Revised Patent Examination Guidelines in China welcome more patents on business models

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Last October, the State Intellectual Property Office of China (SIPO) released draft revisions to its Guidelines for Patent Examination for public consultation (see my earlier post). This month, SIPO published the final text of the revised Guidelines, which will enter into force on 1 April 2017. In comparison to the draft, the final version remains substantially unchanged. This may be a sign of support from the stakeholders. In fact, the proposed revisions received a quite good press immediately after their release, even when it comes to the part of revisions regarding patents on business models, which have been and probably are still one of the most controversial aspects of the IP system in many other countries such as the U.S.

As the SIPO explicitly stated, the planned revisions are aimed to strengthen the IP protection for innovation in emerging fields such as Internet, e-commerce, big data and to improve the IP protection system for business models. This emphasis reflects the state of innovation in China, where indigenous businesses have been so far quite successful in developing innovative services and products in these emerging fields. While it can be debated whether an expansion of patent protection into the arena of business models would indeed do more good than harm to the innovation, the objective of the Chinese policymakers is clear: to promote business model innovation through more IP protection.

While it remains to be seen in long term whether the above policy objective can be achieved, it is for individual inventors and businesses more interesting what immediate changes in practice will come out of the planned revisions. So, let’s first take a look at the revision itself. Continue reading “Revised Patent Examination Guidelines in China welcome more patents on business models”

TVCatchup II – Retransmission by cable not “exempted” in the InfoSoc Directive

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Last November, I reported on the GS Media case (C-160/15), which certainly gave rise to some debate. It appears that the CJEU is quite actively handing down judgments in the area of copyright. This is perhaps not too surprising, since the member states still have quite different national legislations and the harmonization from the EU is by no means exhaustive. Additionally, and more importantly, especially national copyright laws lag behind the rapid technical development, which is why many questions of interpretation may arise in national courts.

Only a few days ago, on 1 March, the CJEU handed down its judgment (C-275/15) in the case TVCatchup II. The national law in the UK included a provision, which roughly provided that copyright is not infringed in the case of immediate retransmission by cable. The relevant question from the UK court was “whether Article 9 of Directive 2001/29, and specifically the concept of ‘access to cable of broadcasting services’, must be interpreted as covering and permitting national legislation which provides that copyright is not infringed in the case of the immediate retransmission by cable, including, where relevant, via the internet, in the area of initial broadcast, of works broadcast on television channels subject to public service obligations.”

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The scope of patent with an extended term became clearer with three concrete standards provided by the IP High Court in Japan

A patent term may be extended if there is a period during which a patented invention is unable to be worked until a marketing authorization has been granted (For further information, see here). However, there was, until recently, no case law in Japan on the interpretation of the scope of patent with an extended term, and high uncertainty as to patent infringement by generic drugs was a big issue in the pharmaceutical industry. On 20th January, 2017, the IP High Court’s judgment (grand panel) was handed down, answering this issue by establishing three concrete standards. This judgment attracts great attention of generic companies and will boost their marketing of generic drugs because these standards contributed to clear away the uncertainty of patent infringement.

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Recent developments on the admissibility of patent term extension in Japan

Drugs are not allowed to be marketed without a marketing authorization. Taking into account the investment on R&D for a new drug and the necessity to recoup such investment, the patent term may be extended by a period not exceeding 5 years if there is a period during which the patented invention cannot be worked. Later in this post, I will discuss the judgment of the Japanese Supreme Court in 2015, which caused the guidelines on patent term extension to be significantly amended.

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Does IEEE’s IP policy comply with competition law?

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There is a large body of legal and economic literature on standard-essential patents (SEPs) and competition law that focuses on the availability of injunctive relief and strategic behaviour of SEPs’ holders. There is much less literature on the role of standard-setting organisations (SSOs) and their IP policies (I dealt with this topic here).

