a divisional
application.
(end)
Q & A China
Could you explain about the submission time of
division application in China?
----From USA
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Scenery of China
Zhangjiajie National Forest Park
It is located in North-Western part of Hunan
province. The park is known for its unique
landscape with lush forests dominated by quartzite
sandstone pillars.
(Photo taken by Yanling Zhou on June.4th, 2012)
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