- Are you ready for the new drug patent term compensation?
- Interpretation and Application of the leading case "Investigation and Handling of Shanghai Zhangyuan Information Technology Co., Ltd.'s Infringement on the Exclusive Right of D&B's Registered Trademark by the Market Supervision Bureau of Chongming District, Shanghai "
- Supreme People’s Court issued judicial interpretations on punitive damages for intellectual property rights to punish serious violations of intellectual property rights in accordance with the law
- Special Action Plan to Combat Malicious Squatting of Trademarks
Are you ready for the new drug patent term compensation?
It is stipulated in the newly revised Patent Law in Article 42 Paragraph 3: "For the purpose of making up the time required for the assessment and approval of the marketing of a new drug, the patent administrative department of the State Council may, at the request of the patentee, provide patent term extension for an invention patent relating to the new drug approved for marketing in China. The extension may not exceed five years, and the total effective term of the patent after the new drug is approved for marketing shall not exceed 14 years.”
The United States, Japan, Europe and other countries and regions set up the drug patent term compensation system 20 to 30 years ago, in which the USA is the first country to establish the system. In 1984, Drug Price Competition and Patent Term Restoration Act, that is Hatch-Waxman Act, was adopted at the United States Congress, stipulating details on the patent term extension system which is listed in Patent Law in Article 156; in Japan, the patent term extension system was established in 1987 and revised and improved in 1999, it is generally regulated in Japan Patent Law in Article 67; in Europe, the EEC 1769/92 Act, that is EU SPC, was adopted and enacted at European Parliament in 1992, and officially came into effect in 1993.
The newly revised Patent Law in our country will come into effect on June 1, 2021, how to take effect depends on subsequent and more detailed method and system. In accordance with the statistical result of Frost&Sullivan, the worldwide famous market research company, from 2012 to 2016, the United States had been always the biggest drug consumption market, it is also the earliest country. There have been 2 million cases of patent having patent term adjustment.
Drugs and the corresponding US patents can be obtained from the US FDA Orange Book as of September 2020, involving 2,873 cases of patent, among the Chinese family of these patents, there are 296 cases of drug patents in total with valid legal status and before expiration by June 1, 2021. It is believed that the patentee of these patents may file a claim for the drug patent term compensation after June 1, 2021.
Rank patentees with 5 or more patents. MSD ranks first with 20 patents, which is much higher than other patentees; Novartis ranks second with 14 patents; AstraZeneca and Allei Biotech both rank third with 10 patents; the number of patents owned by other patentee is less than 10. According to their countries, 9 of the 13 patentees are from the United States, and the remaining four respectively come from Switzerland, UK, Japan and Germany.
In terms of patent drug application diseases that are most likely to file a claim for extension of drug patents, drug patent applicable to cancer with the number of 73 accounts for the most, which is much higher than other diseases; 28 drug patents applicable to neurological diseases rank second; 25 drug patents applicable to cardiovascular diseases rank third; patents applicable to skin diseases and AIDS are respectively 20 and 16; and the number of drug patents applicable to other diseases is less than 15.
Among the right holders who are most likely to file a claim for the extension of drug patents, Merck has much more drug types among the TOP5 patentee, which mainly are AIDS and hepatitis drugs; Novartis also owns many sorts of drugs leading by cancer ones; only three drugs are involved in AstraZeneca, of which TAGRISSO (generic name of the drug osimertinib mesylate) for the treatment of lung cancer is also the drug with the largest number of patents in a single drug layout, and all 7 patents protect compounds; ArrayBio involves only two drugs, both are cancer drugs, MEKTOVI (generic name Binimetinib) for treating melanoma ranks second in the number of patents in a single drug layout, 4 of the 6 patents protect compounds, one protects the use, and the other protects the compound, composition and use at the same time; Takeda also has many drugs, mainly are diabetes and gastric drugs.
From: Sohu News
Interpretation and Application of the leading case "Investigation and Handling of Shanghai Zhangyuan Information Technology Co., Ltd.'s Infringement on the Exclusive Right of D&B's Registered Trademark by the Market Supervision Bureau of Chongming District, Shanghai "
On December 14, 2020, the CNIPA issued the leading case for Administrative Enforcement of Intellectual Property Rights "Investigation and Handling of Shanghai Zhangyuan Information Technology Co., Ltd.'s Infringement on the Exclusive Right of D&B's Registered Trademark by the Market Supervision Bureau of Chongming District, Shanghai " (Leading Case No. 1). The interpretation and application of the leading case are explained as follows.
