NEWS
Update on the Chinese Foreign Filing License Requirement: Was Your Invention Developed in China?
Understanding China’s Foreign Filing License Requirement
When an invention is developed in China, Chinese Patent Law requires applicants to obtain a foreign filing license before filing outside China.
Even if an applicant intends to first file outside China, a foreign filing license may still be required. Specifically, if the invention or utility model was developed in China, the applicant must first request a confidential examination from the China National Intellectual Property Administration (CNIPA). Afterward, the applicant must obtain a foreign filing license.
Challenges in Determining the Invention’s Development Location
Applicants have struggled, however, with the question on how to determine where an invention was developed. For instance, an invention could have been devised by more than one inventor. It’s possible that not all the inventors are located in the same country. It’s possible it could have been developed partially in China and partially in another country. It is becoming common for inventions to be formulated remotely by inventors located in different countries. In such instances, where the invention was first created is becoming increasingly difficult to answer.
CNIPA Criteria for Determining Development in China
A recent decision of the CNIPA, on May 9, 2022, shed some light on the matter. With this decision the CNIPA provided two criteria to determine whether an invention is developed in China.
Both the address of the patentee and the nationality of the inventors would be considered. The address of the patentee is relevant because, where there is evidence that the patentee’s Chinese location has resources and capacity for research and development, and if there is no evidence of such resources outside of China, it is likely that the invention was developed in China.
Role of Inventor Nationality and Residency
Similarly, the CNIPA held that inventor nationality may also be relevant. Where inventors are Chinese citizens with no permanent residence outside China, the invention is more likely to have been developed in China.
However, contrary evidence may be provided. For example, inventors may show they spent significant time outside China conducting research and development.
Open Questions and Future Considerations
Nevertheless, questions remain about how these factors should be weighted. For instance, a patentee may have R&D resources both in China and abroad. Likewise, inventors may have different nationalities or residencies. In addition, at least one inventor may have contributed while outside China.
Even so, this recent decision is a positive step forward. It provides insight into which factors the CNIPA will likely consider when determining whether an invention was developed in China.
For more news articles on Chinese Intellectual Property concerns: Good News – Chinese Trademark Office Starting to Enforce Against Squatters
Lucia Minnucci, LL.M
Lucia Minnucci is a Law Clerk at Fish IP™. Lucia received her first degree in law from the University of Bologna, in Bologna, Italy. After obtaining her law degree, Lucia received an LL.M degree from the University of Pennsylvania Carey Law School, with a concentration in Intellectual Property and Technology Law.
St. Patrick’s Day video
We’ve put together a fun video about St. Patrick’s Day. It explains who St. Patrick was, how his birthday came to be a celebration of Irish culture, and some related patents.
Ignorance Of The Law May Be An Excuse In Copyright Registration
Supreme Court Decision in Unicolors v H&M
On February 24th, 2022, the Supreme Court has published a decision, Unicolors v H&M. Overall, the decision makes challenging the validity of a copyright registration much harder.
Copyright Registration and Infringement Lawsuits
Under the US Copyright Act, registration of a copyright is necessary to bring infringement suits. Therefore, alleged infringers often try to prove that the copyright registration is invalid. And on those grounds, the owner cannot bring the suit.
H&M’s Challenge to the Unicolors Registration
That strategy was used by H&M when Unicolors sued for infringement of several clothing patterns, and won at trial. H&M appealed, asserting that Unicolors’ registration was invalid due to an error in the application of the law.
The Key Legal Question Before the Court
The key question in Unicolors concerned mistakes in copyright registrations. Specifically, the Court asked whether both factual and legal mistakes can be excused.
Mistakes of Fact vs. Mistakes of Law
A factual error might involve the description of the work. Similarly, a legal error might involve the correct method of publication. Under the Copyright Act, a registration remains valid if the copyright holder lacked knowledge of the mistake. Importantly, the Act does not distinguish between mistakes of fact and mistakes of law. Also, the principle that “ignorance of the law is no excuse” generally applies only in criminal cases.
