established since 1994 - managing ip
Post on 28-May-2022
2 Views
Preview:
TRANSCRIPT
Beijing︱Hong Kong︱Shanghai︱Shenzhen︱Osaka︱New York www.lungtin.com | Copyright © Lung Tin 2015
Established since 1994
www.lungtin.com | Copyright © Lung Tin 2015
Utility Models:
Chinese Practice
Life Sciences Patent:
Chinese Practice
Patentability
Patent Law, Article 25.1 For any of the following, no patent right shall be granted:
• scientific discoveries
• rules and methods for mental activities
• methods for the diagnosis or for the treatment of
diseases
• animal and plant varieties
• …
www.lungtin.com | Copyright © Lung Tin 2015
Patentability
Guidelines for Patent Examination
• natural substances
• medical-use of substances
Swiss-type use claim
• use of substance X in the manufacture of a medication
for the treatment of condition Y
www.lungtin.com | Copyright © Lung Tin 2015
Swiss-type Claim
www.lungtin.com | Copyright © Lung Tin 2015
Patent : CN99812498 (WO00/18419, EP1115417B)
Filing Date: September 24, 1999
Granted: May 19, 2004
Patentee: Cubist Pharmaceuticals Inc.
Title: Methods for Administration of Antibiotics
Claim 1: Use of a daptomycin for the manufacture of a medicament for
treating a bacterial infection in a human patient in need thereof without
skeletal muscle toxicity, wherein a dose for said treating is 3~75 mg/kg
of daptomycin, wherein said dose is repeatedly administered in a dosage
interval of once every 24 hours to once every 48 hours.
Supreme People’s Court Case (November 19, 2013)
Swiss-type Claim
www.lungtin.com | Copyright © Lung Tin 2015
whether the recited treating
bacterial infection without
skeletal muscle toxicity is a new
indication which differs from
the prior art
whether the recited dose and
administration intervals are
limiting
Prior art:
Use of a daptomycin for
treating a bacterial
infection in a human
patient is known
Issues
Swiss-type Claim
Whether the recited treating bacterial infection without
skeletal muscle toxicity is a new indication which differs from
the prior art
• bacterial infection: no further limitation with respect to
any bacterial type or infection level
• without skeletal muscle toxicity: a post-administration
result, which does not affect the use of a medication
www.lungtin.com | Copyright © Lung Tin 2015
No
Swiss-type Claim
whether the recited dose and administration interval are
limiting
• specifications on administration (such as dose and
interval) have no impact on manufacture, and thus are not
limiting
• the information on medicament labeling, insert, and
packaging does not constitute as a part of manufacture
• the invention relies on the medicament dose and
interval, which does not change any anti-bacterial
mechanism, anti-bacterial spectrum, and anti-bacterial
activity, and thus, the invention does not change the
known use of daptomycin
www.lungtin.com | Copyright © Lung Tin 2015
No
Post-Filling Data
Sufficiency
• no
• prior art or common knowledge
Support
• no
Inventiveness
• conditional
www.lungtin.com | Copyright © Lung Tin 2015
Inventiveness
www.lungtin.com | Copyright © Lung Tin 2015
Patent : 96111063
Filing Date: 1996-06-19
Patentee: Takeda Chemical Industries Ltd.
