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Manage your Intellectual Property in Mainland China, HongKong, Macao and Taiwan


» Our product is an industrial machine which has a unique design and appearance. Is applying for a design patent the best option to ensure our IP protection?


Applying for an external design patent is a good method to protect the external appearance aspect of your industrial machine. However, you should also consider protecting the internal working parts of the machine by filing an application for either an invention patent or a utility model.
» In addition we think that we can register a particular part of our machine as a utility model or an invention patent. Our part combines two systems which have both been independently invented and are individually patent protected. To our knowledge, we are the first to combine the two systems. Can we therefore claim and protect this as our own IP?


Invention patents and utility models offer additional ways to protect the parts of the machinery that have a practical use. Both patents are required to be novel, inventive, and be used practically. In the patent application the prior technology (prior art) must be identified through reference documents. It must be shown how the product is distinct from the prior art. As patent applications already exist for these two machines, they were publicly disclosed in the Patent Gazettes, this may destroy the novelty of any such invention patent application during the substantive examination phase. During the substantive examination of novelty the examiner will compare the technical solution in a claim of the patent application with the contents disclosed in a reference document of prior technology. If the claims and the prior technology are substantially the same, and they are in the same technical field then they will be an identical invention. The invention patent application will then lose the requirement of novelty and a patent cannot be granted.

If the two machines are applied for as a new single patent, this combination may allow the patent application to successfully pass substantive examination. Regarding novelty, if the technical problem that is to be solved by the combination of the machines, as well as the technical fields and the solutions are different, then there is no reason why these two machines cannot be patented together. The examiner will compare the claims in both, as well as use the description and the drawings to interpret these claims. Emphasis must be placed on drafting claims where the scope of protection is different. i.e. what is actually protected in the claims when they are drafted. In these circumstances, even if the description is the same, the inventions will not be regarded as identical. Regarding the inventive step, the examiner will consider whether the claimed invention is obvious to someone who has knowledge of all the related technology before the patent application was filed. The second stage in the assessment for the inventive step concerns the assessment of the progress of the invention. It must be shown that the two machines when put together produce a better technical effect, such as quality improvement, and that it is a different inventive concept or it is a new trend of technical development. From the brief description it sounds as if the combination of the two machines may produce a better technical effect.

One other aspect to consider is that utility models are easier to obtain than patent rights as they only go through an initial preliminary examination. However, even if the utility model is granted it will be difficult to defend against invalidation if prior art exists that destroys the novelty of the patent. The claims of a utility model must be drafted carefully to ensure they emphasize the novelty, inventiveness and practical applicability of the product.


» We are a European utility product company with main factories in three countries within the EU. We also have a representative office in the south of China. We found that two competing Chinese companies were copying one of our latest products, for which we have held a China Design Patent since 2004. We began legal proceedings against the infringers, using Chinese legal representation. Our advisor is pessimistic about our chances of attaining a successful outcome so we’re concerned that ultimately, we’ll spend lot of time and money for little or no reward. Is it worth continuing with these cases?


It is suggested that another opinion be sought from an experienced patent litigation lawyer. The value of the patent to the intellectual property portfolio of the company should also be considered. If the second‐opinion advises against litigation, then the party should consider SIPO‐assisted mediation or court‐assisted mediation. Mediation may resolve the dispute in a more effective and efficient manner. Any such mediation agreements signed and sealed by both parties involved in the patent infringement dispute will be legally enforceable.


» Are there any other options which we may explore?


Another option may be to use litigation as a negotiation strategy to enter into a cooperative partnership with the competing Chinese companies. It is recommended that the manufacturing ability and/or the extent of the distribution network of the competing Chinese companies be considered before any cooperative partnership agreements are concluded. Other considerations must also be taken into account by business units of the company.


» In addition to this, one of the infringing parties has a patent of the product they copied from us in China. Our patent came into force in 2004 and the copy company patent was issued in 2006. The SIPO advised us to proceed through legal channels. Our legal representative, however, is demanding legal fees which significantly exceed our budget. What are our options?


Applying for patent invalidation with the Patent Review and Adjudication Board (PRAB) in Beijing is an economical way to invalidate their patent. The PRAB is the government agency responsible for hearing patent invalidation cases.

There are options other than paying the high legal fees for the patent invalidation demanded by the lawyer. A patent agency may be directly appointed to attend and manage the patent invalidation process. If a patent agency is appointed then a power of attorney must be signed with the patent agency detailing the scope of the power of attorney. The patent agency must be a certified domestic Chinese patent agency. Certified domestic Chinese patent agencies can be found on the official SIPO website (http://www.sipo.gov.cn).


» How could a duplicate patent have occurred?

Duplicate patents may occur for utility models and external design patents as they are only preliminarily examined. The preliminary examination will only examine the forms and whether substantive defects exist in the application. The actual content for which patent protection is sought will not be thoroughly examined. Where duplicate patents have been issued only one patent right may be granted, and the patent application that was first filed will be granted patent rights, while the other patent will be invalidated.


» Is there another, more economical method we can implement which will invalidate their patent?

SIPO‐assisted mediation or court‐assisted mediation may be considered instead of going to court. Applications for mediation can be filed with the SIPO or the court which has jurisdiction over the case. In China the parties are also encouraged to reach mediation agreements in patent infringement disputes and the parties may themselves reach mediation agreements.