China: Managing the IP Lifecycle 2018/2019
Exploring the issues facing IP owners in China as they seek to secure, protect and commercialise their rights.
In China, three factors are used to determine whether technical or business operation information constitutes a trade secret – secrecy, confidentiality and commercial value. Trade secret infringement cases usually focus on the first two elements – in particular, whether the trade secret is unknown to or difficult to be obtained by the relevant public and whether the rights holder has taken sufficient confidentiality measures to protect it.
Xia Zheng, Mengmeng Yu and Xue Li
The value of a patent is inextricably linked to the presence of both a patent attorney who is intimately familiar with the patent system and a technical solution with implementation prospects rooted in the complex workings of a technical expert. These two parties must maintain smooth communication to ensure that the innovative technology can be mined for optimal value.
Yinying Zhang, Qing Ge and Liqing Wan
China remains a research hub for domestic and foreign companies alike, with 1.3 million invention patent applications filed in 2016. However, the material changes in patent filing practice and procedures in China introduced by the 2008 revision of the patent laws have had a profound impact on filing strategies.
Anna Mae Koo and Flora Ho
The April 2017 amendments to the Guidelines for Patent Examination introduced major changes related to the examination of business methods, computer program-related claims, prosecution of chemical inventions, the invalidation procedure and file wrapper practice, among other things.
A useful IP asset, the utility model patent costs less to acquire and is quicker to obtain than an invention patent. In addition, utility models present a paradox: a patent, which is the more difficult to obtain, is easier to invalidate than a simple utility model, which can be granted based on a simple formality examination.
While recent patent lawsuits involving well-known Chinese and overseas enterprises have been noteworthy, computer program-related patents have always attracted significant attention due to their large volume, broad application scope, high value in disputes and far-reaching technical, commercial and social effects.
Lei Zhou and Nancy (Xiaowen) Song
The primary challenge for most brand owners in China is the prevalence of counterfeit goods on Chinese e-commerce sites. The most popular of these have efficient complaint filing systems and rights holders are advised to learn how to use these mechanisms effectively. However, certain smaller sites have limited IP protection procedures in place, so a different approach is needed.
Anna Mae Koo and Ann Xu
Original equipment manufacturing (OEM) is an important means of economic development for China, and disputes relating to trademark infringement in the OEM model have become a problem that cannot be ignored. In light of increased customs enforcement, a large number of OEM companies are concerned as to whether they will become involved in infringement disputes through the products that they manufacture.
Certain key trends are emerging in Chinese patent litigation thanks to changes in court practice and the litigation system. The average amount of damages claimed in Chinese patent litigation continues to rise, with damages worth hundreds of millions becoming increasingly common, while the number of standard-essential patent cases has also jumped.
Judges’ and attorneys’ use of precedents is traditionally limited to the cases personally decided by or known to them; as such, their lack of experience in certain areas may prevent them from fully understanding litigation trends. Taking a macro, big-data perspective may help in this regard.
Xiang Pu and Ming Zhong
The Supreme People’s Court ruling on YKK Corporation’s trademark opposition retrial petition ended a decade-long trademark dispute. The decision has again emphasised the principle of necessity of recognition of well-known trademarks, as well as the principle of applying consistent legal standards. This long-running suit also witnessed the development of China’s IP rights legislation and court judgments.
Gang Hu and Ling Zhao
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