Newsletter: Chinese IP Information
(English and Chinese)
- IP Statistics in the First Half of 2020
- Unified Law Enforcement Standards! "Trademark Infringement Judgment Standard" Released
- Xidian Jietong VS Apple: A Dispute Triggered Several Lawsuits
IP Statistics in the First Half of 2020
In the first half of 2020, China’s main intellectual property indicators were in line with expectations, and the development of intellectual property undertakings remained stable.
(1) In terms of patents, in the first half of the year, totally 683,000 invention patent applications were filed; a total of 217,000 invention patents were granted. Among them, 176,000 domestic invention patents were granted. Among the domestic invention patent authorizations, there are 169,000 service inventions, accounting for 96.0%; and 7,000 non-service inventions, accounting for 4.0%. In the first half of the year, the top 3 domestic (excluding Hong Kong, Macao and Taiwan) invention patents were granted by Huawei Technologies Co., Ltd. (2772), OPPO Guangdong Mobile Communications Co., Ltd. (1925), and BOE Technology Group Co., Ltd. (1432). Pieces).
In the first half of the year, 29,500 PCT international patent applications were accepted, a year-on-year increase of 22.6%. Among them, 26,800 were domestic, an increase of 20.7% year-on-year.
In the first half of the year, 26,200 patent reexamination requests were accepted; 25,700 cases were closed. 2,600 requests for invalidation of patents were accepted; 4,300 cases were closed. The examination period of China's invention patents is 20.3 months, high-value patent examination period is 15.2 months, utility model examination period is 6.4 months, and design examination period is 3.2 months.
(2) In terms of trademarks, in the first half of the year, the number of trademark applications in China was 4.284 million; the number of trademark registrations was 2.629 million. As of the end of June 2020, the number of valid registered trademarks in China was 27.414 million.
A total of 3875 applications for the international registration of Madrid trademarks from Chinese applicants were received, a year-on-year increase of 36.0%. As of the end of June 2020, the number of valid Madrid international trademark registrations for Chinese applicants was 41,000.
In the first half of the year, 166,000 applications for trademark examination and adjudication of various types were received, and 192,000 were closed. The average review period for trademark registration has stabilized within 4.5 months.
(3) In terms of geographical indications, in the first half of the year, CNIPA approved 322 companies using special signs for geographical indication products and 364 registered geographical indication trademarks. As of the end of June 2020, a total of 2,385 geographical indication products have been approved, 8,811 companies using special signs have been approved, and a total of 5,682 geographical indication trademarks have been registered.
(4) In terms of layout design of integrated circuits, in the first half of the year, China's integrated circuit layout design registration applications were 5,176, a year-on-year increase of 78.2%; 5,262 certificates were issued, a year-on-year increase of 111.6%.
(5) In terms of protection and use of intellectual property rights, in the first half of the year, there were a total of 5,320 administrative rulings on patent infringement disputes in various provinces (regions and municipalities) across the country. The domastic patent and trademark pledge deposit amounted to 85.3 billion CNY, a year-on-year increase of 45%, and the number of pledge projects was 4678, a year-on-year increase of 52%.
Unified Law Enforcement Standards! "Trademark Infringement Judgment Standard" Released
In accordance with the relevant provisions of the "Trademark Law" and the "Regulations on the Implementation of the Trademark Law", the "Trademark Infringement Judgment Standard" was issued on June 15, 2020.
The "Standard" systematically sorts out and summarizes the beneficial experiences and practices of trademark administrative protection over the years, and incorporates innovative regulations in combination with practice. There are 38 articles in the "Standard", which provide detailed regulations on the use of trademarks, the same kind of goods, similar goods, the same trademark, similar trademarks, easy to be confused, sales exemption, conflict of rights, suspension of application, and identification of right holders. It mainly includes:
The first is about the use of trademarks. It clarifies that the use of trademarks is usually the prerequisite for determining trademark infringement; further refines the definition of trademark use, lists the specific manifestations of trademark use; and clarifies the principles of trademark use determination.
The second is about the same commodity or similar commodities. The "Standard" stipulates the principles for determining the same and similar products, and clarifies the proper role of the "Differentiation Table" in trademark administrative enforcement.
The third is about the same trademark and similar trademarks. On the basis of traditional trademarks, the standards for judging the identity and similarity of new trademarks such as three-dimensional trademarks, color combination trademarks, and sound trademarks are incorporated into the "Standard". At the same time, it further clarifies the effect of the application of the "Trademark Examination and Trial Standards" in trademark administrative enforcement.
