Decree of the State Council of the People's Republic of China

(No.769)

The Decision of the State Council on Amending the Implementing Regulations of the Patent Law of the People's Republic of China is hereby issued and shall come into force on January 20, 2024.

    Premier: LI Qiang

    December 11, 2023

Annex: Decision of the State Council on Amending the Implementing Regulations of the Patent Law of the People's Republic of China

(Source: website of the government of China)

Annex: Unitalen Newsletter Special Issue: China Unveils Decision of the State Council on Amending the Implementing Regulations of the Patent Law of the People's Republic of China (with key amendments attached)

The Guidelines for Patent Examination is formulated in accordance with the Implementing Regulations of the Patent Law of the People's Republic of China. The amended Guidelines for Patent Examination is unveiled now and shall be put into force on January 20, 2024. The Guidelines for Patent Examination issued on January 21, 2010 and the relevant orders and announcements made thereafter shall be annulled on the same day.

Commissioner: SHEN Changyu

December 21, 2023

Annex: Guidelines for Patent Examination 2023

(Source: website of the CNIPA)

The Provisions on the Registration and Management of Collective Marks and Certification Marks, as deliberated and adopted at the executive meeting of the China National Intellectual Property Administration, are hereby issued and shall come into force on February 1, 2024.

Commissioner: SHEN Changyu

December 29, 2023

Annex: Provisions on the Registration and Management of Collective Marks and Certification Marks

(Source: website of the CNIPA)

For the purpose of ensuring the smooth implementation of the amended Patent Law and the Implementing Regulations thereof, and clearly defining the specific applicable rules for the examination-related articles before and after the amended Implementing Regulations of the Patent Law comes into effect, the China National Intellectual Property Administration (CNIPA) has formulated the Transitional Measures for Handling Relevant Examination before and after the Implementation of the Amended Patent Law and the Implementing Regulations of the Patent Law, which is hereby issued, and shall come into force on January 20, 2024.

Notice is hereby given.

CNIPA

December 21, 2023

Annex: Transitional Measures for Handling Relevant Examination before and after the Implementation of the Amended Patent Law and the Implementing Regulations of the Patent Law

(Source: website of the CNIPA)

The China National Intellectual Property Administration (CNIPA) and the Danish Patent and Trademark Office (DKPTO) have jointly decided to extend their Patent Prosecution Highway (PPH) pilot program for another five years from January 1, 2024 to December 31, 2028. The established guideline of CNIPA-DKPTO PPH request remains controlling the pertinent requirements and procedures governing applicants' PPH requests at the two offices.

The extension of the CNIPA-DKPTO PPH pilot program will further advance the two countries' communication and cooperation in IP, serve both Chinese and Danish innovators by accelerating the patent examination process and continuously deepen the two offices' cooperation in patent examination.

(Source: website of the CNIPA)

The China National Intellectual Property Administration (CNIPA) and the National Institute of Industrial Property of Chile (INAPI) have jointly decided to extend their Patent Prosecution Highway (PPH) pilot program for another five years from January 1, 2024 to December 31, 2028. The established guideline of CNIPA-INAPI PPH request remains controlling the pertinent requirements and procedures governing applicants' PPH requests at the two offices.

The extension of the CNIPA-INAPI PPH pilot program will further advance the two countries' communication and cooperation in IP, serve both Chinese and Chilean innovators by accelerating the patent examination process and continuously deepen the two offices' cooperation in patent examination.

(Source: website of the CNIPA)

Case Brief

Shenzhen Zudian Intelligent Technology Co., Ltd. (hereinafter referred to as Zudian) is the owner of the patent for utility model No. 201720131230.0, entitled "A Dynamic Password USB Wire Rod". Zudian considered that Shenzhen Simsukian Electronic Technology Co., Ltd. (hereinafter referred to as Simsukian) and several others had committed infringement acts and filed a lawsuit with the Shenzhen Intermediate People's Court of Guangdong Province. Simsukian and several others argued that since Zudian applied for the patent for utility model involved in the case and the related patent for utility model, which relate to substantially the same technical solution, on the same day, and the related patent had been declared invalid, the patent involved should be invalid as well based on the same reason, and argued that the claim of Zudian shall be rejected accordingly. The court of first instance found that the technical solutions of the two patents were substantially the same, and that the patent involved may apparently or very likely be invalidated, and therefore rejected Zudian's claim. Zudian appealed from the judgment. During the procedure of the second instance, Simsukian filed a request for invalidation of the patent involved. The Supreme People's Court held in the second instance that the case may be properly disposed at judicial discretion in the case where the stability of the patent involved is doubtful or disputed and there are multiple alternative handling methods in the subsequent trial procedure. Both parties, after seeking clarification of the case, voluntarily made a commitment to compensate for the future interest in view of the stability of the patent right. Based on the basic facts of the case, the evidence in the case and the commitment of both parties, the Supreme People's Court disposed the case in accordance with the principle "determine to dismiss the appeal and then allow for a separate appeal", and ruled to revoke the judgment of the first instance and dismissed the appeal.

