Excessive use of online information collected on third parties’ websites amounts to unfair competition – rules the Shanghai IP Court in the Hantao v. Baidu case in China

Never has information on the internet been as interconnected as it is today. Thanks to the so-called web scraping technology, in which computer programs are used to extract information from different websites, online platforms are able to incorporate related information from different sources into a single webpage so that users can find and utilize desired information in a convenient way. However, the legality to use information collected by others deserves cautious examination, and unfair competition law is one of the aspects to be considered.

In September, the Shanghai Intellectual Property Court issued a second-instance judgment in Hantao v. Baidu case, laying out useful guidelines for assessing whether unauthorized use of information collected by others constitutes an act of unfair competition. Continue reading “Excessive use of online information collected on third parties’ websites amounts to unfair competition – rules the Shanghai IP Court in the Hantao v. Baidu case in China”

China’s first Internet Court

On 18 August, China has officially launched its first “Internet Court” in Hangzhou, which city is known as the Chinese e-commerce capital, and is home to Internet giants such as Alibaba and NetEase. The name “Internet Court” has a two-fold meaning: First, this court specializes in resolving Internet-related cases including disputes regarding contacts of online shopping, services and microfinance loans, Internet copyright disputes and domain name disputes etc. Second, all court proceedings in this court can be conducted via an Internet platform. Located in a normal court building in Hangzhou shared with another local court, the Internet Court is nevertheless ready to accept cases filed electronically from all over the country, to hold online mediations, to examine electronically submitted evidence, to hold oral hearings with litigants via video conference, to deliver judgements and to accept applications for enforcement orders, all via Internet. Continue reading “China’s first Internet Court”

No exhaustion doctrine for “method-of-use” patents – Iwncomm v. Sony decision in China

Earlier this year, the Beijing IP Court issued a landmark decision in the Iwncomm v. Sony case, which clarified a number of interesting issues relating to standard essential patents (SEP). The court ruled that Sony had infringed an SEP held by the Chinese company Iwncomm and granted, besides damages for past infringement, the first injunction based on an SEP in China. In the same decision, the court addressed another important question concerning the applicability of the exhaustion doctrine. Under the doctrine, once an authorized sale of a patented product or a product obtained by using a patented manufacturing method occurs, the patent holder’s exclusive rights to control the use and sale of that product are said to be “exhausted,” and the purchaser is free to use or resell that product without further restraint from the relevant product patent or method-of-manufacture patent. It was nevertheless unclear from the existing case law, whether the exhaustion doctrine shall also be applied to a method patent that protects a method of using an existing product(s) (method-of-use patent), until the Sony decision now answered this question clearly in negative. This decision may thus provide an important guidance for future cases. However, when compared with more balanced approaches in other jurisdictions, which I will briefly discuss in this post, this guidance does not appear unquestionable. Continue reading “No exhaustion doctrine for “method-of-use” patents – Iwncomm v. Sony decision in China”

Protective letters in the UPC

Protective letter

At least if the current plan holds, the Unified Patent Court will quite soon be up and running. Businesses express concerns on possible misuse of the UPC’s powerful measures for patent enforcement such as pan-European injunctions and Saisie, i.e., an order to compulsorily preserve evidence on alleged infringers’ premises. Along with these measures, however, the UPC will also provide tools aimed exactly at preventing the misuse of such orders. A so called “protective letter” will be one of the tools to that end. This tool may be unfamiliar to many readers from outside Germany, since it is mainly a German peculiarity and although available in several other European jurisdictions, such as Switzerland, the Netherlands and Belgium, it has limited practical importance there. Now, being introduced by the UPC agreement, the protective letter is expected to gain its influence throughout Europe. This post briefly introduces what a protective letter is, and discusses some special features of a UPC protective letter and some considerations for preparing protective letters. Continue reading “Protective letters in the UPC”

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

business-model-innovation

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”

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”

Chinese Patent Office proposed revisions to its Examination Guidelines

guidelines-for-patent-examination

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”

A recent case in China concerning the Patent Office’s burden to prove common knowledge in patent examination

common-knowledge

To determine whether an invention involves an inventive step, the Chinese Patent Office’s Guidelines for Patent Examination (the “Guidelines”) require the patent examiner, inter alia, to make a judgment, starting from the closest prior art and the technical problem actually solved by the invention, as to whether or not the claimed technical solution is obvious to a person skilled in the art in the light of relevant reference documents and common knowledge. As the Guidelines do not give a strict definition of “common knowledge” and, in practice, the examiner is not required to prove common knowledge when he/she first introduces it, what should be qualified as common knowledge in a particular case often becomes a subject of dispute.

Recently, the Beijing IP Court handed down a decision (No. 3495 [2015]) resolving such a dispute. In its decision, the Court reaffirmed the Patent Reexamination Board (PRB)’s burden to state reasons or provide corresponding evidence for proof, if the interested party has objections to the common knowledge introduced by it. The Court further clarified the relationship between the 3GPP (a telecommunications industry collaboration that organizes several important standards from GSM through UMTS and LTE to 5G) standards documents and common knowledge, considering the increasing frequency of these documents being cited as prior art in telecommunications area. Continue reading “A recent case in China concerning the Patent Office’s burden to prove common knowledge in patent examination”

Measures for preserving evidence – different requirements in UK/Germany/France/UPC and their implications

private-no-entry

In some patent infringement cases, relevant evidence lies in the control of the alleged infringer or a third party. It may be that the patent holder cannot get access to the evidence or that the evidence may be conveniently manipulated before it is disclosed. In these kind of situations, the patent holder can potentially rely on a court to order measures for preserving evidence, which may include compulsorily entering premises, inspecting the allegedly infringing goods or process, making detailed description or even physical seizure of relevant objects or documents. To achieve a surprise effect, the court order should usually be issued ex parte.

Continue reading “Measures for preserving evidence – different requirements in UK/Germany/France/UPC and their implications”