China: Managing the IP Lifecycle 2022

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The purpose of this guide is to serve as a repository of timely reference information for users of China’s trademark and patent systems. China: Managing the IP Lifecycle has been a joint effort between sister titles IAM and World Trademark Review since its launch in 2014.

China has pushed through a raft of IP system reforms over the past couple of years, partially in response to trade talks with the United States. This has meant big changes in areas including life sciences, where a patent linkage system and patent term extensions are coming online. China’s patent examinations have also been updated, and one chapter in this guide details how novelty examination for compounds works under the new rules. Damages standards have also been updated recently, and another section of this guide is dedicated to explaining how punitive awards are doled out in patent and trademark disputes.

Throughout China: Managing the IP Lifecycle, contributors provide valuable updates on a range of trademark and patent topics from every stage of the IP lifecycle in China – creation, filing, prosecution, litigation and commercialisation. Each chapter is commissioned and written with a single goal in mind: providing in-house counsel with actionable insights that help them better protect their IP assets in this challenging market. Of course, the resulting guide is also an invaluable reference for private practice lawyers, service providers and anyone else engaged in the business of intellectual property.

We have engaged some of China’s most well-regarded law firms and patent and trademark agencies to prepare the analyses that follow. These reports cover the topics that are generating the most queries and interest among their clients, and should be highly relevant to the day-to-day business needs of IP executives. We hope that China: Managing the IP Lifecycle is a useful reference in the year to come and serves as a starting point for important discussions within your business.

Jacob Schindler
Editor, IAM
[email protected]

Articles

Understanding design patent protection

Liu, Shen & Associates
The design patent system is evolving rapidly in China.

Obtaining Chinese patents on AI-related inventions

Beijing Sanyou Intellectual Property Agency Ltd
In response to the needs of innovators to further clarify the examination rules for patent applications in new industry conditions and new fields concerning AI, the China National Intellectual Property Administration issued Announcement 343 on 31 December 2019 regarding amendments to the Patent Examination Guidelines, which make explicit provisions for the examination of invention patent applications concerning AI, Internet+, big data and blockchains, among other things.

Trademark applications – malicious behaviour and its countermeasures

Panawell & Partners, LLC
Malicious or bad faith behaviour is intolerable in a civilised state or society.

Trademark enforcement through customs services

Kangxin Partners PC
Customs protects IP rights related to the import and export of goods in accordance with China’s laws and administrative regulations.

Amended Patent Examination Guide – determining the novelty of compounds

AFD China Intellectual Property Law Office
The China National Intellectual Property Administration’s latest amended Patent Examination Guide was implemented on 15 January 2021.

Antitrust assessment: portfolio cross-licensing agreements and patent pools

Dentons
In China, the abuse of IP rights to exclude and restrict competition is not an independent monopolistic behaviour, but must follow the general analysis framework under China’s Antimonopoly Law.

Closest prior art for invalidation proceedings

Linda Liu & Partners
According to China’s local practice, there are three steps to follow when determining whether a claimed invention is obvious when compared to the prior art:

Establishing trademark fame in the digital age

Vivien Chan & Co
The synergy between trademark strategies and marketing decisions is what makes a particular brand tick.

Punitive damages in China

CCPIT Patent and Trademark Law Office
The new Patent Law entered into effect on 1 June 2021, after nearly eight years of discussion since the initial amendment proposal in 2012 drafted by the State Intellectual Property Office (the China National Intellectual Property Administration’s predecessor).