• China IP News

1. Annual Report on China’s Combating of IPR Infringement and Counterfeiting (2022) Released

Office of the National Leading Group on Coordinated Implementation of Building a Quality-powered Nation released the Annual Report on China’s Combating of IPR Infringement and Counterfeiting (2022). According to the report, in 2022, public security organs cracked 27,000 criminal cases of infringing IP rights and manufacturing and selling counterfeit goods; procuratorial organs prosecuted 27,000 suspects of crimes of infringing intellectual property rights and manufacturing and selling counterfeit goods; trial organs concluded 2,194,000 cases of various types on IP rights in the first instance; national courts concluded nearly 9,000 cases on IP rights in the first instance involving foreign parties and concluded more than 5,000 criminal cases on IP rights in the first instance.

https://www.court.gov.cn/zixun/xiangqing/398272.html

2. SPC Releases Annual Report on IP Cases 2022

The Supreme People’s Court released the Annual Report on IP Cases of the Supreme People’s Court (2022). The annual report has sorted out 43 application-of-law issues from the IP cases concluded by SPC in 2022, involving the following typical issues: the rules on use of extrinsic evidence in claim interpretation; the retroactivity of decisions upholding claims after amendment; single comparison in the prior art defense; the legality of facts underlying the prior art defense; the determination of the legal source defense for “three noes” products; the determination of the duty of reasonable care in the legal source defense; the identification of inventorship; calculation of damages based on the business performance alleged by an infringer; the liability of punitive damages for the sale of the same infringing product after the infringement settlement; leading the parties to make promises of future benefit compensation when the stability of patent rights is in doubt; and the determination of “filing a lawsuit within a reasonable period of time” in a non-infringement lawsuit, etc.

https://www.court.gov.cn/zixun/xiangqing/397462.html

3. SPC Releases Top 10 IP Cases and 50 Typical IP Cases of 2022

On April 20, the Supreme People’s Court released the top 10 IP cases and also 50 typical IP cases handled by China’s courts in the year of 2022. The top 10 IP cases include Chugai Pharmaceutical vs. Wenzhou Haihe Pharmaceutical, which is the first patent-linkage dispute case in China; the 50 typical IP cases include the administrative dispute over patent invalidation between Apple and Qualcomm.

https://ipc.court.gov.cn/zh-cn/news/view-2319.html

4. China’s First Quantum Computing Patent Pool Established

Recently, Baidu, in conjunction with the Beijing Academy of Quantum Information Sciences, announced the establishment of the “Quantum Computing Patent Pool”. Currently, the patent pool has gathered dozens of quantum patents and is open to and shared by members of the Quantum Computing Industry Intellectual Property Alliance and will create a cooperation bridge for alliance members to promote the formulation of industrial criteria for the quantum industry and the layout of standards-essential patents.

http://www.iprchn.com/cipnews/news_content.aspx?newsId=137707

5. Baidu AI Innovation and Patent White Paper 2023 Released

Recently, a forum themed on “AI Patent Utilization to Boost Industrial Development” jointly held by Baidu and Beijing Intellectual Property Protection Association released the “Baidu AI Innovation and Patent White Paper 2023”, demonstrating Baidu’s leading position in AI patenting on AI large model, cloud intelligence integration, autonomous driving and intelligent search.

http://www.iprchn.com/cipnews/news_content.aspx?newsId=138061

6. 2023 Beijing Trademark Brand and Old Brand Trademark Protection Forum Opens

2023 Beijing Trademark Brand and Old Brand Trademark Protection Forum, sponsored by Beijing Municipal Intellectual Property Office and organized by Beijing Trademark Association, opened on May 10. The forum aims to build a trademark brand development exchange platform, further deepen the work of trademark brand construction, strengthen trademark brand management and services, help enterprises, especially old brands, to enhance their awareness of independent brand protection, gather consensus on trademark brand development, create a good atmosphere for brand protection, and help build a strong city of intellectual property rights in the capital.

https://www.cnipa.gov.cn/art/2023/5/16/art_57_185083.html

•  Takeaway Tips for IP Practice in China

Identifying Inventorship

In April, 2023, the Supreme People’s Court (SPC) released the Annual Report on IP Cases of the Supreme People’s Court (2022), which has sorted out 43 application-of-law issues from the IP cases concluded by SPC in 2022. Of the 43 issues, issue 7 is concerning the identification of inventorship.[1]  

1. Case Overview

The retrial applicant, LiangHua Mo, joined Focaltech Systems (Shenzhen) Co., Ltd. on September 4, 2006 and left Focaltech on March 6, 2015. Focaltech has long been engaged in the research and development of fingerprint identification and touch display technologies. On February 9, 2015 before his resignation from Focaltech, Mo already established Shenzhen MoShi Technology Co., Ltd., with business scope including information system software, electronic products, etc., and Mo is the legal representative and chairman of the board of directors of the company. Within one year from Mo’s resignation from Focaltech, MoShi applied for and was granted utility model patent No. 201520989568.0 entitled “Touch Display Device and Electronic Device”, with YiFeng Jia and Tao Xia named as inventors.

Focaltech filed a lawsuit on a dispute over the ownership of the utility model patent, claiming that Mo was the actual inventor of the patent in dispute, and that the patent in dispute pertained to a service invention, the application and patent rights of which should belong to Focaltech.

2. Key Issue

One of the key issues in this case is to identify whether Mo is the actual inventor of the patent in dispute.

3. Court Opinions

In this case, SPC ascertained the following facts:

1. i) The patent in dispute related to Mo’s own duty or tasks entrusted to Mo by Focaltech. During working at Focaltech, Mo was engaged in due jobs and R&D projects that were related to the patent in dispute, and had signed the Confidentiality and Non-competition Agreement, while the technical field in which he was engaged at MoShi was far away from the patent in dispute.
2. ii) YiFeng Jia and Tao Xia did not have the R&D ability to make the invention-creation contained in the patent in dispute, but they had an interest-related relationship with Mo; therefore they were not the actual inventors of the patent in dispute.

SPC held that for a patent in dispute filed by an employee within one year from his resignation in the name of other persons, the employee shall be identified as the actual inventor and the patent shall be determined as a patent for a service invention-creation if the patent in dispute closely relates to the employee’s own duty or tasks entrusted to him by the entity to which he previously belonged, and the other persons have an interest-related relationship with the employee while they do not have the R&D ability to make the invention-creation contained in the patent in dispute.

4. Summary

Under the China’s patent law[2], the “service invention-creation” includes any invention-creation made within one year from an employee’s retirement, resignation, or from termination of his employment or personnel relationship with the entity to which he previously belonged, where the invention-creative relates to his own duty or the other task entrusted to him by the entity to which he previously belonged. In practice, however, such service invention-creation may be applied for a patent in the name of other persons for the purpose of appropriation of the ownership of the service invention-creation. This case establishes a benchmark for how to determine a service invention-creation through the identification of the actual inventor in the above situation.    

Please feel free to contact us if you have any question.

[1] (2021) SPC MinShen No. 7941

[2] Rule 12 of the Implementing Regulations of the Patent Law