Title: Pharmaceutical composition for use in treatment of
diabetes
Claim 1: A pharmaceutical composition for preventing or treating
diabetes, diabetic syndrome, sugar metabolic disorder or lipid disorders
of the metabolism disorder, comprising pioglitazone or a
pharmacologically acceptable salt thereof as an insulin sensitivity
enhancer, and a sulfonylurea as an insulin secretion enhancer
Supreme People’s Court Case (September 17, 2012)
Inventiveness
www.lungtin.com | Copyright © Lung Tin 2015
whether the submitted data can
be used to determine
inventiveness
etcArguments:
submitted data
(pioglitazone +
glimepride) to show
unexpected synergism
Issues
Prior art:
troglitazone and use of
insulin sensitivity and
secretion enhancers
Inventiveness
whether the submitted data can be used to determine
inventiveness
• the specification only discloses pioglitazone + voglibose
but fails to discuss the other combos and comparison
among them
• the submitted technical effect has not sufficiently
disclosed in the specification, and thus cannot be used
www.lungtin.com | Copyright © Lung Tin 2015
no
Sufficient Disclosure
www.lungtin.com | Copyright © Lung Tin 2015
Patent : CN96195564.3
Filing Date: July 8, 1996
Patentee: Warner-Lambert Co
Title: Crystalline [R-(R+,R+)]-2-(4-fluorophenyl)-beta,
delta-dihydroxy-5-(5-methylethyl)-3-phenyl-4-
(phenylamino) carbonyl]-1H-pyrole-1-heptanoic acid
hemi-calcium salt (atorvastatin)
Claim 1: Containing 1-8 mole water I-type crystalline atorvastatin
hydrate, characterized in that with the following grinding 2 minutes
measured according to the 2 the, d-surface distance and greater than 20%
of the relative intensity of the X-ray powder diffraction patterns, using
CuKα-ray measuring: […… peaks]
Supreme People’s Court Case (April 16, 2015)
Sufficient Disclosure
www.lungtin.com | Copyright © Lung Tin 2015
whether the to-be-solved
technical problem shall be
considered in view of the
sufficiency requirement
what disclosure is needed for a
chemical invention
Specification:
Two examples on type-I
crystalline form, without
characterization of
water contents
Issues
Sufficient Disclosure
whether the to-be-solved technical problem shall be
considered in view of the sufficiency requirement
• the sufficiency requirement shall consider technical
problem-solution-effect, but first shall consider the
reproducibility
• claims define the invention by (i) composition—type I
atorvastatin hydrate containing 1-8 mole water, (ii)
structure—crystalline with XPRD and 13NMR peaks
www.lungtin.com | Copyright © Lung Tin 2015
Sufficient Disclosure
what disclosure is needed for a chemical invention
• identification, preparation, use/effect
• identification: chemical/physical property parameters
relating to the technical problem to be solved
• preparation: at least one preparation method disclosing
raw materials, procedures, conditions
• one skilled in the art would not (i) identify containing 1-8 mole
water type I atorvastatin having the same XPRD; and (ii) assure
hydrate (tirhydrate) form actually has been prepared. Thus,
characterization of the water content is a must for the claimed
invention.
www.lungtin.com | Copyright © Lung Tin 2015
www.lungtin.com | Copyright © Lung Tin 2015
Utility Models:
Chinese PracticeSoftware/Business Methods:
Chinese Practice
www.lungtin.com | Copyright © Lung Tin 2015
Related regulations
Law and Regulations
Chinese Patent Law (effective 2009), Article 25
For any of the following, no right shall be granted,
(2) Rules and methods for mental activities.
Article 2
Invention means any new technical a product, a
process or improvement thereof.
www.lungtin.com | Copyright © Lung Tin 2015
Law and Regulations
Chinese examination Guidelines, Part Ⅱ chapter 1 4.2
Computer program shall not be granted
Part Ⅱ chapter 9
Some provisions on examination of invention application
Relating to computer programs
www.lungtin.com | Copyright © Lung Tin 2015
Examples
Software
Example 1 and 2
1 A method to solve the radio of the circumference of a circle
to its diameter using computer programs.
2 A general translation method for global language characters
Mental activities as provided for in article 25.1(2) are not the
subject matter of patent protection
www.lungtin.com | Copyright © Lung Tin 2015
Examples
Software
Example 3 and 4
3 A method for controlling a die forming process of rubber
4 A method of removing image noise
The solution of Example 3 or 4 solves a technical problem,
obtains a technical effect, and thus is patentable.
www.lungtin.com | Copyright © Lung Tin 2015
Software patent claim drafting
Software
A software patent claim can be drafted as a process claim
or product claim.
The step of a process claim shall be drafted according to
each step in the said computer program flow.
The apparatus claim shall be drafted with some
components and each component in the claim completely
corresponds to each step in the said computer program
flow or each step in the said process claim.
www.lungtin.com | Copyright © Lung Tin 2015
Software patent claim drafting
Software
Example 5
A process claim
step A
step B
An apparatus claim
a controller for step A
an inputting means for step B
www.lungtin.com | Copyright © Lung Tin 2015
Software patent claim drafting
Software
Example 6
A process claim
step A
step B
An apparatus claim
a controller for step A
an inputting means for step B
Another apparatus claim
a display device,
a receiver,
and a CPU executes the follow step,
step A and step B.
www.lungtin.com | Copyright © Lung Tin 2015
Data structure patent
Software
Example 7
Data structure claim can be drafted like following
A transmission data frame,
data head,
data information,
data end.