The fourth is about being easily confused. The new "Trademark Law" that was implemented in 2014 first proposed the regulations that are easy to be confused. Based on the study of administrative normative documents and judicial interpretations, the "Standard" clarifies two situations that are easy to be confused and the relevant factors about what needs to be considered if they are easy to be confused.
The fifth is about not having the permission of the trademark registrant. Regarding the disputed infringement situations in law enforcement practices that exceed the category, time limit, and quantity of trademark use licenses, the "Standard" clearly stipulates that unlicensed trademark registrants include unlicensed and over-licensed categories, deadlines, and quantities, etc. situation.
The sixth is about specific acts of trademark infringement. The "Standard" combines law enforcement practices, refers to relevant administrative replies, and refers to judicial interpretations, and provides for the legal application of trademark infringements that are prone to occur in practice, including self-change of registered trademarks, combined use of multiple registered trademarks, and the use of colors with the purpose of attachments, the use of infringing goods in the contracting of labor and materials processing, the gift of infringing goods in sales activities, and the assistance in infringement; further clarifies the specific applicable provisions of the trademark law.
The seventh is about sales exemption. The "Standard" specifies the relevant requirements for exemption of liability for sellers, clarifying that they are not unaware of sales and satisfying the relevant conditions of the description provider.
The eighth is the handling of conflicts between trademarks and other intellectual property rights. The "Standard" stipulates the principles for handling conflicts between trademarks and the above-mentioned intellectual property rights, and clarifies that the trademark application date is the benchmark for comparison.
The ninth is about the defense of prior use of trademarks. In order to standardize the use of unregistered trademarks that were previously used, the "Standard" has detailed regulations on trademarks that have a certain impact and the original scope of use.
The tenth is about the application of suspension. The "Standard" specifies the circumstances under which suspension can be applied.
The eleventh is about trademark infringements that have been committed twice or more within five years. The "Standard" provides detailed provisions on the "perpetration of more than two trademark infringements within five years" stipulated in Article 60, Paragraph 2 of the "Trademark Law", which clearly means that the same party has been identified as infringing others by the relevant trademark enforcement agencies, people's courts, etc, from the date when the administrative penalty or judgment of the exclusive right to exclusive use of a registered trademark becomes effective, trademark infringement is committed within five years.
The twelfth is about the identification of right holders. The "Standard" stipulates that trademark owners shall bear legal responsibility for the identification opinions issued by themselves, and clarifies that law enforcement agencies shall examine the legality of the subject of identification opinions, the authenticity and relevance of the identification opinions, and that the situation about the identification opinions that are adopted as evidence.
From CNIPA 2020.6.15
Xidian Jietong VS Apple: A Dispute Triggered Several Lawsuits
In China’s first standard-essential patent protection case in the field of information and communication technology (ICT), Xidian Jietong received a compensation of 9.1 million yuan in the second instance, and was called by the industry as a domestic growth company that "overwhelmed" the international giant with its standard-essential patents Benchmarking case. Since then, another patent dispute caused by the patent involved in the case (patent number: 02139508.X) has also attracted attention.
In April 2016, Xidian Jietong Company sued the three defendants including Apple to the Higher People's Court of Shaanxi Province on the grounds of patent infringement, requesting the court to order the three defendants to immediately stop the patent infringement.
In response, in May 2016, Apple filed an invalidation request with the original Patent Reexamination Board for the patent involved. After the original Patent Reexamination Board made an examination decision to maintain the validity of the patent rights involved, Apple filed an administrative lawsuit with the Beijing Intellectual Property Court. On June 8, the Beijing Intellectual Property Court made a first-instance judgment, dismissing Apple's litigation request, and upholding the original Patent Reexamination Board's No. 31501 invalidation request review decision.
In addition to the invalidation procedures, Apple also sued Xidian Jietong to the Beijing Intellectual Property Court for abusing its monopoly market position and requesting the court to confirm the license rate for standard essential patents. Currently, the above-mentioned cases are under further trial.
The first instance remains valid
The patent in question was a Chinese invention patent application filed by Xidian Jietong Company in November 2002 and was authorized in March 2005. Since then, Xidian Jietong has filed patent applications for the technology in more than a dozen countries and regions including the United States, Japan, South Korea and Europe, and has been authorized successively.
In the case of Apple v. CNIPA and a third party, Xidian Jietong, in the administrative dispute over the invalidation of the patent for invention, Apple claimed that the sued review decision erroneously excluded its submission before the end of the oral debate for improvement, a notarized document supporting the authenticity of the document and the date of publication.
