Posts in China

As in the U.S., when drafting claims in China, one must describe the invention sufficiently to enable a person skilled in the art to make and use the claimed invention. For software patents, a flow chart and explanation should be included, along with drawings and description of associated hardware. Portions of the source code may be included for reference. Software claims may be drafted as either method or apparatus claims. However, Justin Shi, patent attorney at Sony Mobile Communications in Beijing, warns that apparatus claims may be deemed invalid if they are phrased only in means-plus-function language and fail to describe the apparatus or its embodiments.

The Commission on the Theft of American Intellectual Property (IP Commission) released an 89-page report on May 22, 2013 assessing international intellectual property theft with a focus on China’s troubled IP regime and recommendations for changes in U.S. policy responses. Recognizing the large scale IP theft that frequently originates in China, the IP Commission proposes designating the President’s national security adviser as the principal policy coordinator for all actions on the protection of American IP.

Nothing has fundamentally changed about the nature of design patents. The first US design patent was granted in 1842. The Statue of Liberty, Coke bottle, Volkswagen Beatle, Stealth Bomber and Star Wars’ Yoda are all protected by design patents. Design patents have long played an important role in consumer electronics, automotive, apparel, jewelry, packaging and other industries. But industrial design is becoming increasingly important, Mr. Kappos explains, because the increasing functionality of man-made devices brings with it increasing complexity, so innovative companies are constantly seeking superior designs, a convergence of form and function that helps make the complex simple and sets their companies apart; and protecting such designs is critical.

On March 28, Apple Inc. appeared in court in Shanghai to defend charges that Siri, its voice-recognition, personal-assistant software, allegedly infringes a Chinese patent. The plaintiff and owner of the patent, Zhizhen Internet Technology Co., claims its version of the software has over 100 million users in China and is requesting the court to ban all manufacturing or sales of Apple’s product in China. This was not the first time Apple faced patent infringement claims in China. Last summer a Taiwanese man sued the company in China for alleged infringement relating to its Facetime technology.

In 2011, an Advisory Committee (AC) was instructed by the Hong Kong Government to conduct a review of the Hong Kong Patent System. On 7 February 2013, the AC issued its formal Report (209 pages long) recommending various changes to the system which will affect not only Patentees, but the entire Patent profession in Hong Kong. In general, the AC’s Report recommends three changes which can be described as being quite bold in some areas, whilst at the same time, being conservative as the changes permit much of the existing system to be retained.

The World Intellectual Property Organization (WIPO) publishes a yearly report of the worldwide intellectual property filings. World Intellectual Property Indicators 2012 estimates draw from approximately 133 Patent offices, and include direct national and regional applications and those received through the Hague system of international registration.

I don’t believe the federal government needs to coordinate a program or embark upon studies by some blue-ribbon panel. What the federal government needs is to institute a meaningful and coherent National Manufacturing Policy that offers tax incentives to manufacturers in the U.S. The federal government also needs to substantially lessen regulatory burdens. Through simple legislative reforms America could be made to be extremely competitive. Factor in that U.S. workers are dedicated and produce high-quality products, that the products don’t need to be shipped across the world to distribute and that civil unrest is extraordinarily unlikely in the U.S., and it is easy to envision a future where manufacturing returns to America to some appreciable degree.

Crocs, Inc. (NASDAQ: CROX) announced earlier today that Chinese courts have sentenced 18 individuals to a total of more than 46 years in prison for producing and selling counterfeit Crocs goods. Seventeen individuals were convicted of counterfeiting, and two of the 17 also were convicted of offering bribes. Another individual also was convicted on bribery charges in connection with production of counterfeit Crocs™ shoes. In addition to prison sentences, the above men together face fines totaling RMB 2,832,500 (approximately $450,896).

The stage is set for a new international treaty that would extend the protection for audiovisual performers, granting them both economic and moral rights similar to those already recognized for music performers. Over 500 negotiators from WIPO’s 185 member states, as well as actors, industry and other stakeholder organizations will meet in Beijing from June 20 to 26, 2012 to finalize discussions on an international treaty to update the intellectual property rights of audiovisual performers, such as film and TV actors and actresses. The meeting will be opened on June 20, 2012 at the China World Hotel by WIPO Director General Francis Gurry and high ranking Chinese State and Beijing Municipality officials.

At his speech at the U.S. Chamber of Commerce, Commerce Secretary Bryson outlined his top three priorities to help American businesses “build it here and sell it everywhere,” focusing on supporting advanced manufacturing, increasing our exports, and attracting more investment to America from all over the world. The key to emerging from the Great Recession is, of course, manufacturing. Manufacturing jobs have left the U.S. in favor of more business friendly climates in other countries, taking with them U.S. jobs and U.S. intellectual property. But moving into a Presidential election year will government be able to do anything that is at all likely to help?

The question, however, is whether this increased inventive activity is sustainable in light of the overwhelming backlogs faced by Patent Offices around the world. It is great to have a lot of inventive activity and interest in obtaining patents. That shows that there is increased interest in business activities because few, if any, pursue a patent for the sole purpose of obtaining a patent. There is almost universally some business goal with associated hopes, dreams and potential positive impact for the economy. Whether this increased innovative activity can and will be something that produces an associated economic boon remains to be seen and is largely, if not completely, dependent on the political machinations of those in Washington, DC and other capitals around the world. Talk about a depressing though!

The USPTO always also points out that PPH agreements increase patent quality. That is likely true, but probably not as directly as you might expect. As far as I can tell the benefit to quality comes as the result of primarily three things. First, it takes less time to examine a patent application that has arrived to the Office of Second Filing (OSF) because allowable matter has already been identified somewhere else, which substantially focuses the prosecution of these applications. Second, by requiring less time on some applications there will be more time for other applications, at least in theory. Finally, there is no doubt a self-selection that goes on from the applicants side, which means better patent applications, and the overwhelming number of those using the PPH accept the claims they get and do not circle back for more claims, or broader claims, with supplemental filings.

1.3 billion people simply cannot be ignored, that much is certainly true. In my experience, however, when potentially ridiculous sums of money are at issue people, including otherwise shrewd business executives, suddenly seem to lose double digit points off their IQ. Believing that you can successfully navigate the potentially treacherous waters of doing business with China without careful planning and competent, experienced counsel is simply naive.

Under the Paris Route PPH pilot program, an Office of Second Filing (OSF) may utilize the search and examination results of a national application filed in the Office of First Filing (OFF) in a corresponding application filed under the Paris Convention in the OSF. The PCT-PPH pilot program will use positive international written opinions and international preliminary examination reports developed within the framework of the Patent Cooperation Treaty.

As the second largest economy in the world, China is emerging to the center of the world’s economic stage. This emergence has been accompanied by constant changes in its legal and economic sectors. The intellectual property sector also has witnessed numerous recent changes. There have been significant new advances in China’s national innovation policies. New trends in Chinese patent filings have emerged. A growing number of Chinese companies are creating their own IP and increasingly filing infringement suits against foreign companies and their local competitors in China. China’s third patent law amendment has materially changed patent practice and procedures in that country.