1. 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

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

3. Evolution

4. 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

5. 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 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

6. 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.

7. 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

8. 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 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.

9. 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.

10. 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.

11. Polsinelli provides this material for informational purposes only
Polsinelli provides this material for informational purposes only.  The material provided herein is general and is not intended to be legal advice. Nothing herein should be relied upon or used without consulting a lawyer to consider your specific circumstances, possible changes to applicable laws, rules and regulations and other legal issues. Receipt of this material does not establish an attorney-client relationship. 
Polsinelli is very proud of the results we obtain for our clients, but you should know that past results do not guarantee future results; that every case is different and must be judged on its own merits; and that the choice of a lawyer is an important decision and should not be based solely upon advertisements.
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