In this regard, the Beijing Intellectual Property Court held that in accordance with Article 66 of the Implementing Regulations of the Patent Law of the 2002 Edition and Section 4.3.1 of Chapter 3 of Part Four of the Patent Examination Guidelines, the petitioner made the request for invalidation. If the evidence is supplemented one month later, the Patent Reexamination Board will generally not consider it, except in the following circumstances: …… (ii) Submit technical dictionaries, technical manuals, textbooks, and other common-sense evidence in the technical field before the end of the oral debate Or it is used to improve the legal form of evidence, such as notarial certificates, originals, and other evidence, and combine the evidence to specify the relevant invalidation reasons within the time limit. According to the facts ascertained, Apple submitted multiple notarized documents (Annex 49-52, 55, 57-74) after one month from the date of the invalidation request and before the end of the oral debate to prove that it was submitted within one month of the authenticity and publication date of the webpage evidence, but some of these notarized documents have not been submitted within one month from the request date, such as the content that proves the publication date of the citations, the content that proves the authority of the website published in the citation, etc. The content of these overdue submissions does not belong to the common-sense evidence or the evidence used to improve the legal form of the evidence referred to in the above-mentioned "Patent Examination Guidelines". Therefore, the defendant decided not to accept the content of the overdue submission in the above appendix.
It is determined in the first-instance judgment about the admissibility standard for the overdue evidence submitted by the requester in the invalidation procedure, that is, if the requester submitted a notarial certificate submitted after one month from the date of the invalidation request to prove that the content of the internal evidence having the publication date of the citations submitted within one month exceed the time limit, the internal evidence does not belong to supplementary evidence in the legal form of perfect evidence and should not be accepted.
In addition, the first-instance judgment supported the evidence standard of the original Patent Reexamination Board, that is, if the network information is used to prove the facts to be proved, if the "notarial" evidence that has exceeded the period of proof proves that the network information source is different from the network source of the evidence content within the period, then the notarization is not an exception to the legal form of perfect evidence.
Based on this, the Beijing Intellectual Property Court held that the defendant’s decision was conclusive, the application of the law was correct, and it complied with legal procedures. The plaintiff Apple’s lawsuit lacked factual and legal basis, and the court refused to support it and rejected Apple’s lawsuit. As of press time, the case is still in the appeal period.
The above-mentioned determination of the court of first instance further affirmed the standard of CNIPA for the determination of evidence. It is worth mentioning that the invalidation examination decision No. 31501 involved in this case was rated as one of the top ten cases of invalidation of patent reexamination in 2017. Its typical meaning is to clarify the notarization and identification standards for web evidence, and it has the guiding significance to the same type of cases.
Apple intensively "strikes back"
The above-mentioned administrative dispute over the invalidation of the invention patent is only one of Apple's "counter-attack" cases. Apple also filed more than 10 lawsuits against Xidian Jietong, including abuse of its monopoly market position and disputes over the license rate of standard essential patents.
In October 2016, Apple sued Xidian Jietong Company to the Beijing Intellectual Property Court, requesting the court to confirm the standard essential patent licensing rate. In December 2016, Apple sued the Beijing Intellectual Property Court that Xidian Jietong Company was suspected of abusing the dominant position of the seller’s monopoly market. Currently, the two cases mentioned above are in the process of further trial.
In March 2018, Apple filed an arbitration with the Hong Kong International Arbitration Center with Xidian Jietong Company as the respondent, requesting the arbitration tribunal to make a ruling on the licensing fee of the Wireless LAN Security Protocol (WAPI) standard essential patent. In December 2019, the arbitration tribunal of the Hong Kong International Arbitration Center made a decision that the arbitration tribunal has jurisdiction over the case. Regarding this result, Xidian Jietong Company believes that in the process of making this ruling, the arbitration tribunal has illegal circumstances such as illegally excluding the appointment of arbitrators by Xidian Jietong Company.
In addition to the above disputes, Xidian Jietong and Apple are also involved in a trade secret infringement dispute. In January 2018, Xidian Jietong filed a lawsuit with the Beijing Intellectual Property Court, claiming that in the previous case, Apple used US court procedures to voluntarily provide Sony with the confidentiality obligations of Xidian Jietong and Apple. The act is suspected of constituting a trade secret infringement. Currently, the case is under further trial.
A patent litigation dispute has triggered several intellectual property lawsuits. We are still watching when the series of intellectual property disputes between the parties will end.