According to a legislative proposal submitted to China’s National People’s Congress on March 13the, the Chinese Patent Office, or SIPO, will have expanded jurisdiction to include trademarks and geographical indications, in addition to patents. Worth noting that copyrights will still not be examined by SIPO. The proposal passed on March 17, 2018. This is a part of a comprehensive reform package for China’s State Council. There may be different interpretations for the reform, but generally it is agreed that the proposed changes will reduce redundancies and overlapping jurisdictions among the various agencies.
This is the first significant amendments to this law which issued in 1993. Among changes in other acts of unfair competition, the amendments expanded the scope of protection for trade secrets, by clarifying the definition of a “trade secret,” increasing penalties, and holding the new employers liable. Full text of the law, in Chinese, can be found at http://big5.xinhuanet.com/gate/big5/www.xinhuanet.com/politics/2017-11/04/c_1121906586.htm
This draft was issued by the National People’s Congress. Interested readers please go to: http://www.npc.gov.cn/npc/flcazqyj/2017-09/04/content_2028317.htm
The comment deadline is September 24. You can submit your comments by registering at the NPC web site www.npc.gov.cn, or you can mail your comments to the Legislative Working Group of the NPC at 北京市西城区前门西大街1号.
If you are interested in following Chinese patent trends, you can find interesting findings on the state of patent protection and patent usage at the below URL:
An executive summary and the full survey report can be downloaded at the web page.
The Office of the Controller General of Patents, Designs and Trademarks (“Indian Patent Office”) issued revised Guidelines on Examination of Computer Related Invention(s) on June 30, 2017. Most notably, the new Guidelines eliminated the previous requirement that a novel hardware is required to patenting computer related inventions in India. This previous requirement has stirred controversy among many in India and elsewhere interested in patenting such inventions in India; the revised guidelines will shift the focus back to the underlying substance of such inventions.
I would also like to inform you about an event hosted by the US Patent Office, Invention-Con 2017. During this free, two day, inventors and entrepreneurs can attend plenary talks, participate in topic specific small-group breakout sessions, and hear from USPTO officials and experts who will present information on patents, trademarks, and other intellectual property (IP) matters and topics of interest to small businesses
More information can be found at the following web site: https://www.uspto.gov/about-us/events/invention-con-2017
SIPO is publishing for public comments proposed rules to accelerate a variety of patent matters, including patent applications for design, utility model, and inventions, reexaminations, and invalidation proceedings.
Those interested in submitting a comments may use the following methods:
1. by e-mail to firstname.lastname@example.org
2. by fax to +86-10-62083681
3. by post to SIPO at 北京市海淀区西土城路6号国家知识产权局条法司条法二处 邮编100088（请于信封左下角注明“专利优先审查管理办法”）
China’s Anti-Unfair Competition Law published on February 26, 2017 for public comment. Translated version is available athttp://www.chinalawtranslate.com/中华人民共和国反不正当竞争法（修订草案）/?lang=en. The original is at the web site of the National People’s Congress (http://www.npc.gov.cn/npc/xinwen/2017-02/26/content_2008334.htm), also noting the deadline of March 25, 2017. You may submit your comments directly at www.npc.gov.cn
Patents in the Trump Administration: the 2-for-1 order
Everyone in the IP community wonders if President Donald Trump will create a new order in the IP field much the same way he has approached other areas of the government. We had our first glimpse recently when President Trump issued Executive Order No. 13,771, which requires a federal agency to identify two existing regulations to be repealed every time it “publicly proposes for notice and comment or otherwise promulgates a new regulation[.]” Federal agencies are also required to ensure the cost of new regulations is zero, unless “otherwise required by law or consistent with advice provided in writing by the Director of the Office of Management and Budget.” This order is intended to reduce federal regulations’ dampening effect on small businesses, entrepreneurs, and the American people in general.
While the Executive Order is not specifically aimed at the USPTO, it could have a significant impact on the USPTO, because the agency is still busily shaping, by regulations and other means, the relatively new, but rapidly growing America Invents Act invalidation proceedings under its charge. While no one can argue against the general benefits of reducing federal regulatory burden, the timing is not particularly good for the decision makers at the USPTO who have relied on rulemaking power as an important tool to shape the PTAB process. Furthermore, USPTO also needs rulemaking power to respond to court decisions applicable to PTAB.
The drive toward reducing new regulations’ costs to zero may also serve to shift the saved costs to the users of the PTAB process. As a new practice area that started in 2012, attorneys of different years of experiences are more or less on a level playing field before the PTAB–attorneys at all levels must learn the same set of rules. Some commentators have pointed out that the Executive Order will make PTAB practice less transparent if the new developments will no longer be encapsulated by rules but must be learned through practice and experience; parties to a PTAB proceeding will have to pay for more hours of research by a young attorney, or pay the higher hourly fees of experienced PTAB specialists.