Typical Significance

In this case, the People's Court tried for the first time to guide the parties to voluntarily make a commitment to compensate for future interest in view of the uncertainty of the outcome of the administrative confirmation procedure of the patent involved, which had already been started. For a case involving the judgment and determination of patent infringement, if the stability of the patent right in question is doubtful or disputed, the People's Court may, for fairness and good faith, encourage and guide the parties to voluntarily make a commitment or declaration to compensate for the relevant future interest, which not only effectively expedites the trial process, but also appropriately balances the substantive benefits of the parties.

(Source of the case: website of the Supreme People's Court of the People's Republic of China)

Case Brief

Sichuan Golden-elephant Sincerity Chemical Co., Ltd. (hereinafter referred to as Golden-elephant) and Beijing EDGEIN Technology CO., Ltd. (hereinafter referred to as EDGEIN) are the right holders of the patent for invention No. 201110108644.9 entitled "System and process for melamine production by gas-phase quenching method of energy efficient and cost saving type", and Golden-elephant is also the right holder of the technical secrets relating to the melamine production by press gas-phase quenching method and the production system using the method. Golden-elephant and EDGEIN filed a lawsuit with the Guangzhou Intellectual Property Court against Shandong Hualu-Hengsheng Chemical Co., Ltd (hereinafter referred to as Hualu-Hengsheng) and the other three defendants for their acts infringing the patent right involved. Golden-elephant also filed a lawsuit against the above four defendants for their acts infringing technical secrets with the Chengdu Intermediate People's Court of Sichuan Province. The two courts found in the first instance that the four defendants had jointly committed the patent and technical secret infringement acts, and both ruled that the defendants shall cease the infringement, and partially supported the claims for damages. Both parties appealed from the judgments of the two cases. The Supreme People's Court held in the second instance that the accused infringers agreed on infringement, subjectively knew each other's infringement and implemented the corresponding infringement acts successively, which constituted a complete chain of infringing acts, and that they cooperated with each other objectively, which pertained to willful and joint infringement. The court decided that the defendants shall be jointly and severally liable for all the damage incurred by infringement. Consequently, the court changed the judgment to support all claims of the right holders, and ordered the infringers to destroy the infringing production system and the relevant technical secret carriers by means including but not limited to dismantling, and to jointly and severally compensate the right holders for the economic losses totaling 218 million yuan (including 120 million yuan for the patent infringement case, and 98 million yuan for the technical secret infringement case).

Typical significance

This is an IP infringement case with the highest amount of compensation that the People's Court has decided for the same engineering project up to now. The right holder Golden-elephant is a sino-foreign joint venture, the right holder EDGEIN is a high-tech private enterprise, and one of the infringers, Hualu-Hengsheng, is a state-owned listed enterprise. The rulings of the two cases not only demonstrated the court's resolute attitude to strengthen the IP judicial protection, but also fully reflected the equal treatment and protection for domestic and foreign-invested enterprises, state-owned and private enterprises and other types of enterprises. This case has reference significance for the handling of similar cases involving the determination of common intentional infringement and joint and several liability, the factors to be considered in the calculation of the amount of damages, the handling of the destruction of infringing carriers in the liability to cease infringement, and the like.

(Source of the case: website of the Supreme People's Court of the People's Republic of China)

The Intellectual Property Committee of the Shanghai Lawyers Association convened the year-end summary meeting of 2023 on December 20, 2023, at which the "Top Ten Cases" and "Outstanding Cases" for the four years from 2020 to 2023 were announced for commendation. Two cases represented by Unitalen Shanghai office were selected as "Top Ten Cases" and "Outstanding Cases" respectively.

The case selected as "Top Ten Cases" is the case concerning a dispute over copyright infringement of works of applied art between ALPA CAPAUL & WEBER AG and Guo X, Deng X, represented by Attorneys LI Bo and Chen Shaojuan.

The case selected as "Outstanding Cases" is the case concerning a dispute over trademark infringement of the time-honored brand "茂昌" and unfair competition between Shanghai Sanlian (Group) Co., Ltd., Maochang Optical Co., Ltd. of Shanghai Sanlian (Group) Co., Ltd., and a certain Optical Co., Ltd. in Xi'an, represent by Attorneys LI Bo and SU Rouwen.

Recently, Asia IP, an authoritative international IP media, released the list of "Top 100 IP Experts in China" in 2023, and five Unitalen partners, YU Zehui, LI Deshan, HUANG Ying, ZHAO Lei, and PAN Wei, were on the list with honor for their high-quality professional services and the universal recognition from the professionals and clients at home and abroad!

Recently, China Trademark Association released the list of persons qualified to be incorporated into the 2023 Trademark Talent Pool (the second batch), in which a total of 23 trademark attorneys of Unitalen have been successfully selected, including 3 special-class talents, 2 senior talents, 1 sub-senior talent, 5 first-class talents and 12 second-class talents. So far, a total of 56 trademark attorneys of Unitalen have been selected for the 2023 Trademark Talent Pool.

Recently, Changsha Intellectual Property Office released the list of the second batch of overseas IP right protection assistance experts of Changsha, in which four Unitalen experts, ZHAO Lei, ZHU Gangqin, XU Si and NI Ganzhong, were selected.