Publications / Attorney Publications

  • Thermostable Glucoamylase – Feasible Way to Define a New Protein Patent and Subsequently Obtained Scope of Protection

    2015-05-18

    This is the first case for successful enforcement of biological patent in China, which clarifies a feasible definition of new protein patent, i.e. defining homology, origin (species), and function simultaneously. Furthermore, this case provides directions to judgment of future invalidation and infringement cases of new protein patents.

  • REPETITIVE LITIGATION BASED ON THE PRINCIPLE OF DOUBLE JEOPARDY

    2015-04-29

    The patentee of this design, Zhiming LI, holds a design patent No. ZL03319125.5, titled “Toothbrush Handle”, which was granted and announced on September 17, 2003. On the same day of the announcement, the patentee authorized Guangdong Sugere Daily Chemicals Co., Ltd. (“Sugere Company” hereinafter, the legal representative of this company is Zhiming LI himself) to make and sell the patented product exclusively.

  • INSPIRATION ON USAGE OF EVIDENCE AND APPLICATION OF GRACE PERIOD FOR NON-PREJUDICIAL DISCLOSURES

    2015-04-22

    In patent invalidation or infringement procedures, to prove an uncertain publication date of a prior art or prior design, a plurality of evidences is generally required to form a complete and reliable chain of evidence. Evidence collection and organization usually rely on patent attorneys’ understanding of law and practical experiences. Within a novelty grace period, certain pre-filing disclosures will not cause lose of the novelty of the subsequent patent application. There are rigorous restrictions on such grace period disclosures. It is of vital importance to determine whether a disclosure of an invention-creation before filing can be regarded as a grace period disclosure.

  • Stand – The First Application Of An Earlier Design In Non-Infringement Defense

    2015-04-15

    Prior design defense is a very important non-infringement defense system in design patent infringement lawsuits, which allows the People’s Court to determine whether an infringement is established simply by determine whether the accused design constitutes similar to the prior design without evaluation of validity of the design patent.[1] This case shows that although a design patent application was submitted before the filing date of the involved patent and published thereafter the filling date (hereinafter referred to as the “earlier design”) does not constitute as prior design. It can be used, however, as the basis for a non-infringement defense by referring to the prior design defense rules, thereby substantially expanding the applicable scope of prior design defense.

  • Sticker for Tableware – Factors for Determine Products of The Same or Similar Categories in Design Patent Infringement

    2015-04-08

    In design patent infringement disputes, there is a certain number of copies or imitations across categories. Regarding the problem whether such copy and imitation constitutes infringement, there are different practices among courts. Usually, the question of whether the alleged infringing product and the product incorporating the patent concerned belong to products of identical or similar categories is the prerequisite to whether the alleged infringing product falls into the protection scope of the design patent concerned. Therefore, if the categories of products are neither identical nor similar, a conclusion of non-infringement can be obtained without comparison.

  • Determination of New Evidence and Allocation of Burden of Proof in Litigation over Infringement of Patent Process for Making Non-new Products

    2015-04-02

    New evidence should be determined according to Article 10 of Interpretation of the Supreme People’s Court on Several Issues Concerning Application of the Trial Supervision Procedure of the Civil Procedure Law of the People’s Republic of China. Regarding allocation of burden of proof in litigation over infringement of patent process for making non-new products, it may be determined according to the principle of fairness and that of honesty and good faith, taking into consideration such factors as the ability to provide evidence. If the patentee can prove that the product in question is the same as that made by the patent process, and that it has made reasonable effort to prove that the manufacturing process of the product in question falls within the scope of protection of the patent process, using this as a basis and considering the known facts and common experience, it can be presumed that it is very likely that the alleged infringer has used the same process, therefore imposing on the alleged infringer the burden of proof to show that its manufacturing process is different from the patent process.

  • Application of the Doctrine of Equivalents

    2015-04-01

    In determining whether a patent infringement is established based on the doctrine of equivalents (“DOE”), attention should be paid to which feature in a claim is compared against which feature of an accused infringing product. Only those features of a product that are not identical to their counterparts in the claim should be taken into consideration for the purpose of DOE. Determination under DOE is different from the determination on inventiveness during patent prosecution – the requirement of “three substantially, one ordinarily” should be met.

  • Socket (Ground-Fault Current Interrupters GFCI) – The Influence of Functional Features on the Overall Visual Appearance of a Design

    2015-04-01

    Functional features play important role in the determination of identity or similarity between two designs. When judging whether a design is similar to a prior design, functional features should be considered as “having no influence on the overall visual appearance of a design’s product,” so as to avoid the possible situation of “monopolizing a product’s function on the pretext of protecting a product’s design.”

  • FEASIBLE WAY TO DEFINE A NEW PROTEIN PATENT AND SUBSEQUENTLY OBTAINED SCOPE OF PROTECTION

    2015-03-25

    With reference to new protein inventions, applicants always define biological sequences by the combination of homology and function, so as to obtain a broader scope of protection. However, considering that the association between the primary structure and the function of a protein is highly unpredictable, thus defined protein claim is always considered as not supported by the description and not conforming to Article 26.4 of the Chinese Patent Law. Therefore, discussions in this filed focuses on a proper manner to define a new protein patent and subsequently obtained protection scope. This is the first case for successful enforcement of biological patent in China, which clarifies a feasible definition of new protein patent, i.e. defining homology, origin (species), and function simultaneously. Furthermore, this case provides directions to judgment of future invalidation and infringement cases of new protein patents.

  • Crystalline Monohydrate of Tiotropium Bromide – How to Judge Inventiveness of a Crystalline Compound

    2015-03-18

    This case clarifies that in the determination of inventiveness of a crystalline compound, the wording “structurally similar compounds” specifically refers to compounds having the same central part or basic ring, and has nothing to do with comparison between microcrystalline structures. The microcrystalline structure difference shall be considered only if it brings unexpected technical effect.