If this email does not display correctly,
please click here.
No.93 Oct 28, 2013
 
Subscribe   
 
Contact us  
 
7Th/8Th Floor,Scitech Place, 22 Jianguo Menwai Ave.,Beijing 100004,P.R.China
T: +8610 59208888
F: +8610 85110966 85110968
Web:www.unitalen.com
E-mail:mail@unitalen.com
 
     
     
     
The Huangguoshu Waterfalls
 
In this issue
China’s patent documents added into WIPO online database
China has 93,894 Software Copyright Registrations in the first eight months reached
Beijing High People's Court promulgated the Guide to Patent Infringement Determination
China, U.S., Europe, Japan and South Korea reach a consensus on joint PPH pilot
Guidelines (draft) for Criteria of Patent Infringement and Patent Counterfeiting for comments from the public
Unitalen LLP won in the second instance of administrative proceedings for "Lotte" trademark
Unitalen’s partner-Zhao Lei was invited to attend the comments meeting on Trademark Law Implementing Regulations (Draft)
 
 
 
China’s patent documents added into WIPO online database

 
Recently, the World Intellectual Property Organization (WIPO) announced that it has added about 3 million copies of patent documents provided by China into their online search database- PATENTSCOPE, as a result more than 32 million copies of patent documents in the database can be retrieved.

According to reports, in the future, the database will provide users with directory information in English of Chinese patents and applications in 1985-1995 and directory information in Chinese and English ,of Chinese patents and applications after 1996.

WIPO Director General Francis Gurry said that it was another big step forward to include China’s patent documents into PATENTSCOPE, and these documents would provide users with a fresh and important perspective to understand what is related to China’s patent application.

 
 
China has 93,894 Software Copyright Registrations in the first eight months reached

 
According to China State Administration of Radio, Press and Publication, in the first eight months of this year China has completed 93,894 Software Copyright Registrations, with a year-on-year increase of 12.88%.

It is reported that, the State Copyright Bureau recently released the Analysis Report of 2012 China Software Copyright Registration Situation compiled by China Copyright Protection Center. The Report shows that 139,228 China's Software Copyrights were registered in 2012, with a year-on-year increase of 27.33 percent, which is a new record. The Report analyzes the situation of China's software copyright owners for registration: in 2012 the number of owners for registrations reached 44,510, with a year-on-year increase of 23.99%.Among them, the business is the main body of software registration, with 35,454 corporate legal persons, accounting for 79.65% of total copyright owners. In the ranking of copyright owners’ registrations in 2012, universities and research institutes occupy 16 seats of the top 20, and 61 seats of the top 100.

 
 
Beijing High People's Court promulgated the Guide to Patent Infringement Determination

 
Recently, Beijing High People's Court formulated and issued the Guide to Patent Infringement Determination, which has 133 clauses with more than 15,800 words, with comprehensive and operational requirements for determining the scope of patent protection, infringement and patent infringement defense.

The Guide has improved the following content: first, it gives detailed provisions on the determination of equivalent features, for the first time defining the "three basics" of equivalent features, which are, the content and ways of judgment of basically same method, function and effect, and correcting the previous simple and broad way of judgment of equivalent features; second, it gives comprehensive and complete regulations for finding infringement of functional features, which, in line with the principle of judicial interpretations, clearly defines the concept of functional features, excludes certain situations that may not be identified as functional features, and solves the problem of different administrative and judicial criteria for functional features at present; third, it gives type specifications for timing of claim construction, which clarifies the discretion of a judge in constructing claims in different situations, to safeguard the legitimate rights and interests of patentees; fourth, addressing the issue that there's no unified determination criteria for design infringement and they're subjective and uncertain, it clarifies the connotation of "overall observation and comprehensive determination", and in particular requires the judge to appeal the level of knowledge and cognitive ability of "common consumer" and where necessary, he shall ask the parties to produce evidence, to ensure the objectivity of criteria; fifth, it clearly regulates each specific violation, and differentiates some typical infringements in current judicial practice by type, which standardizes different approaches in the judicial determination; sixth, it includes "indirect infringement" into the category of "contributory infringement" of civil law system, clarifying the meaning of the two concepts and standardizing different identification and approaches in judicial practice; seventh, it gives comprehensive provisions for infringement defense according to different types, and more detailed specifications for means of defense commonly adopted in practice, such as the right of prior use defense, defense of prior art, which effectively prevents the abuse of litigation by patentees and thus safeguards the legitimate rights and interests of the parties.

 
 
China, U.S., Europe, Japan and South Korea reach a consensus on joint PPH pilot

 
Representatives of the five offices,China, U.S., Europe, Japan and South Korea (IP5) met recently in Geneva, Switzerland, reaching a consensus on launching IP5 Patent Prosecution Highway (PPH) pilot from January 2014.

Deputy Secretary of Chinese State Intellectual Property Office-He Hua said: "PPH pilot of IP5 is significant for further improving the timeliness and quality of patent examination of the IP offices, which is vital for continued development of cooperation between the five offices. Meanwhile, as useful fruit from cooperation between the five offices, it also provides more options and convenience for users who file patent application to the five offices.”

It is reported that, the joint PPH pilot of the five offices will work faster in processing patent applications among them with the work results through Patent Cooperation Treaty (PCT) and through the state/region, while the existing PPH agreement between them will be integrated with the pilot with more extensive coverage.

