NEWS
Update on the Chinese Foreign Filing License Requirement: Was Your Invention Developed in China?
When an invention is developed in China, Chinese Patent Law requires an applicant to obtain a foreign filing license before filing a patent application outside of the country. Even where an applicant intends to first file the application outside of China, if the invention or utility model is developed in China, the applicant must first request a confidential examination from the China National Intellectual Property Administration (CNIPA) and obtain a foreign filing license.
Applicants have struggled, however, with the question on how to determine where an invention was developed. First of all, an invention could have been devised by more than one inventor, where not all the inventors are located in the same country; or it could have been developed partially in China and partially in another country. As it is becoming common for inventions to be formulated remotely by inventors located in different countries, the question of where the invention was first created is becoming increasingly difficult to answer.
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: the address of the patentee and the nationality of the inventors. 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.
Likewise, the CNIPA held that where the inventors are Chinese citizens with no permanent residence outside of China, it is more likely that the invention was developed in China. However, contrary evidence can be provided showing that the inventors spent a considerable amount of time, sufficient for research and development of the invention, outside of the country.
Questions remain as to how to weight these elements when, for example, a patentee has R&D resources and facilities both in China and outside of the country, or when the inventors are of different nationalities, have different residencies and at least one has contributed to the invention while outside of China. Nonetheless, this recent decision is a good step forward, providing insight on which elements the CNIPA is likely to give weight to and consider relevant to determine whether an invention has been developed in China.
Resources:
http://foundin.cn/en/bbs/board.php?bo_table=ip_trends_en&wr_id=35
http://www.lindapatent.com/en/info/insights_podcasts/2020/0226/1038.html
Lucia Minnucci, LLM
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 LLM 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
On February 24th, 2022, the Supreme Court has published a decision, Unicolors v H&M, that will make challenging the validity of a copyright registration much harder.
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 that therefore the owner cannot bring the suit. 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 ultimate question in Unicolors focused on whether, in a copyright registration, both an error of fact, such as in the description of the work, and an error of law, such as in the appropriate method of publication, can be excused. According to the Copyright Act, if copyright holders make a mistake in registering the copyright, the registration remains valid as long as they had no knowledge of the mistake. Since the principle that “ignorance of the law is no excuse” does not apply in civil cases, and the Act does not distinguish between a mistake of a fact and a mistake of law, SCOTUS held that both errors are excused if there is no actual knowledge.
While the decision ultimately imposes a higher burden on alleged infringers, it was positively welcomed by copyright associations and rightsholders (see Copyright Alliance, Supreme Court (Finally) Renders a Copyright Decision That’s Not for the Birds). Copyrights holders should be aware, however, that consciously closing one’s eyes (i.e. willful blindness) will not save them from invalidation, as it may be interpreted as having knowledge of the error.
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 check to see if the invention clears the other hurdles, of §§ 112, 102, and 103. 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
European Unified Patents Update
We posted an update on this back in November 2021, but 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 and it may be ready within the year.
The proposals include both a Unitary Patent covering participating member states, as well as a Unified Patent Court with jurisdiction over the litigation aspects. There is also a provision to opt out of this. In practice, there may be a cost savings only in the event the patent would be sought in four or more countries. So if, for example, you were only seeking patent protection in one country, it would be cheaper to prosecute in that country alone, rather than the unified patent.
But this could be a great option for those seeking protection across Europe when the details are all worked out.
It should also be noted that Unified Patent challenges will eventually be heard only in the Unified Patent Court, but there will be a temporary hybrid situation allowing litigation through national courts.
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.
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 and 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, but 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
https://en.wikipedia.org/wiki/List_of_United_States_Supreme_Court_patent_case_law