No.169 August 28, 2020 |
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| Mountain Huangshan in AnHui |
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In this issue
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 Second Draft of The Copyright Law Amendment under Review at Standing Committee of the NPC
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On August 8, the "Amendment to the Copyright Law of P.R. China (Draft)" was submitted to the Standing Committee of the National People's Congress for the second review.
The second review of the draft further improved the definition and types of works, revising them to "the works referred to in this law are the intellectual achievements that are original and can be expressed in a certain form in the fields of literature, art and science."
In terms of improving the protection of audio-visual works, the second-review draft of the draft distinguishes the copyright ownership of audio-visual works on the basis of the first review. For example, the second review of the draft adds provisions on the basis of "movie works or TV drama works". If other audio-visual works "constitute cooperative works or service works, the copyright ownership shall be determined in accordance with the relevant provisions of this law; they do not constitute cooperative works or service works. The ownership of the copyright is agreed between the producer and the author. If there is no agreement or the agreement is not clear, the producer enjoys it, but the author has the right to sign and receive remuneration. If the producer’s use of the audio-visual works specified in this paragraph exceeds the scope of the contract or industry practices, the author's permission should be obtained."
In addition, in response to the problem of copyright abuse, the second-review draft focused on the compliance with the Civil Code, Anti-Trust Law and other laws, and deleted the expression "not to abuse rights to affect the normal dissemination of the work" in the first-review draft and the provisions concerning the related legal responsibilities. Meanwhile, in order to better balance the protection of copyright and public interest, the second-review draft intends to appropriately expand the scope of the legal use of related works without the permission of the copyright owner and without payment to him or her.
(Source: wwww.cnipa.gov.cn)
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| CNIPA: Trademark International Registration Speeding Up
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The Trademark Office of the China National IP Administration continues to promote the reform to facilitate international trademark registration and improve the quality and efficiency of Madrid trademark review, reduce the examination timeline, and protect the legitimate rights and interests of both domestic and foreign applicants.
In the first half of the year, the Trademark Office received a total of 3,875 Madrid international registration applications submitted by Chinese domestic applicants, up 36% year-over-year, with online applications accounted for 93.5% of the total; the Trademark Office completed 4,009 international registration reviews within 2 months, 27,447 substantive examinations of Madrid territorial extension applications and 28,568 Madrid international follow-up reviews.
(Source: CNIPA website)
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| New Policy Permitting Qualified Foreigners Practice of Patent Agency in China and Foreign Patent Agency Entry
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Recently, the Ministry of Commerce of the P.R. China issued a notice on the overall plan for expanding the innovation development of service trades, among which, the following articles concerns IP industry:
Article 35. “In the IP service-clustered pilot regions meeting the qualifications requirements, foreigners who have obtained permanent residence permits for foreigners issued by the Chinese government and have patent agency qualifications in other countries are allowed to participate in the patent agent qualification exam and those who have passed the test can be issued the "Patent Agent Qualification Certificate." The aforementioned persons who have obtained the "Patent Agent Qualification Certificate" can practice in the patent agencies established in the pilot regions, and those who meet the prescribed conditions can join as partners or shareholders of the patent agencies established in the pilot regions.”
Article 48. “Strengthen international cooperation, promote the study and formulation of relevant regulations on the management of representative offices of foreign patent agencies in China, select qualified pilot areas to carry out trials for foreign patent agencies to establish permanent representative offices in China, and introduce international high-level intellectual property service resources . With timely review of past experience, provide practical support for the formulation of relevant measures for management, further promote the expansion of the intellectual property service industry to the outside world, and improve service quality”.
(Source: IPRdaily)
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| Cases in Spotlight
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| Unitalen Client Schlumberger Maintained Two Basic Patents Successfully
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Background:
The patentee M-I Co., Ltd. belongs to Schlumberger, the world's largest multinational oilfield technology service group. Schlumberger and its subsidiaries and affiliates have a large number of basic patents in various fields of oilfield technology.
In the second half of 2019, M-I Co., Ltd. initiated a 337 investigation against a Hebei machinery manufacturer. through the U.S. International Trade Commission (USITC) and filed multiple patent infringement lawsuits in the Beijing Intellectual Property Court of China.
Against the Chinese invention patents on frames and screen meshes owned by MI Co., Ltd. involved in the above-mentioned patent infringement litigation and its family invention patents, the Hebei machinery manufacturer (hereinafter referred to as “the requester”), submitted to the Patent Office of China IP Administration (CNIPA) at the end of 2019 and early 2020, respectively the invalidation requests. In the two requests, the requester listed a large amount of evidence in attempt to prove that the patents in question are not inventive by means of a combination of technical features.