But applicant can draft a process claim to describe the data
structure, which will be accepted by SIPO.
A method for transmitting the data,
step to transmit the data head,
step to transmit the data information,
step to transmit the data end.
www.lungtin.com | Copyright © Lung Tin 2015
Business method patent in China
Business Methods
SIPO tended to use unpatentable subject matter or mental
activities to refuse the business method patent.
But now the examiners are encouraged to determine the
patentability of business methods by inventiveness.
www.lungtin.com | Copyright © Lung Tin 2015
Utility Models:
Chinese Practice
Utility Models:
Chinese Practice
www.lungtin.com | Copyright © Lung Tin 2015
Applications Filed Patents granted
Number Percentage Number Percentage
Invention
Total 928,177 100.0% 233,228 100.0%
Chinese Applicants 801,135 86.3% 162,680 69.8%
Foreign Applicants 127,042 13.7% 70,548 30.1%
Utility
Model
Total 868,511 100.0% 707,883 100.0%
Chinese Applicants 861,053 99.1% 699,971 98.9%
Foreign Applicants 7,458 0.9% 7,912 1.1%
Design
Total 564,555 100% 361,576 100%
Chinese Applicants 548,428 97.1% 346,751 95.9%
Foreign Applicants 16,127 2.9% 14,825 4.1%
Applications Filed with SIPO in 2014
(Data from SIPO)
Chinese Applications
www.lungtin.com | Copyright © Lung Tin 2015
Applications Filed with SIPO in 2014
0.0%
20.0%
40.0%
60.0%
80.0%
100.0%86.3%
99.1% 97.1%
13.7%
0.9% 2.9%
Chinese Applicants
Foreign Applicants
Invention Utility Model Design
Chinese Applications
www.lungtin.com | Copyright © Lung Tin 2015
Statistics-UM
203802
344472408110
571175692845 707883
310771
409836
585467
740290
892362 868511
2009 2010 2011 2012 2013 2014
Granted Filed
www.lungtin.com | Copyright © Lung Tin 2015
Statistics-UM
16892214
3024
4425
6637
7912
19102598
4164
5853
7136
7458
2009 2010 2011 2012 2013 2014
Granted (foreign) Filed (foreign)
www.lungtin.com | Copyright © Lung Tin 2015
Statistics-UM
Utility Models: in force by the end of 2014 (2,291,326)
Corporation81%
Individual19%
Domestic99%
Foreign1%
Utility Models
Chinese Patent Law (effective 2009), Article 2
"utility model" indicates any new technical solution
relating to the shape, the structure, or their
combination, of a product, which is fit for practical
use.
www.lungtin.com | Copyright © Lung Tin 2015
Filing
Indispensable documents for getting the filing date
and determining the protection scope of invention
and utility model
www.lungtin.com | Copyright © Lung Tin 2015
Request
Abstract
Description
Claims
Invention Utility Model
Request
Abstract
Description
Claims
Drawing(s)
Filing
www.lungtin.com | Copyright © Lung Tin 2015
► It is necessary to acquire the patent right as soon as possible
► The life span of the product is relatively short
► Inventive step of the product innovation is lower
► Defensive rights for peripheral technologies are required
► It is for cost-effectiveness concern
► Patent licensing and patent transfer are considered
► Later invalidation based on lack of inventiveness is difficult
► … …
Patentability
Product
• reproducible
• may recite methods/processes, materials/compositions
Improvement relating to shapes and/or structures
• shapes
• structures: mechanical structures, electrical circuits, layers
of materials
Technical solution to solve a technical problem
www.lungtin.com | Copyright © Lung Tin 2015
Patentability
www.lungtin.com | Copyright © Lung Tin 2015
Patent : CN202068578U
Filing
Date:
2010-06-21
Granted: 2011-12-07
Title: Wireless transmitting/receiving
unit, network entity and base
station
Intel Digital utility models
Patentability
www.lungtin.com | Copyright © Lung Tin 2015
Claim 1: A wireless transmitting/receiving unit, characterized in that the wireless
transmitting/receiving unit comprises:
Receiver; A transmitter; Coupled to the receiver and the transmitter and with the
receiver and the transmitter communication with the processor; The receiver and
the processor is configured to, on the basis of the feature information to detect the
wireless transmitting/receiving unit has entered its closed user group identification
on the wireless transmitting/receiving unit in the white list of the home node-B or
family evolved node-B the vicinity of the small area and is configured to receive a
measurement configuration message; and Said transmitter and the processor is
configured to provide the network entity transmits the wireless
transmitting/receiving unit has entered the home node-B or family evolved node-B
instructions in the vicinity of the small area and is configured to perform the
measurement. .