The IP policies of SSOs became a hot topic in 2015, when the Institute of Electrical and Electronics Engineers (“IEEE”), one of the most relevant SSOs active in the information and communication technology (“ICT”) sector, modified its IP policy with an effort to better clarify the “reasonable and non-discriminatory” (“RAND”) commitments that SEPs’ owners are supposed to accept through the submission of a letter of assurance (“LOA”). Continue reading “Does IEEE’s IP policy comply with competition law?”

The Crispr Cas9 battle reaches oral arguments before the United States Patent Trial and Appeal Board (PTAB) and the stakes are favoring the Broad Institute

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Guest post by Lucia Tamayo Del Portillo*

In early 2012, a group of scientists from the University of California Berkeley (“UC”) led by Dr. Jennifer Doudna, in collaboration with the University of Vienna and fellow researcher Emmanuel Charpentier, filed the first patent application for a revolutionary gene-editing tool called Crispr Cas9.  The Crispr and its associated protein Cas9 is a natural existing response to immunological hazard that can be found in bacteria. By a combination of complex biochemical interactions, bacteria is able to identify foreign DNA, cleave to it, and then induce a break on the DNA strand, causing its instant deactivation. UC’s first patent application was broad and mainly tested in rather simple living organisms such as bacteria. Few months after this application, the Broad Institute (“Broad”) along with the MIT and the Harvard College, filed another patent application over the Crispr Cas9. Dr. Feng Zhang commanded the main research team behind this invention. This subsequent application was limited to the use of the Crispr Cas9 method in eukaryotic organisms for example, plants and animals. Continue reading “The Crispr Cas9 battle reaches oral arguments before the United States Patent Trial and Appeal Board (PTAB) and the stakes are favoring the Broad Institute”

China’s Patent Boom

This post was originally published on The IPKat on 10 January 2017.

World Intellectual Property Organization recently published its annual World Intellectual Property Indicators report. This report states that, amid rising worldwide demand for intellectual property rights, a new record was set. Namely, with around 1.1 million new patent applications in 2015, the State Intellectual Property Office of China (SIPO) became the first patent office to receive more than a million applications in a single year. This was almost as many applications as the next three offices in the ranking combined (the patent offices of the U.S., Japan and South Korea). Some people are astonished and also confused about China’s patent boom in recent years: What drives such a strong growth in patent applications? How good is the quality of the massive applications? What impacts does the boom have on patent protection in China? This article briefly discusses some aspects of these questions. Continue reading “China’s Patent Boom”

Is the product-by-process claim “dead” in Japan?

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After the Supreme Court in Japan handed down a very important judgment in 2015 on the scope of the Product-by-Process (“PBP”) claim, and its doubtful validity concerning the clarity requirement (Pravastatin sodium case, a drug lowering the cholesterol in blood), the authorities commented that the PBP claim is “dead” because almost all PBP claims would be fairly likely to be invalidated according to the Supreme Court’s strict judgment on its patentability. However, very recently, the IP High Court handed down a relevant judgment on this issue, wherein it basically followed the Supreme Court judgment but limited the application of the Supreme Court’s judgment to the “true” PBP claim.

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Chinese Patent Office proposed revisions to its Examination Guidelines

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On 27 October 2016, the State Intellectual Property Office of China (SIPO) released proposed revisions to its Guidelines for Patent Examination for public consultation. According to SIPO’s explanatory note, the proposed revisions are aimed to strengthen the IP protection for innovation in emerging fields such as Internet, e-commerce, big data etc., to improve the IP protection system for business models, to improve the post-grant patent documents amendment system and timely disclosure of procedural information on patent examination.

Mainly, the following revisions are proposed: Continue reading “Chinese Patent Office proposed revisions to its Examination Guidelines”

The strategies for patent litigation under the double track system in Japan

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In my previous posting (here), I described advantages and problems in the two systems, i.e., the double track system and the bifurcation system in patent litigation. In this posting, I, as a Japanese patent litigator, would like to introduce several practical strategies for patent litigations under the double track system in Japan in the form of Q&A.

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