Patents
A patent protects a technical invention against imitation. The protection period of a patent lasts 20 years beginning with the filing date if it is renewed on a regular basis. Patent protection can be achieved via national patents ("patents for invention", "patents for utility model" and "patents for design") or an international application.
The national patent results from a national patent application, i.e. filed with the State Intellectual Property Office of the P.R.C. It offers patent protection solely in the respective country, i.e. China.
A European patent results from a single European patent application. After granted, the European patent application separates into national patents so that with a single application procedure a national patent protection can be achieved in several countries of the European Union.
The European patent with unitary protection also results from a single European patent application, but offers unitarily protection in the participating member states. In contrast to a classical European patent it is not possible to choose single countries.
The International patent application (PCT) does not lead to a patent, but is a preliminary procedure. At a later stage the International patent application can be nationalized/regionalized into national/regional patent applications.
A patent offers its owner the sole right to utilization of the patented invention, so that he has the right to prohibit third parties the use of the invention. The advantage of the patent is that the owner of the invention can utilize the invention himself, grant licenses to third parties, can sell the patent, or can refrain from any utilization (blocking-off patent). The prohibition of use for third parties extends to the production, the offering, bringing onto the market/selling, the use, the possession, and import of tUtility models
A Utility Model is a protection right similar to an invention. A Utility Model protects technical inventions against imitation with the exception of methods. The main differences between inventions and utility models relate to the term and the registration procedure. The term of the utility model is at most 10 years, instead of the 20 years which is the usual case for an invention. In the registration procedure for a utility model, only a simple formal examination with subsequent registration is necessary, instead of a substantive examination of the requirements for legal validity or an official examination regarding novelty and inventive step. The Applicant thus obtains protection faster than with an invention application.
In connection with the registration of Utility Models our services include, for example:
• advice prior to filing
• carrying out of prior art searches
• drafting and filing of Utility Model Applications
• The preparation, filing, support and management of the grant procedures for utility modelDesign protection
A design is the two- or three-dimensional form of appearance of an entire product or of a specific part (design protection). Designs which meet the requirements of novelty and individual character when the application is filed are eligible for protection. Design protection commences upon the design being registered.
Design protection is not only of use for artistic designs. It can also be recommended whenever design aspects play a role in the appearance of a product alongside technical aspects. The possibilities offered by design protection are therefore much more extensive than is frequently assumed. It is in parallel with invention or utility model protection that design protection can be a factor that makes a particular contribution to success, especially because it is often easier and more cost-effective to enforce than technical property rights, i.e. inventions and utility models.
We have experience in design protection – both in relation to purely artistic designs and in relation to designs in the context of technical products. Especially in the last mentioned area in particular, there is a great deal of potential for the use of design protection, which has to this day not been deployed as fully as it could have been. We are happy to assist you in highlighting and enabling optimum use of the possibilities which this property right offers your business.
Our services in connection with designs include for example:
• advice prior to filing
• elaboration of filing strategies
• prosecution
Trade marks
Your trade mark. Your first impression.
A successful product includes a successful name that is connected to the product or the manufacturer – the trade mark. The trade mark accompanies firms in most cases for decades. It is therefore important that a trade mark is protected in the most important markets against misuse and imitation. A trademark is a sign which is capable of distinguishing goods and services of one company from those of another business. Words, letters, numbers, slogans, pictures, sounds, three-dimensional forms and other presentational aspects can be protected as signs of this nature if they meet certain requirements. After a precise review of what is known as absolute grounds for refusal, the trademark is registered. The term of protection initially lasts for 10 years from the date of registration on, but can be extended as desired.
The national, i.e. Chinese, Trade Mark Office offers unitary protection in the respective country. The request is to be filed with the national office, i.e. with the Trade mark Office of the State Administration for Industry and Commerce of the P.R.C. The European Union Trade Mark offers unitary protection within the entire European Union. It is not possible to select single countries. The application can be filed with the EUIPO.
The International Trade Mark according to the Madrid Agreement (MMA) and the Protocol to the Madrid Agreement (PMMA) offers the opportunity to request trade mark protection for a single or multiple contracting states of the respective agreement.
Establishing a successful trademark involves more than just making an application at the trademark office. A comprehensive strategy is necessary, and it must begin even before the correct trademark is selected – irrespective of whether it is a word mark, a figurative mark or any other type of sign. We work hand in hand with desigInfringement of property right
Whether for inventions, utility models, designs or trademarks, filing corresponding applications for property rights is only a part of the picture. In the event of a property right being infringed, effective enforcement is the key.
