The Chinese patent office grants three types of patents:

1. invention patents or 20-year patents, which are similar to utility patents in the US and cover new technical solutions that relate to a product, a process or an improvement thereof;
2. design patents;
3. utility models or 10-year patents. The utility models are granted for ‘new technical solutions that relate to a product’s shape or structure, or a combination of the two, and are also fit for practical use’ and do not undergo a substantive examination and are granted rather quickly, typically within a year from the filing date. Evidently, utility models or 10-year patents are a cheaper and quicker way of obtaining patent protection.

Chint originally paid CNY 500 (about USD 70) in 1997 in filing fees for the utility model application at the State Intellectual Property Office (SIPO) of China. The utility model was granted in a little over 15 months without undergoing any substantive examination.

In 2007, the Wenzhou Intermediate People’s Court ordered Schneider to pay over CNY 330 million (about USD 45 million) and to stop the manufacture and sale of five of its products that allegedly infringe Chint’s utility model.

Schneider Electric tried to get the Chinese Patent Re-examination Board to invalidate the utility model by providing evidence to prove that the technology covered in Chint’s utility model was not novel and hence not legally enforceable. The Board disagreed and the Beijing Higher People’s Court upheld the validity of Chint’s utility model in March 2009.

The settlement is noteworthy in China but should not be taken that the courts will rule only pro- Chinese, as a number of non-Chinese companies have been successful in defending their intellectual property rights within the country. For example, Philips Electron Corp., Ltd., was able to invalidate utility models granted to a Chinese patentee, Yang Weijiang, relating to its shaver technology. In 2007, Yamaha Corporation of Japan was awarded over USD one million for trademark infringement by three Chinese companies: Zhejiang Huatian Industrial Co. Ltd., Taizhou Jiaji Motorcycle Distribution Co. Ltd. and Taizhou Huatian Motorcycle Distribution Co. Ltd.

Currently, more than 99% of utility models are filed by Chinese domestic companies indicating a general lack of use by companies in other countries. This decision means that companies should take utility models seriously and should track utility models filed by their competitors, include these in their prior art studies and licensing analysis, and consider leveraging this form of intellectual property (IP) protection for their own Chinese patent portfolio.

The above is from the article, “Patently Speaking: Failure to Heed IP in China Can be Costly,” and is used by permission.  The article is authored by Ram Deshpande, Assistant Vice President with the Intellectual Property division of Evalueserve China, and Dr. Alok Aggarwal, the Co-founder and Chairman of Evalueserve.

Evalueserve provides knowledge services to a global client base of Fortune 5000 companies, including Investment, Commercial and Retail Banks; Insurance Companies; Private Equity Firms; Corporates; Consulting and Research Firms; Law Firms and Intellectual Property Firms. Evalueserve’s expertise covers areas such as Financial and Investment Research, Business Research, Market Research, Intellectual Property, Data Analytics and Knowledge Technology Services.  The sole owner of copyright is Evalueserve and use of the protected material is by permission only.

Related posts:

1. U.S. Chamber Releases IP Protection & Enforcement Manual The U.S. Chamber of Commerce’s Global Intellectual Property Center (GIPC)...
2. Chinese Patent Law Amendment Approved On December 27, 2008, the Standing Committee of People’s National...
3. US Chamber Urges IP Reform The U.S. Chamber of Commerce’s Global Intellectual Property Center (GIPC)...

Related posts brought to you by Yet Another Related Posts Plugin.

HBTLJ is a scholarly journal published by students at the University of Houston Law Center.   The Journal is a medium for academic discussion and practical application insight in business, commerce, taxation, and intellectual property. The Journal is currently ranked #10 in the Washington & Lee Tax Journal rankings.

If you are interested in submitting a peice, please forward articles for consideration to submissions@hbtlj.org. Any questions may be directed to Andrew Doud, submissions editor, at atdoud@central.uh.edu.

Related posts:

1. Have Lunch With Judge Rader at the Computer and High Technology Law Journal’s Symposium What:  Santa Clara Computer and High Technology Law Journal’s 25th...
2. Second IP Business Congress (And a Discount) From 21st to 23rd June 2009, the 2nd IP Business...
3. Intellectual Property Defense: How to Protect Your Business Against Patent Trolls For both startups and well-established businesses, intellectual property is a...

Related posts brought to you by Yet Another Related Posts Plugin.

Since 2005, Japan has allowed new medicinal use claims of a known pharmaceutical ingredient to be a patentable subject matter. However, this will be the first time novelty is conferred on optimization of  known medicines. Talks are also underway for methods for medical treatment claims (claims pertaining to surgery and other therapeutic treatment of the human body) to be patentable. Those in the pharmaceutical industry should see this change as a very positive step towards other changes to come relating to patents for medical inventions.

The Japan IP Strategic Headquarter’s report entitled “The Current State of Patent Protection in Advanced Medicine” is here.  (via Keisen Associates)

Related posts:

1. Registration of Provisional Non-Exclusive Licenses In Japan Patent Office Now, provisional exclusive and/or non-exclusive licenses can be registered at...
2. Japan Patent Office (JPO) Releases Examination Guidelines An English version of the current Examination Guidelines for Patent...
3. Japan Patent Office Offers Economic Stimulus Package The Japan Patent Office has just announced a new policy...

Related posts brought to you by Yet Another Related Posts Plugin.