Of Counsel Polsinelli, LLP Intellectual Property Protection in China – Recent Developments and Challenges for Colorado Businesses USPTO China IP Road Show, Denver October 3, 2017 Milan M. Vinnola Of Counsel Polsinelli, LLP

Overview Quickly Evolving Patent System Types of Patent Protection Mechanisms for Patent Filing Exclusions from Patentability Recent Amendments to Examination Guidelines

Evolution

Types of Patent Protection Invention patents 20 years of protection Full substantive examination Utility Model & Design Patents 10 years of protection No substantive examination (general novelty assessment and formalities examination only) Utility model is only for products (no method or composition/compound claims) and designs are only for aesthetic features

Mechanisms for Patent Filing Direct Patent Filing – No Priority Claim Consider Foreign Filing License and export issues Must be filed in Chinese Paris Convention Filing Filed within 12 month of priority application, e.g., prior US provisional application Patent Cooperation Treaty (PCT) National Stage Filed within 30-32 months of priority application / PCT application Chinese translation may be filed within 32 months of priority application Dual Utility Model / Invention Model Double Patenting may be avoiding when both applications are filed on same day with a declaration

Exclusions From Patentability Article 25 Patent rights shall not be granted for any of the following: scientific discoveries; rules and methods for mental activities; methods for the diagnosis or treatment of diseases; animal or plant varieties; substances obtained by means of nuclear transformation; and designs that are mainly used for marking the pattern, color or the combination of the two of prints. The patent right may, in accordance with the provisions of this Law, be granted for the production methods of the products specified in Subparagraph (4) of the preceding paragraph.

SIPO Amendments to the Guidelines State Intellectual Property Office of the People's Republic of China (SIPO) implemented significant amendments to the Patent Examination Guidelines that came into force in April 2017 These amendments have particular implications for patent applications related to chemical, business method, and computer-implemented inventions Some procedural changes, including access to patent applications files and changes to the ability to make amendments during invalidation procedures

SIPO Amendments to the Guidelines: Business Method Inventions Previous Examination Guidelines characterized business activities as mental activities, and excluded business method claims from patentability The Amended Examination Guidelines state that a claim involving business models shall not be categorically excluded from patentability if the claim recites a technical feature It must be shown that the technical feature is adopted to solve a technical problem and achieve a technical effect, and in a manner that is inventive over the prior art Likely to be similar to US approach in practice Recent IP Awards Nationally ranked by Chambers Nationally ranked by U.S. News and World Report in Technology Law, Biotechnology Law and IP Litigation Named as one of only four “IP Litigation Powerhouses” by BTI’s 2016 Litigation Outlook report Ranked number 24 on Corporate Counsel IP Whack-a-mole: The 2016 Patent Litigation Survey, which ranked firms by the number of patent lawsuits for which they were listed as counsel in 2015. IPWatchdog built its just-published Top Patent Firm rankings based on the total number of U.S. utility patents issued in 2015. Although Polsinelli had not reported combined figures with Novak Druce's 2015 filings, the total for the national practice would rank the group at No. 11, with a combined 2309 patents.

SIPO Amendments to the Guidelines: Software Inventions Computer programs recorded on media remain excluded from patentability if they only relate to computer programs per se. The Amended Examination Guidelines distinguish a computer program-related invention from a computer program per se, and permits drafting claims to computer program inventions in terms of storage medium, program flow, and apparatus claims.

SIPO Amendments to the Guidelines: Post-filing Submission of Experimental Data for Chemical/Biotech Inventions The previous Examination Guidelines explicitly stated that when evaluating sufficiency of disclosure, “examples and experimental data submitted after the filing date shall not be considered.” The Amended Examination Guidelines now state that “the examiner shall examine the post-filing experimental data submitted by the applicant”. However, it is expected that the newly submitted data can only prove technical effects that are obvious for those skilled in the art from the original disclosure.

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