1. Election process and guiding significance
The case was concluded by the Market Supervision Bureau of Chongming District, Shanghai on November 15, 2019. The agency handling the case affirmed that the party’s behavior was an infringement of the exclusive right of the registered trademark and imposed administrative penalties. After the decision was made, the party concerned did not file an administrative review or file an administrative litigation.
The leading case clarified that the parties use the same or similar words as the registered trademarks of others as searching keywords, and display the keywords in prominent positions, for example, the title of the webpage link on the search result page, which constitutes the use of the trademark. The leading case helped to further clarify the definition of trademark using behavior in the Internet environment.
2. The interpretation and explanation of the case’s main points
(1) The use of trademarks and the judgment of trademark infringement.
The use of trademarks plays a crucial role in the trademark legal system, which is of great significance in the acquisition, maintenance and relief of trademark rights. In recent years, the use of trademarks has been gradually separated from the judgment of "probability of confusion" as an independent infringement judgment element in the practice of administrative law enforcement. For one thing, it can reduce the risk caused by the loosening of the "probability of confusion" infringement judgment standard, and balance the interests of the public and the right holders better; for another thing, it can avoid the complexity of the "probability of confusion" judgment and exclude some cases from the judgment to save limited administrative resources and improve efficiency. Based on this, paragraph 1 of Article 3 in Standard of Trademark Infringement Judgment issued by CNIPA on June 15, 2020 stipulates that “To determine whether a trademark infringement constitutes a trademark infringement, it is generally necessary to determine whether a suspected infringement constitutes a trademark use in the sense of trademark law."
(2) The use of trademarks in the Internet environment.
The focus of the leading case is whether the use of words that are identical or similar to others’ registered trademarks in Internet keywords searching constitutes the use of trademarks. In the environment of Internet, the performance of trademark use show diversified characteristics, and how to define whether the use of relevant signs belongs to the use of trademarks in the sense of trademark law is also extremely complicated. There are two common cases of using words that are the same or similar to others’ registered trademarks in keyword searching: one is to use words that are identical or similar to others’ registered trademarks in the keyword part of the search engine, which means the words are only used for keyword promotion without showing in the search results, that is, internal use; the other is to display the text in prominent positions like the title linking to searching result web page except the keyword part, that is, external use. The said leading case belongs to the second one. The Internet users entering keywords in search engines are to find the related information. The results showing after the search with keywords will usually make the users think they are related to the keywords. Especially the keywords at a prominent position such as the title of the search result page will strengthen the relevance, causing them to have an association that the keyword is related to a particular commodity or service, and thus considering the above link involves the product or service represented by a trademark that is identical or similar to the keyword with the function of identifying the source of the product or service. Therefore, compared with the internal use, the mentioned external use behavior is easier to produce the effect of identifying the source of goods or services, and it should be recognized as the use of trademarks.
In this leading case, the parties used the same words as the "Dun & Bradstreet" trademark of the trademark owner Dun & Bradstreet International Co., Ltd., as searching keywords, and highlighted the words similar to the registered trademark of the owner "Dun & Bradstreet" in the title link on the search result page and the content of the linked web page. For network users, the effect of trademark use is visible and perceivable. The above-mentioned actions convey the information contained in the trademark to the relevant public, easily making the public associate the trademark with its directional specific service, so as to correspond to the provider of specific service, playing a role of distinguishing the service source, which is the use of trademarks.
3. Other issues need to be explained
The leading case also covers judgment issues that can easily cause confusion on the Internet. In accordance with the Standard of Trademark Infringement Judgment, "easy to cause confusion" includes two conditions: one is enough to make the relevant public believe that the involved goods or services are produced or provided by the registered trademark owner, and the other is enough to make the public believe that the provider of the involved goods or services has investment, license, franchise or cooperation relationship with the registered trademark right holder. The word "enough" indicates that "easy to cause confusion" does not take actual confusion as necessity but just need a possibility of confusion. In this leading case, 8 companies mistakenly believed that the parties had a licensing relationship with the trademark owner Dun & Bradstreet International Co., Ltd. via searching on the Internet and based on the trademark use of the parties, and commissioned the parties to apply for Dun & Bradstreet's code. To the time of the case, the parties had collected a total of 179,100 yuan for the agency service fees of the above 8 companies. In conclusion, the parties’ use of a trademark similar to the right holder’s registered trademark on the same service not only make it possible to cause the relevant public confused with the service involved and the service provided by the right holder, but also cause an actual confusion. There is no denying that it can be determined as constituting "easy to cause confusion," and then the party's behavior is a trademark infringement.