Patent infringement or trademark infringement - Many infringements of property rights are not identified until very late. We help you avoid making this mistake by assisting you in an effective monitoring of the market and the competition. Examples for possible ways of doing this are making regular visits to relevant trade fairs, carrying out systematic monitoring of publications or undertaking research into competitors’ patents and patent applications.
If a potential infringement of a property right is identified, a precise analysis of the infringing act and an assessment of the prospects of success of a potential court action enforcing the right are necessary. This requires the infringing act to be investigated. Sometimes it is the case however, that even acquiring a competitor’s potentially infringing product is difficult, because for example the product is still in a prototype phase. Particularly in cases of patents for manufacturing methods, there often is the additional problem that the actual infringement of the property right is not itself accessible, but rather the products obtained by way of the manufacturing method merely suggest an infringement of the property right. In such cases, rights of inspection can be applied for in the courts so as to allow a possible infringement of property rights to be investigated in detail.
If enough information on the property right infringement is available, we start the analysis of prospects for success in a court action enforcing property rights. This analysis is useful irrespective of whether court proceedings on enforcing property rights are actually envisaged. The prospects of success alwEnforcing property rights
In most cases, when property rights are enforced in the Regional Court, the Higher Regional Court, the cases are conducted by lawyers who are for the most part supported by patent attorneys. This so-called ‘double representation’ by lawyers and patent attorneys is both usual and advisable especially in complex IP cases, as on the one hand legal procedural knowledge and, on the other, knowledge of substantive patent law and the relevant technology are all of crucial importance in running a successful property-rights infringement case. We have to this date assisted in a large number of court cases relating to the enforcement of property rights, and in doing so have got to know the working methods of many of our lawyer colleagues. Should it be necessary for any of your property rights to be enforced in court, we will place our experience at your disposal.
We can also assist you if there is a risk of you infringing a competitor’s property right. The submission of `protective letters` which are filed at court, should be considered in such cases. These can allow preliminary injunctions to be avoided.
While court proceedings are ongoing, we, as patent attorneys, support our lawyer colleagues with respect to technical understanding and to the analysis, both in writing and orally, of the material in question. Our experience shows that direct communication between a company’s employees with a technical background and lawyers often gives rise to misunderstandings. As engineers and scientists with legal training, we act as intermediaries and help avoid such misunderstandings.
Once property rights have been successfully enforced in court, the judgment obtained must be used as effectively as possible.
There may be tactical considerations which militate against unconditional or immediate execution of a judgment as for example if at the same a comReexamination & Invalidation
Any applicant who is not satisfied with the Office's decision of rejecting his application may, within three months from the date of receipt of the notification, request the Patent Reexamination Board to make a reexamination. Any entity or individual who considers that the grant of a patent right is not in conformity with the relevant provisions of the Patent Law may request the Patent Reexamination Board to declare the patent right invalid.
The flow chart of examination on requests for reexamination and invalidation is as follows:
- Reexamination Application
- Notes for the Party concerned (Reexamination)
As prescribed by Article 41 of the Chinese Patent Law, where an applicant for patent is not satisfied with the decision of the patent administration department under the State Council rejecting the application, the applicant may request the Patent Reexamination Board to make a reexamination.
The decision of rejection that a reexamination request may be filed includes the decision rejecting the application during the preliminary examination and substantive examination procedures. Where a petitioner does not file a reexamination request with respect to the decision of rejection made by the Patent Office, the reexamination request will not be accepted.Public Observations
Rule 48 of the Implementing Regulations of Chinese Patent Law provides that any person may, from the date of publication of an application for invention until the date announcing the grant of the patent right, submit observations to the State Intellectual Property Office (SIPO). Such third party submissions are referred to as “public observations”. Observations can be submitted by any person in its own name or anonymously (such as through a straw man).
Observations can be submitted for invention patents but not for utility model patents. Any ground of rejection of a patent application can form the basis of an observation. Such grounds can include lack of novelty, lack of inventive step, sufficiency of disclosure, lack of unity, lack of clarity, ineligible subject matter, double patenting, etc.
SIPO has an official form that allows a third party to submit arguments forming the basis of the observations. This form can be submitted electronically, if desired. If a third party wishes to submit documentary evidence (such as evidence of patents, published applications, non-patent literature, etc.) supporting the observations, then the observations and accompanying evidence should be scanned in and submitted electronically. If any evidence is in a language other than Chinese or English, it is recommended that a Chinese translation be provided. There is no official fee for filing observations.
It is recommended that a third party submit observations as early in prosecution as possible (such as prior to issuance of an Office Action) to allow the Examiner sufficient time to consider the observations. A claim chart comparing the features of the claims with the prior art can be submitted to facilitate the Examiner’s understanding of the arguments submitted in the observations.
According to SIPO’s Guidelines for Patent Examination,
