Patent Law: What is the best mode for the best mode disclosure requirement?

Bingbin Lu has an interesting short paper (9 pages only) on the best mode disclosure for patent applications. The author is answering two questions: whether a developing country should implement the best mode disclosure requirement and if so, how to best implement it?

Although the best mode disclosure requirement is optional for WTO member states in article 29 (1) TRIPs, Lu comes to the conclusion that developing countries need it. According to Lu it should be disclosed in the best mode known to the inventor, (which is in my subjective perception quite subjective) and Lu argues that a refusal to disclose this best mode must be a reason to refuse the grant of patent.

China's best mode disclosure requirement is called "preferred/optimally selected or specified mode for use" disclosure requirement in Rule 18 (5) of the Implementing Regulation of the Patent Law.

As Lu asserts Rule 18 is not a part of the Patent Law and therefore it cannot be a reason for refusal of a patent grant. According to Lu the State Intellectual Property Organisation (SIPO) has never enforced a preferred disclosure requirement in invalidation or appeal cases. Then again Lu explored the question whether developing countries should implement the best mode disclosure. The question is whether China can be easily labelled as a developing country or a developed country. China is both. To label China on a province level might be more meaningful.

Read Lu's paper here (pdf).

continue reading ...

Should There Be Trade Barriers For Chinese Companies Buying Core Global Patent Portfolios in New Technology?

Lee Caffin, IP strategist and patent attorney specialist in lifesciences at Think IP Strategy, has an interesting post on China's National Patent Development Strategy (2011-2010), read here.

After a historical overview from 2006 to 2011, Mr Caffin is posing a question that some protectionist governments might ask:

"Should countries institute patent trade barriers or limit the scope of IP rights that may be transferred to a Chinese entity to protect local industry and access to technology?"

Chances are that the late Milton Friedman might have agreed with me that this, in the end, is not a good idea. Firstly the officials representing countries are often not in the best position to assess whether a patent portfolio is core, nor whether a new technology area will be promising. Businesses that have to make a profit are necessarily better in tune with the market and one can predict that they do a better job assessing what core patent portfolios are and what new technology areas will be promising.

Secondly the party that is willing to sell the core patent portfolio is not getting the real market value if the government is raising barriers, so as a retaliatory measure against China's discriminatory indigenous innovation policies it might hurt the one retaliating, and it might lock up resources that could be brought to better use.

I know that after the financial crisis the following words may sound harsh to your ears but this author believes it is best to eliminate the barriers and let the market do its work to avoid misallocation of resources.

Huawei, China's telecommunication equipment producer, might needs to sell the patents it bought from 3Leaf, because of national security concerns, or .... is it a trade barrier to buy a core patent portfolio? President Barack Obama might grant Huawei the right to keep them. According to people who work at 3Leaf the patents form no danger for national security. But Huawei is considered by some connected to the Chinese military, which it denies. Can American companies sell anything to the Chinese military, let's say non-military grade shoe laces? Read the Financial Times article by Stephanie Kirchgaessner about it here (free but registration is needed).

US-China Economic and Security Review Commission Staff Report of January 2011 is entitled

'The National Security Implications of Investments and Products from the People's Republic of China in the Telecommunications Sector' and has a wealth of information about deals with Chinese companies such as Huawei and ZTE wanting to do investments and sell their products in the U.S. Read here.

B. Raman of Global Geopolitics and Political Economy wrote a good article focused on security issues of Huawei in India, read here.

continue reading ...

The Implementing Rules of the Third Amended Patent Law Are Coming

At the end of December 2009, the State Council approved the Determination on the Revising of the draft version of the Implementation Rules of the Patent Law. Read more here.

UPDATE:

The Regulation will be effective February 1, 2010 and will consist of 123 articles in 11 chapters.
Read more here and more about the backgrounds here.

continue reading ...

China's Protectionism Promotes Chinese Patents

IP Dragon's friend Peter Ollier of Managing Intellectual Property reports about the 'Instructions for National Indigenous Innovation Product Application Procedures', promulgated by the Ministry of Science and Technology and the National Center for Science and Technology in September 2009. See Mr Ollier's MIP article here.