The identification of the use of trademark in keyword searching is a global leading edge issue with few related cases at home and abroad. Under the circumstance of lacking clear provisions in active laws and regulations with still disputes in law enforcement practices, the handling agency of the said leading case accurately mastered the essence of trademark use, made accurate determinations of trademark infringements, accumulating valuable experience for trademark administrative enforcement.
Supreme People’s Court issued judicial interpretations on punitive damages for intellectual property rights to punish serious violations of intellectual property rights in accordance with the law
On March 3, 2021, the Supreme People's Court issued the Interpretation of the Supreme People's Court on the Application of Punitive Damages in the Trial of Civil Cases of Infringement of Intellectual Property Rights (hereinafter referred to as the Interpretation).
The Interpretation made specific provisions on the application scope of punitive damages in civil intellectual property cases, the determination of intentional and serious circumstances, and the determination of calculation bases and multiples. The Interpretation aims to guide courts at all levels to accurately apply punitive damages and punish serious violations of intellectual property rights via making judgment standards clear. The issuance of the Interpretation is an important measure to implement the punitive damages system, which manifests the determination of the people's courts to comprehensively strengthen the judicial protection of intellectual property rights, being of great significance for further optimizing the legal environment for technological innovation. It will be implemented on March 3, 2021.
From: Supreme People’s Court
Special Action Plan to Combat Malicious Squatting of Trademarks
The special action focused on cracking down on the actions of malicious squatting of trademarks, seeking improper interests, disrupting the order of trademark registration management, which causes greater adverse social impact as follows,
(1) Maliciously squatting of the names of national or regional strategies, major activities, major policies, major projects, or major scientific and technological projects;
(2) Maliciously squatting of vocabulary and signs related to public emergencies such as natural disasters, major accidents, major public health incidents, and social security incidents, which harms the public interests of the society;
(3) Maliciously squatting of the names and logos of major events or major exhibitions with a relatively high reputation;
(4) Maliciously registering the names of administrative divisions, mountains and rivers, scenic spots, buildings and other public resources;
(5) Maliciously squatting of public commercial resources such as common names and industry terms of goods or services;
(6) Maliciously squatting of the public figures names, well-known works or character names with high popularity;
(7) Maliciously squatting of others’ trademark or other commercial marks with a relatively high reputation or strong distinctiveness, which damages the prior rights and interests of others;
(8) Obviously violating the prohibition of Article 10 of the Trademark Law and other violations of public order and moral, which causes significant negative social impacts on the country's political, economic, cultural, religious, ethnic and other social public interests and public order;
(9) Trademark agencies accept clients’ entrustment or disturb the order of trademark agency by other improper means even if they know or should know that the client is engaged in the above-mentioned acts;
(10) Other obvious violations of good faith principle.
Implement precise strikes around the entire process of trademark registration. Strengthen the supervision of malicious squatting, realize the synergy of trademark registration, opposition, examination and follow-up service, and promote consistent implementation of standards. The clues in the trademark registration process are handled in accordance with the law by various local trademark examination and cooperation centers with the instructions of Trademark Office. If it constitutes malicious squatting of trademark, the rapid rejection mechanism will be activated. If clues to cases in the trademark opposition or invalidation procedures constitute malicious registration of trademark, measures such as advance review and trial, combined review and trial, and oral trial of major cases should be adopted, and registration shall not be granted or be declared invalid in accordance with the law.
- 指导案例 “上海市崇明区市场监管局查处上海章元信息技术有限公司侵犯邓白氏注册商标专用权案”的理解与适用
- 最高人民法院出台知识产权惩罚性赔偿司法解释 依法惩处严重侵害知识产权行为
摘自Supreme People’s Court 2021年3月3日