CERC IP Workshop Managing Patents Toby Mak, PhD Tee & Howe Intellectual Property Attorneys 5-6 March

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1 CERC IP Workshop Managing Patents Hainan Haikou 5-6 March

2 CERC IP Workshop Managing Patents Toby Mak, PhD Tee & Howe Intellectual Property Attorneys 5-6 March

3 Major Differences Between CN and US Patent Laws CN Prior art base publications before the patent application date, and prior-use in anywhere of the world No grace period of disclosure except for non-prejudice disclosure No continuation or continuation-in-part US Prior art base publications before the patent application date, and prior-use in the US [Note 1] [ 1] 1-year grace period of self-disclosure 1 Continuation or continuation-in-part available Note 1: will change to prior-use in anywhere of the world when the AIA comes into force in : 2013

4 Major Differences Between CN and US Patent Laws CN Joint-ownership by default, each patentee can grant non-exclusive license without consent of other patentee(s), unless otherwise agreed Any one can apply for a compulsory license Utility model available in addition to invention patent and design patent US Joint-ownership by default, each patentee can only grant non-exclusive license with consent of other paten tee(s), unless otherwise agreed Compulsory license only granted to the US government No utility model (utility patent = invention patent)

5 Major Differences Between CN and US Patent Laws CN No patent term adjustment Two-track litigation infringement and invalidation are separated Company or inventor can be applicant First to file More non-patentable subject matters Invalidation at SIPO, appeal at court SIPO US Patent term adjustment available Infringement and invalidation are typically trialed together Only inventor can be applicant First to invent [Note 2] [ 2] Fewer non-patentable subject matters Invalidation at USPTO or court Note 2: will change to first to file when the AIA comes into force in : 2013

6 Major Differences between CN and US Patent Laws - In Practice - US is much more patentee/applicant friendly / 1-year grace period 1 Much broader scope of amendments Various mechanisms to fix a patent application continuatio n Patent term adjustment May face difficulties when prosecuting a US patent specification in China Solution involve Chinese patent attorney during drafting of patent specification

7 Major Differences between CN and US Patent Laws - In Practice - Utility model Quick grant Short protection term Limited to mechanical inventions Can apply in parallel with invention patent Not used by foreign entities

8 Major Differences between CN and US Patent Laws - In Practice - Joint ownership of patent NOT recommended in China Unless otherwise specified, all co-owners can practice and license the patent without each other s consent possible for partner to give license to competitor 伙 Enforcement requires consent from both parties Suggested solution form a JV and transfer the patent to the JV

9 Major Differences between CN and US Patent Laws - In Practice - Compulsory license - provisions similar to those in other countries Grounds to apply for compulsory license in China The invention is not practiced or practiced within China sufficiently within 3 years from grant without justification The enforcement of the patent is judged to be against anti-trust law Not granted in practice

10 Major Differences between CN and US Patent Laws - In Practice - Two-track litigation system in China Similar to that in Germany, infringement and invalidation are trialed separately Preliminary injunction not granted easily

11 Invention from joint development Ownership Agreement between parties prevails Otherwise, inventorship has to be first determined, and based on the identified determine the ownership who invents, who owns the rights Various terms in agreements

12 Invention from joint development Various terms than can be considered in agreements Patent rights transferred to one party with remuneration, subject to further conditions License License fee free? Lump sum? Based on sales? Rights to sub-license Exclusive

13 Handling of new IP IP New IP arises from development during cooperation, e.g. improvements on products IP Clauses prohibiting tech development in contract violates the Chinese Contract Law Should consider : Mechanisms for good recordkeeping, for indentifying inventors determination of ownership If ownership distribution cannot be decided at the start of the project, mechanisms for discussion of ownership and costs for establishing IP should be established IP 13

14 Handling of new IP, special points to be noted in China IP Inventions completed in China must obtain clearance before filing patent applications elsewhere. 14

15 Handling of new IP, special points to be noted in China IP If IP is completed by more than one entity, for example A and B, then unless otherwise specifie d A B A and B are co-owners of the invention A B If B declares giving up patent application rights and A eventually obtains the patent, B is entitled to practice the invention for free B A B If A or B disagrees to apply for patent, then the remaining party cannot apply for patent on its own A B 15

16 Handling of new IP, special points to be noted in China IP Unless otherwise specified, when selling the new IP, default first-right-of-refusal to: Inventor(s) Client of contracted research Co-owner of invention 16

17 Handling of new IP, special points to be noted in China IP Contracted research Unless otherwise specified, entity completing the invention owns the patent application right However, client of the contracted research is entitled to practice the invention for free 17

18 Licensing some special points about China For a patent license, Chinese Contract Law : requires licensor to provide necessary information, guidance and assistance to the licensee to practice the invention includes trade secret? unless otherwise specified, licensee is forbidden to sub-license without licensor s consent 18

19 Trade secrets characteristics Any information not available to the public Advantages No registration required Protection can last forever as long as secret is maintained Disadvantages Non-exclusive can be circumvented by independent development Need to take substantive measures to maintain the secret Once breached, the public is free to use Only can target and claim damages from the person who made the breach 19

20 Trade secrets in China Typical scenario an ex-employee joins a competing company, or even forms his own company using trade secrets from exemployer 20

21 To successfully sue for breach of trade secret by a person, need to prove: the information is indeed qualified as secret that person does not have the right to breach that person did know and breach the damages suffered by the petitioner independently verify the above 21

22 Background IP 3 rd party licensing IP Study scope of patent and activities to know whether 3 rd party licensing is required Once necessity is determined Has the license been obtained? Can the license be involved in the transfer? Is a sub-license required? 22

23 Note These materials are public information and have been prepared solely for educational purposes to contribute to the understanding of Chinese intellectual property law. These materials reflect only the personal views of the author and are not individualized legal advice. It is understood that each case is fact-specific, and that the appropriate solution in any case will vary. Please seek specific advise for each of your IP matters. The presentation of these materials does not establish any form of attorney-client relationship with the author or Tee & Howe. While every attempt was made to insure that these materials are accurate, errors or omissions may be contained therein, for which any liability is disclaimed. 23

24 Q&A Thank you for your participation. Any Questions? 24

25 About the Speaker Dr. Toby Mak is a registered Chinese Patent Attorney and has a PhD degree in Chemistry. Toby was born in Hong Kong and graduated from the Hong Kong University of Science and Technology. Toby worked at one of the largest law firm in Hong Kong for 8 years before joining Tee & Howe. Toby has over 10 years of experience in patents and designs. He has substantive experiences in handling both contentious and non-contentious matters, including prosecution, invalidation and enforcement. He has drafted numerous patent specifications and prosecuted relevant applications to grant in various countries including China, the USA, Europe, Japan, and so on. Languages: Chinese, English toby.mak@teehowe.com Tel:

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