The Executive Order is working its way through the judicial system. Several groups, including Public Citizen, the Natural Resources Defense Council and the Communications Workers of America, filed suit in U.S. District Court in Washington, challenging the President’s constitutional authority in issuing the order.
Legislative Affairs Office of the State Council has published the “Draft for the amendment of PRC Patent Law” for the public to comment. Several commenting channels are available:
(1) Visit and register at：http://www.chinalaw.gov.cn, and use the OPINION COLLECTION SYSTEM FOR DRAFT LAWS AND REGULATIONS tab on the left hand side,
(2) Send comment by mail to Beijing City P.O. Box 2067, Beijing, China 100035. Please label your envelope as “Opinions about amendment to the Patent Law, or
(3) Send comments by e-mail to email@example.com
The draft law in Chinese is available at http://www.chinalaw.gov.cn/article/cazjgg/201512/20151200479591.shtml
The Taiwan IP Court was established in July 2008. It received many positive reviews during the early years; however, recent statistical reports indicated that it has not shown itself to be a patent friendly court. Actually, many practitioners in Taiwan have said that the low enforcement success rate at the Court (<15%) has caused many applicants to reconsider their patent filing strategy (or need to patent at all) in Taiwan.
Fair to say Dr. Shuji Nakamura was the one who put all companies doing business in Japan on alert when he sued his employer Nichia Corp in 2001 for reasonable compensation for his work on the blue LED. At the end of the suit/appeal/mediation, Dr. Nakamura was rewarded ¥843 million by the Tokyo High Court. The large number is reasonable when we take into consideration that Dr. Nakamura was awarded a Nobel Prize in 2014 and the growth pattern of the LED industry.
I am sure Japan was one of the countries that China studied carefully when China too considered requiring fairer compensation for Chinese inventors when China amended its Patent Law to include mandatory compensation and remuneration for the inventors.
Interesting to note that Japan is now reversing its course. In recent amendments to its Patent Law (which amendments just received Cabinet approval in March), the Patent Law now seems to give the invention rights to the employer from the outset if the company has the proper in-house regulations in place. While inventors are still entitled to compensation, at least Dr. Nakamura has openly criticized the amendments as following the US example without having the innovative start-up infrastructure of the US to support the inventors. Overall, the new amendments protect more the corporate interests than the inventor interests.
China and Japan are at different stages in economic development, but it would be interesting to observe where Japan decides to go next, as the in-service remuneration discussion continues in China.
China’s State Council Legislative Affairs Office released the Draft Regulations for public comments on April 2, 2015. The ABA IP Law Section and the International Law Section formed a joint task force to provide comments. The comments are available on line at
In addition to the exhibitors with cool gadgets, the Taiwan External Trade Development Council organized a top level forum titled “IoT and the Cloud: Software to Hardware—The Next Step”. ACER founder Stan Shih, MediaTek CMO Johan Lodenius, ARM CMO Ian Drew, STMicroelectronics Executive Vice President François Guibert, and NXP R&D Executive Vice President Hai Wang spoke at the Forum. The interactive session hosted by Executive Yuan Vice Premier Mr Zhang was particular interesting where the panelists went beyond the prepared speeches. Stan Shih stood out as concerned patriot of Taiwan, pondering Taiwan’s position in the new landscape, and the transition of power between generations of tech leaders.
The Copia Institute is having its inaugural summit today and tomorrow, at San Jose’s Tech Museum.
The central theme is on innovation principles, and the disruptive technologies identified included health data, blockchain, and 3-D printing. I note that these are very different from the themes of comparable Asia-based innovation meetings, which identify the internet of things, big data, and smart cars as the disruptive technologies.
While AIA is still being absorbed, the US Congress has taken steps toward a new wave of changes. The new reformed bill, entitled the STRONG Patents Act of 2015, has been introduced by U.S. Senators Chris Coons, Dick Durbin, and Mazie Hirono. The bill will address various aspects of post-grant practice and patent litigation, among other things.
Beijing Intellectual Property Court was establishment in November 2014 and has been hearing cases involving patent infringements, computer software piracy, technical secret theft and well-known trademark infringement.
Shortly thereafter, the Guangzhou Intellectual Property Court was established in December, 2014.
The Shanghai IP Court was also recently established sharing the same location as the Third Intermediate People’s Court of Shanghai.
All three courts appear to be quite busy already, hearing hundreds of cases.
According to the latest statistics released by the State Intellectual Property Office, 928,000 patent applications for inventions were received in 2014. This large number of applications virtually ensures that the IP court structure will have to continue to grow.
The Standing Committee of the PRC National People’s Congress approved draft law to establish IP courts in Shanghai, Guangzhou, and Beijing on Aug. 31, 2014. The exact shape and form of the courts are not clear at this point. However, according to the announcement, these courts will have jurisdiction on over both civil and administrative cases, but not criminal cases. The Supreme Peopel’s Court will have to submit a report card to the National People’s Congress after three years.