In the Third Amendment to China's Patent Law of 2008, China got rid of the requirement that if you want a patent outside China of an invention that was done in China, you first needed to file the patent in China. However, what was the replacement? Article 20 Patent Law 2008 demands a "mandatory advance confidentiality examination" as the IPR2 writers of the excellent booklet 'Third Revision of China's Patent Law' call it, before a patent can be filed abroad; to prevent so called national security issues, has its own disadvantages, about which I will elaborate upon later.
Level Playing Field
China devised the following accreditation principles:

"1. Products should be of great significance. The accredited products must contribute much to or can produce vital influence on the economic and social development;
2. Products should be proprietary. The accredited products must have Chinese intellectual property and proprietary brands, and the ownership and the right of use are clearly defined, without producing disputes;
3. Products should be symbolic. The accredited products must be symbolic products mirroring China’s indigenous innovation capabilities and levels."

So: Economically significant products (vague terms), that are protected by Chinese intellectual property rights. However, the last sentence that the products should mirror China's indigineous innovation capabilities and levels, shows that China will make use of Chinese alternatives if they are available. Read the 'Instructions' translated by US Information Technology Office (a US Government institute that is for example is involved in 'Ruled for Formulating Standards Involving Patents), here.

Photo/Text: Danny Friedmann

continue reading ...

EU Experience and Practice Must Show China The Way Concerning IPR Protection At Exhibitions

It is crucial for companies to showcase their new products to the world at trade fairs and exhibitions. Hower, these places welcome potential customers but also IPR infringers.

To make the bonafide exhibitors less vulnerable to IPR infringements and deal with the IPR infringers that also have come to the trade fairs, the IPR2 (EU-China Project on Protecting Intellectual Property Rights, 10.85 million euro provided by the EU and 5.425 million euro by China) has written a 36 page study that must show the way to the Department of Treaty and Law of the Ministry of Commerce of China on 'How to Protect Your Intellectual Property at Trade Fairs', based on the experience and practice of France, Germany, Italy, the Netherlands, Spain, Switzerland and the United Kingdom, see pdf here.

Negative peculiarities in IPR protection during exhibitions mentioned in the study are:

• Timing; because of the short period it can be hard to execute an ex parte order;
• There can be a lack of availability of experts;
• Risk of double prejudice for both the IPR owner and alleged infringer.

The study comes up with the following positive peculiarities in IPR protection during exhibitions:

• Move evidence available;
• An extra jurisdiction option;
• Deterring effect, because of the public perception of an intervention.

The study was written by:
Jean-Frédéric Gaultier (Clifford Chance, France);
Reinhardt Schuster (Bardehle Pragenberg Dost Altenburg Geissler, Germany)
Giovanni Casucci (Casucci Studio Legale, Italy) who also coordinated the study;
Montserrat Lopez-Bellosta (Clifford Chance, Spain);
Carlos Rivadulla (Clifford Chance, Spain);
Johannes Jabocus Brinkhof (Brinkhof, the Netherlands);
Philippe Azzola ( Philippe P. Azzola, Switzerland).

A condensed version of the study was provided to some 200 companies in a training run by the Ministry of Commerce at China's most important trade fair, 104th China Import and Export Fair in Guangzhou, Guangdong Province (15-19 Oct; 24-28 Oct and 2-6 Nov 2008).

The report came a year after a EU-China Seminar on the Protection of IPR at Trade Fairs in Beijing and Shenzhen in November 2007. IPR2 supported a study tour by MOFCOM officials to Paris, France; Berlin, Hannover, Germany and Milan, Italy in November 2008 to assess the methods and practices employed at several of the largest European trade fairs. Read more about the study tour here.

The Protection Measures for Intellectual Property Rights during Exhibitions of the People's Republic of China, formulated according to the Foreign Trade Law of the PR China, Patent Law of the PR China, Trademark Law of the PR China, Copyright Law of the PR China and relevant administrative regulations, however, is already in force since 2006, see here.

UPDATE: The powerpoint presentation 'Stakeholder briefing www.ipr2.org, March 6, 2009, can be seen here.

continue reading ...