Therefore, the Court held that both types of errors are excused without actual knowledge.
Also, the principle that “ignorance of the law is no excuse” generally applies only in criminal cases.
Therefore, the Court held that both types of errors are excused without actual knowledge.
Impact of the Supreme Court’s Ruling
Overall, the decision imposes a higher burden on alleged infringers. Nevertheless, copyright associations and rightsholders welcomed the ruling. For example, the Copyright Alliance praised the decision in its commentary.
It titled the article “Supreme Court (Finally) Renders a Copyright Decision That’s Not for the Birds.”
Important Warning for Copyright Holders
However, copyright holders should still exercise caution. For instance, consciously closing one’s eyes to an error is known as willful blindness. Importantly, willful blindness will not save a registration from invalidation.
Courts may interpret willful blindness as knowledge of the error. If so, the registration could still be invalidated.
Other articles on Copyrights: Non-Fungible Tokens and Copyrights
Deferred Subject Matter Eligibility Program
The USPTO is implementing a pilot program called the Deferred Subject Matter Eligibility response.
The point of the program is to defer the whole question of subject matter eligibility until a later stage of patent prosecution.
Deferring subject matter eligibility allows examiners to first see if the invention clears the 112, 102, and 103 hurdles. If it is struck down in one of those categories, then no time is wasted arguing over the more difficult question of the eligibility.
For more information, check out the USPTO page: https://www.uspto.gov/patents/initiatives/patent-application-initiatives/deferred-subject-matter-eligibility-response
Postscript: The program ended on July 30, 2022 and is no longer active. The results were not what was hoped for.
For related articles on Patent Eligibility: Supreme Court: less focus on patent matters post-Alice
European Unified Patents Update
Ratification of the Unified Patent Court Protocol
We posted an update in November 2021. All 13 countries have now ratified the Protocol on Provisional Application of the Unified Patent Court Agreement. The European Union is now in the process of putting the court together. It may be ready within the year.
Introduction of the Unitary Patent and Unified Patent Court
The proposals call for a Unitary Patent covering participating member states. A Unified Patent Court will have jurisdiction over the litigation aspects. There is also a provision to opt out of this.
Cost Considerations for European Patent Protection
There may be a cost savings only in the event you’re seeking a patent in four or more countries. If you were only seeking patent protection in one country, it would be cheaper to prosecute in that country alone.
But this could be a great option for those seeking protection across Europe when the details are all worked out.
Transition to Unified Patent Court Litigation
It should also be noted that Unified Patent challenges will eventually be heard only in the Unified Patent Court. However, there will be a temporary hybrid situation allowing litigation through national courts.
Learn More from the European Patent Office
More information is available through the European Patent Offices page.
Venner-Shipley, one of our UK associates has provided an in-depth analysis found here.
Related articles on the European Unitary Patent: Unitary Patent in Europe
Valentine’s Day Video
We’ve put together a little video about Valentine’s Day.
First, we give the historical background about who Saint Valentine was, and how he came to be celebrated. Then the transformation from a feast day to a commercial holiday for lovers. Finally, we give you some Valentines-related patents, and then wish a happy valentines to all of our inventors trying to make the world a better place. Happy Valentine’s Day!
Supreme Court: Less focus on patent matters post-Alice
Alice v CLS (2014) was a landmark case for patent eligibility. The decision held that Alice’s patents were invalid because the claims were drawn to an abstract idea. Implementing them on a computer wasn’t enough to transform the abstract idea into patentable subject matter.
The Supreme Court saw numerous patent related cases in the wake of Alice.
However since then, there has been much less focus on patent matters. 2014 saw 6 patent related matters appear, Alice being the first.
The subsequent years saw:
2015 3 cases
2016 2 cases
2017 0 cases
2018 3 cases
2019 3 cases
2020 1 case
2021 2 cases
You might enjoy Bob’s Patent Beast comic series on the Alice v CLS decision ramifications.
You can learn more about the Patent Beast Comics here.