Intel Digital utility models
Patentability
Inventiveness
• Guideline: has [prominent] substantive features and
represents [notable] progress
• Teachings in the art: an explicit description to motivate
one skilled person in the art to look for technical means in
the same or similar technical field
• Teachings in the art: one or two prior art reference may
be cited to assess the inventiveness
www.lungtin.com | Copyright © Lung Tin 2015
Invalidation-Research
Database used:database for proceeding opinions (SIPO)
Analyzed targets:748 (2009) for utility models and 251
(2009) for inventions
www.lungtin.com | Copyright © Lung Tin 2015
Invalidation-Research
www.lungtin.com | Copyright © Lung Tin 2015
All claims
invalid
Some claims
invalid
Valid after
amendments
All claims
valid
Inventions 103(41%) 45(18%) 4(2%) 99(39%)
Utility Models 343(46%) 89(12%) 41(5%) 275(37%)
all invalid46%
some invalid
12%
valid after amend'
5%
all valid37%
all invalid41%
some valid
18%
valid after
amend'2%
all valid39%
Invalidation-Research
www.lungtin.com | Copyright © Lung Tin 2015
Inventions Utility Models
Claims
valid
Claims
invalid
Invalid
%
Claims
valid
Claims
invalid
Invalid
%
Novelty +
Inventiveness
99 121 55 311 418 56.6
Sufficiency 50 4 7.4 80 7 8
Support 42 10 19.2 57 6 9.5
Clarity 54 9 14.3 86 17 16.5
Essential
Elements
24 4 14.3 54 4 6.9
New Matter 21 17 44.7 0 0 0
Invalidation-Research
www.lungtin.com | Copyright © Lung Tin 2015
Inventions Utility Models
Subject Matter Product or process or
improvement thereof
Improvements relating to
shapes and structures
Term 20 years 10 years
Time (filing to
granting)
Ave. 25.8 months Ave. 5.8 months
Cost high low
Examination Substantive examination Formality and preliminary
examination
Inventiveness high low
Enforcement No pre-request Some request evaluation
report
Invalidation-Research
www.lungtin.com | Copyright © Lung Tin 2015
All claims
invalid
Some claims
invalid
All claims
valid
Others
Inventions 33(47.1%) 10(14.3%) 15(21.4%) 12(17.1%)
Utility Models 38(45.8%) 9.6(12%) 21(25.3%) 16(19.3%)
(2012) Beijing High People’s Court Decisions originated
from PRB decisions
391 cases (80 reexamination and 311 invalidation)
See China Patents & Trademarks (2014) No. 1, pp38-45
www.lungtin.com | Copyright © Lung Tin 2015
Examination
Order No. 67
(effective from October 15, 2013)
Preliminary examination of utility model/design application
In the preliminary examination, the examiner may examine whether the
patent application for a utility model/design is obviously lack of novelty
according to the information of prior art or conflicting applications he
obtained.
The examiner may determine whether the application is obviously lack of
novelty based on the reference documents the examiner retrieves by search or
the information the examiner obtains in other ways.
Beijing︱Hong Kong︱Shanghai︱Shenzhen︱Osaka︱New York www.lungtin.com | Copyright © Lung Tin 2015
Thank You!
18th Floor, Tower B, Grand Place, No.5 Huizhong
Road, Chaoyang District, Beijing 100101, China
Tel: +(86)-10-8489 1188; Fax: +(86)-10-8489 1189
LTBJ@lungtin.com
Reliability, Proficiency, Teamwork & InnovationLUNG TIN, Accomplished IP Firm
top related