 
 
Guidelines (draft) for Criteria of Patent Infringement and Patent Counterfeiting for comments from the public

 
On September 27, it is learnt from the State Intellectual Property Office that, the "Guidelines (draft) for Determination Criteria for Patent Infringement and Patent Counterfeiting" (hereinafter referred to as "Guidelines (Draft)") drafted by the Office, solicits comments from the public from that day on.

As for determination of the scope of patent protection for invention and utility model, it is proposed regarding product claims and method claims that, based on different objects of protection, the claims are divided into two types, one is product claims, the other is method claims.

According to reports, the first section of Guideline (Draft) is for patent infringement decision of invention and utility model; the second section is for that of design; in which the basic concepts, determination of right, construction of claims, finding of infringement and other related issues concerning the scope of protection are elaborated. The third section is for determination of patent counterfeiting, in which the criteria, definition, elements of patent counterfeiting, acts of patent counterfeiting and patent infringement are elaborated.

It is reported that the Guidelines (draft) is divided into 3 sections, 9 chapters of 112 pages and a total of 106,000 words. The public may submit relevant comments and suggestions by e-mail or fax to State Intellectual Property Office before October 26.

 
 
Unitalen LLP won in the second instance of administrative proceedings for "Lotte" trademark

 
Recently, Unitalen Attorneys at Law was entrusted with the opposed trademark administrative proceedings between the appellee- Lotte Aluminum Foil Co., Ltd. (hereinafter referred to as Lotte Aluminum Foil), the Trademark Review and Adjudication Board of State Administration for Industry and Commerce(hereinafter referred to as Trademark Appeal Board) and Liang Zhaodong, with final judgment in favor of Lotte Foil by Beijing High People's Court.

Lotte Group is a world famous Japanese-South Korean joint venture, which started from food manufacturing, with successful and robust development in Japan and South Korea, engaged in the field of food, distribution, tourism, petrochemical, construction, finance and so on. Lotte Group has dozens of companies in more than 70 countries worldwide, providing goods and services for consumers.

The appellee in this case-Lotte Foil, is a subsidiary of South Korea's Lotte Group. The third party of original trial of this case-Liang Zhaodong, registered No. 3659965 "Lotte" Chinese trademark (hereinafter referred to as the opposed trademark) in Class 11 of "lights; refrigerator". Lotte Mechanic filed trademark opposition and review of it, but the Appellant in this case-the Trademark Appeal Board considered that the reason for opposition review was untenable and decided that the opposed trademark was approved for registration. Lotte Foil, merging with Lotte Mechanic, was dissatisfied with the opposition review decision, and filed administrative proceedings to Beijing First Intermediate People's Court.

On November 19, 2012, Beijing First Intermediate People’s Court gave judgment for first instance, holding that before application of the opposed trademark, "乐天" and "LOTTE" trademarks had achieved certain popularity and influence on Chinese related public and were widely known after long-time, sustained, widespread and considerable publicity and use on "candies and chewing gum", which constituted well-known trademarks. According to provisions of Article 13 of the Trademark Law, the opposed trademark shall not be approved for registration, so it decided to rescind the decision of opposition review by the Trademark Appeal Board, who shall make a new ruling. The Trademark Appeal Board didn’t agree and filed an appeal.

Beijing High People's Court, after the second trial, held that: According to provisions of Article 14 of the Trademark Law, the evidence submitted by Lotte Foil in trademark review proceedings can prove that, before application date of the opposed trademark, "乐天" and "LOTTE" trademarks had achieved certain popularity and influence on Chinese related public and are widely known after long-time, sustained, widespread and considerable publicity and use on "candies and chewing gum", which in fact constituted well-known trademarks. Meanwhile, the two trademarks of "乐天" and "LOTTE" are used on xylitol gum products simultaneously, establishing a fixed correspondence through abundant of use and publicity. The court of second instance held that the fact findings by the first instance are correct and its judgment is maintained.

So far, after trials at two levels of People's Court, the decision of Trademark Appeal Board was ultimately revoked. The first and second instance courts held that, the affiliate of Lotte Foil registered in prior and widely used "乐天" and "LOTTE" trademarks are well-known trademarks in Class 30 on "candies and chewing gum", and obtained cross-class protection, so the Trademark Appeal Board’s approval for registration of opposed trademark should be revoked. The case is satisfactory in result. Jing Can and Huang Ying from Unitalen Attorneys at Law attended the lawsuit as attorney for Lotte Foil in the first and second instances.

 
 
Unitalen’s partner-Zhao Lei was invited to attend the comments meeting on Trademark Law Implementing Regulations (Draft)

 
In September 11, Unitalen's partner-Zhao Lei was invited to attend the comments meeting for attorneys on the Trademark Law Implementing Regulations (Draft) by Trademark Office. Attendees include leadership of Trademark Office and Trademark Review Board of State Administration for Industry & Commerce and representatives from a dozen of well-known trademark firms.

On August 30, 2013, the fourth session of the 12th NPC Standing Committee approved by vote the decision of NPC to revise the PRC Trademark Law. To smoothly implement the new Trademark Law of 2014, the Trademark Office of State Administration for Industry and Commerce, together with Trademark Review Board, jointly formulated the PRC Trademark Law Implementing Regulations (Draft) and solicited comments from the public.

As a well-known large agency of intellectual property, Unitalen was one of the representatives invited to the meeting. Zhao Lei has more than ten years of solid professional skills and practical experience in trademark. He attended the meeting as representative of Unitalen and had discussion with other participants on relevant topics.