LOEB & LOEB Adds Value ©2013 LOEB & LOEB LLP US & China Patent Differences MIP China Forum Conference May 2, 2013

2 SIPO Overview SIPO – State Intellectual Property Office –Similar to USPTO –Government agency –Exam patent applications –Grant patents Local branches of SIPO –Adjudicate patent disputes –Enforce judicial decisions in jurisdiction –Appeals to People’s Courts –Some Supreme People’s Courts on coasts with patent expertise The IP tribunal of the Supreme People’s Court is responsible for judicial interpretations of Chinese Patent Law and its Implementing Regulations.

3 USPTO Overview USPTO –Exam patent applications –Grant patents The USPTO does not adjudicate disputes –Federal courts are responsible for adjudicating patent disputes, enforcing judgments, and hearing appeals

4 Types of Chinese Patents In China patent types include: –Invention patents –Utility model patents –Design patents Invention patents –New technological developments –Products, method, improvements thereon –20 year term from date of application Utility and Design –10 year term

5 Types of US Patents US Utility patents – 20 years from date of application and encompass: –Machines –Human made products –Compositions of matter –Processing methods US Design – 14 years from date of application

6 China Utility Patents China Utility patents –Have no counterpart in US law –There are no provisional patents in China There are some similarities, which include: –Examiner review for formalities –If Examiner deems okay, patent in a year shorter term of 10 years Have the ability to file an invention patent, which abandons the utility patent, but does not get priority date of invention patent

7 Scope of Coverage Scope of coverage –In the US, is virtually unlimited –Both, novel, inventive and useful

8 China patent practice No continuation practice No best mode China – strict exclusions –Scientific discoveries –Rules and methods of mental activities –Methods for diagnosis or treatment of diseases –Animal and plant varieties (not including the processes used in producing the products) –Substances obtained by means of nuclear transformation

9 Novelty –Concept – show your idea, gauge interest before spending the money on a patent application In the US – one year form date of public use, offer to sell of publication of invention In China – no prior disclosure except in limited circumstance

10 How to File in China How to file in China? –File in China directly –Domestic priority: 12 months for invention or utility –File in the United States first –Then within 12 months file either PCT or file in China –File PCT application designating China –30 months to from first priority date –Can extend 2 months with a fee

11 Revise Specification Edit down –Reduce translation costs ($ per page) –More accurate translation –Speed examination –No best mode requirement –Provide a list of prior art – let Examiner determine Do not describe specific embodiments (limiting) –Claim elements should be in all the embodiments and most drawings Do not have to have all claimed element in drawings Do not describe advantages (limiting) –Enablement standard is lower

12 Revise Claims One independent claim (else restriction) Consider claiming the advantage over the cited art (Jepson) Directly cover infringer (contributory is difficult) –Limited discovery –Direct witness examination Multiple dependent claims are fine Reduce number –Can get expensive

13 China Applications in the US Remove all references to “The Invention” –Coverage may only be to the one invention Reduce summary –Remove problem/solution –Shrink disclosure Reduce abstract Problem – solution approach may limit claims Add more embodiments to avoid being limited to one Claims –Remove all multiple dependencies –Add more claim types (CRM, SYSTEM, METHOD) –Numbering is OK, but not necessary –Narrative claims should be converted

14 Sample claim Hydraulic piston with replaceable seal rings –Outer casing housing a plurality of seal rings –Seals against reciprocating and/or rotating polished rod to allow motion of the rod while maintaining fluid pressure –Two part construction allows for replacement of seal rings

15 Narrative claim A sealing apparatus for a reciprocating polished rod comprising a seal having a plurality of seal rings disposed between a first bushing and a second bushing, the seal and the two bushings being placed within a channel in a body to which a cap is releasably attached, such that upon connection of the cap to the body opposing mating surfaces on the body and the cap compress the seal against the reciprocating polished rod.

16 Functional Apparatus Claim A sealing apparatus for a reciprocating polished rod, comprising: –a body for receiving the polished rod; and –a seal for preventing leakage of a fluid alongside the polished rod by radial pressure of a plurality of seal rings that are compressed between a first bushing and a second bushing within the body when a cap is threaded onto one end of the body.

17 Outline Form Claim A sealing apparatus for a reciprocating polished rod, comprising: –a body having a first end, a second end, a channel for receiving the polished rod, and a first mating surface formed on an interior surface of the body, wherein the first end is adapted for engagement with a well; –a first bushing disposed within the channel and engaging the first mating surface; –a plurality of seals disposed within the channel adjacent the first bushing; –a second bushing disposed adjacent the plurality of seals; and –a cap having an aperture for receiving the polished rod and defining a second mating surface, the cap being removably engaged with the second end of the body such that the second mating surface engages the second bushing.

18 First to File The Chinese Patent Law requires that patent applications directed to inventions made in china by Chinese entities or individuals must be filed first in China before any patent applications can be filed on the invention in foreign countries.

19 Re-Issue In the US, a re-issue is used to address errors that occurred without deceptive intent –Claiming less than entitled In China, there is nothing similar

20 Examination in China First step: formality examination –If OK, publish in 18 months from filing Second step: examination –Have to request within 3 years of filing or priority date, or else it is deemed withdrawn –Can request an examination early for free

21 Examination in the US First step: formalities –If OK, publish in 18 months Second Step: examination –Occurs automatically –Added to the queue –Can be moved up by paying a fee or by special circumstance

22 Disclosure Requirements In the US: –Enablement –Best mode –Written description In China: –Similar, no best mode

23 Enforcement in China Administrative –Faster, less expensive –No damages –Limited injunctions Judicial –Slower, more expensive –Can get damages and injunctions

24 Administrative - China Local IP offices, customs offices and the police Local IP –Infringement, mediation, false representations Customs –Control importation and exportation of infringing items Police – stop criminal activities

25 Administrative – Start an Action? Report to local IP office Request an administrative investigation –Work with police and conduct the administrative or seizure detain products –If infringement established, remedies can be enforced (no damages)

26 Judicial Enforcement in China Civil and criminal Trial – intermediate People’s Courts in capital city of each province Appeals – high People’s Courts of the province Supreme Court – discretion of court

27 Invalidity – First at SIPO Patent Re-Examination board at SIPO File lawsuit to challenge ruling of board The Beijing No. 1 Intermediate People’s Court is the court that has jurisdiction over the Patent Re-Examination Board, and all cases against the Board must be filed with the Beijing No. 1 Intermediate People’s Court.

28 Severe Infringement Severe infringement – Criminal –Prison and fines Damages –China – Insignificant –Lost profits or benefits gained –Royalty easier – get 1 to 3 times –Still hard - $625 to $62,500 maximum