CNIPA Ruling:
The legal team of Unitalen, entrusted by the patentee M-I Co., Ltd., explained in details the technical solutions of the patents involved and prior arts concerned to the CNIPA, with in-depth reasoning and analyses presented following the three-step evaluation criteria of the examination, and successfully had the CNIPA rule to maintain effective all the rights of the two patents involved.
Opinions:
The focus of the above-mentioned two invalidations is how to determine the technical problem solved by the distinguishing technical features, and on top this, how to determine whether the prior art has inspired the invention.
For example, in the invalidation request involved, both the requester and the patentee agree that there is at least one difference between Claim 1 of the patent involved and Evidence 1, Evidence 2 or Evidence 6 exits, i.e. the edge areas of the molded plastic frame are reinforced from the inside by metal box-shaped cross-section members connected at their four corners and defining peripheral reinforcements, and the ends of the metal wires are fixed to the metal box Sectional parts. Regarding this distinguishing technical feature, the requester believes that its role is to consolidate the strength of the entire screen frame, and Evidence 3 to 7 all disclose the use of metal box-shaped cross-section square tube profiles as the peripheral area to serve this. Therefore, inevitably, they provide technical enlightenment, so that Claim 1 is not inventive subject to the combination. But in fact, taking into account of the underlying technology of the patent involved, it’s found that the technical problems that the inventor faced during invention were excessive vibration of the screen, fluid bypass, seal damage, and excessive splashing. Through inventive work, the inventor discovered that increasing the strength of the screen frame can avoid the excessive shaking and other problems. Therefore, with the above-mentioned distinguishing technical features, the technical problem actually solved by the patent involved should be to improve the strength of the screen frame and avoid excessive shaking during use. As for the solution of this technical problem, other prior arts have not given any enlightenment, and even the technical idea is completely different. Thereby the collegiate panel maintained the validity of the patent right in question.
Similar for the other patent, the collegiate panel ruled to maintain the validity of the patent right because the requester has misunderstood the technical problem solved by the distinguishing technical features, none of the reasons for the request could be established.
Further on how to identify the technical problems solved by distinguishing technical features, which is the core of this case.
In the amendment to the "Patent Examination Guidelines" issued in the CNIPA No. 328 Announcement, the second step of the three-step method of determining inventiveness has clearly stipulated that "the technical problem actually solved by the invention needs to be determined according to the technical effect that the distinguishing feature can achieve in the claimed invention ". The requester in this case mistook that the invention involved can be obtained "easily" combining the features of prior art. With the target invention as the benchmark and beacon, it is simple and easy to find technical features from prior art to compare to; but, how to determine the benchmark and beacon in absence of the target invention? During invention, a technical person is faced with a huge amount of prior art. If there is no clear technical enlightenment, as an uncreative "person", he will not know how to use the prior art to solve the actual problem, even though the solution itself may not be difficult and complicated. Therefore, inventions that seem obvious on the surface may actually be inventive.
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| Unitalen Client McCann Foods Won Design Patent Invalidation Request against Another Multinational Food Company in China
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Case Summary:
Headquartered in Brookswick, Canada, McCann Foods is the world’s largest producer of frozen fries contributing to one-third of the world’s frozen fries supply.
Unitalen was entrusted by McCann Foods to file the invalidation request for two design patents titled as "Twisted French Fries" owned by another multinational food company (hereinafter referred to as “the patentee”) in China.
Unitalen team conducted full range of prior art searches and analyzed the relevant public evidences provided by the client from outside of China. Due to the inaccessibility to the outside networks such as YouTube website where the relevant evidences were collected, Unitalen had their Hong Kong lawyers preserve such evidence in the form of "Download Network Data Statement" to prove its authenticity.
Based on the prior design patents and the prior publication of pictures, photos and videos on the Internet and other evidence, Unitalen filed the invalidation request.
After examination, the CNIPA recently issued a written decision on request for invalidation, declaring that the two design patents involved were all invalid.
CNIPA Opinions:
The CNIPA held that: First of all, if the online evidence comes from a website with a relatively high credibility, the content disclosed on it is detailed, comprehensive with proven browsing records, and it’s preserved through legal notarization and authentication procedure, if there is no evidence that the website or the video publisher has a stake of interest with the parties involved and there is no evidence to the contrary to prove that the content of the video and the upload time are changed at will, the authenticity of the online video as evidence can be confirmed; Secondly, the patent involved and the compared design are both spiral French fries, they present a similar visual effect in the overall appearance, and the difference doesn’t suffice to have a significant impact on the overall visual effect of the product. Therefore, it’s determined there is no obvious difference between the involved patent and the compared design, and it violates the provisions in Article 23, paragraph 2 of the Patent Law.
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