Recently, the CNIPA and the EPO issued joint communiqué, announcing that the CNIPA-EPO Pilot of International Searching Authority (ISA) under the Patent Cooperation Treaty (PCT) will be extended for one year from December 1, 2022 to November 30, 2023. According to the project, the EPO can be selected as the ISA for the PCT application submitted by the Chinese applicant. The pilot is applicable to PCT application submitted in English to the CNIPA or the International Bureau of the World Intellectual Property Organization (WIPO), and the number of applications is limited to 3000 during the extension period. Applications with international searches completed by the EPO will not require European supplementary searches.

Since the launch on December 1, 2020, more than 270 applicants have actively participated in the project.

(Source: Website of the CNIPA)

The World Intellectual Property Organization (WIPO) released the 2022 Global Innovation Index Report on September 29 local time. The results show that China ranks 11th, up one place from last year, and steadily rises for ten consecutive years, and ranks first among 36 middle and high income economies. The Report comprehensively evaluates and ranks the performance of innovation ecosystems of 132 economies in the world. China's main performances in the Report include:

First, nine segmenting indexes rank first in the world. In terms of innovation investment, three segmenting indexes such as the scale of the domestic market, the proportion of companies providing formal training, and reading, mathematics and science PISA^① scale rank first, two segmenting indexes such as domestic industrial diversification and industrial cluster development rank second, and four segmenting indexes such as the average expenditure of the top three global R&D companies, the average score of the top three universities, the proportion of GDP in total capital formation, and the proportion of enterprise funding GERD^② rank third. In terms of innovation output, six segmenting indexes such as the number of patent applications, utility model applications, industrial design applications, trademark applications of the local people, labor output growth, and the proportion of creative product exports in total trade rank first.

Second, the high-quality development indexes of intellectual property perform well. The Report shows that in 2021, the total value of Chinese brands reached 1.9 trillion US dollars, up 7% year on year, ranking 18th in the world. Industrial and Commercial Bank of China (ICBC) ranked first in the global banking industry, and Huawei ranked second in the global technology industry. The scale of venture capital reached 94 billion US dollars, up 84% year on year, ranking 16th in the world. In 2020, the export value of high-tech products reached 757.7 billion US dollars, up 6% year on year, ranking fourth in the world. The high-tech manufacturing industry accounted for 48.1% of the manufacturing industry, an increase of one percentage point over 2018, ranking 14th in the world. Intellectual property revenue reached 8.9 billion US dollars, up 34% year on year.

① PISA: Program for International Student Assessment.

② Gross Expenditure on Research and Development.

(Source: Official Wechat of the CNIPA)

On September 28, QIN Gang, China's ambassador to the United States, tweeted: "Over the past decade, the overall score of satisfaction of China's intellectual property protection has improved significantly. The Chinese government is confident and able to ensure that enterprises around the world receive fair and strict intellectual property protection".

Recently, a set of data released by the CNIPA also shows that joint venture enterprises and foreign-funded enterprises have recognized China's intellectual property protection environment: in 2021, invention patent authorization and trademark registration obtained by foreign applicants in China increased by 23% and 5% respectively year on year, fully demonstrating recognition of China's intellectual property protection environment. In 2021, the satisfaction scores of joint venture enterprises and foreign-funded enterprises on intellectual property protection increased by 4.52 points and 2.36 points respectively compared with the initial stage of the "13th Five Year Plan".

(Source: China Intellectual Property News)

On September 15, the 14th BRICS Intellectual Property Office Director Conference hosted by the CNIPA was held in video format. The conference was chaired by SHEN Changyu, director of the CNIPA. Claudio Fetado, director of the Instituto Nacional da Propriedade Industrial (INPI), Yuri Zubov, director of the Federal Service for Intellectual Property, Unat Pandit, director of the General of Patents, Designs & Trademarks, and Roy Waller, director of the Companies and Intellectual Property Registration Office, led delegations to the conference. DENG Hongsen, director general of the WIPO, delivered a video speech, WANG Binying, deputy director general, and Edward Kwakwa, assistant director general, attended the conference as special guests.

In the conference, five directors of patent offices of BRICS jointly approved the updating of Framework for BRICS IPR Cooperation Operation Guidelines. The updated document included "Intellectual Property Supporting the 2030 Agenda for Sustainable Development of the United Nations" in the cooperation goals, and incorporated digital technology, intellectual property protection and management into future cooperation, and the cooperation mechanism was further improved.

The conference reviewed the progress of work in 8 cooperation areas of 5 patent offices of BRICS, and approved several achievements such as the Comparative Study Report on the Artificial Intelligence Review Rules of the 5 Patent Offices of BRICS, the Comparative Study Report on the Design View Submission Requirements of the 5 Patent Offices of BRICS, and the Comparison Manual on the Trademark Application and Review Procedures of the 5 Patent Offices of BRICS.

(Source: Official Wechat of the CNIPA)

Case brief:

Darwin Technology International Limited (hereinafter referred to as Darwin Company) is the patentee of the invention with the patent name of "Air Purification Device". The patent is mainly used in air purification apparatus to prevent haze, and is patented on December 26, 2007. Darwin Company found that since November 2014, Beijing Science and Technology Branch of Aerospace Communications Holdings Co., Ltd. (hereinafter referred to as Aerospace Communications Beijing Branch) has produced, sold and promised to sell "J ·inG Wujing High Efficiency Vertical Air Purifier" (hereinafter referred to as the alleged infringing product) that infringed Darwin Company's patent right for invention involved. Nanjing Yujie Environmental System Technology Co., Ltd. (hereinafter referred to as Yujie Company) provided and sold the electrostatic settling filter screen specially used to implement the patent involved to Aerospace Communications Beijing Branch. In 2012, Darwin Company sent a lawyer's letter to Yujie Company for its unlicensed production of electrostatic settling filter screen to help infringement of the patent rights involved. Darwin Company filed a lawsuit to request the two defendants to stop infringement, compensate for losses and reasonable expenses totaling 1 million yuan.

The court of first instance held that the technical solution of the alleged infringing product fell within the protection scope of claims 1-3, 15, 18-21 and 24-27 of the patent involved, and the acts involved of Aerospace Communications Beijing Branch and Yujie Company constituted infringement, and the defense proposed that the alleged infringing product used the existing technology could not be established. Aerospace Communications Beijing Branch manufactured and sold the alleged infringing product involved that infringed Darwin Company's patent rights, and Yujie Company provided the honeycomb coagulation filter screen therein. Although the honeycomb coagulation filter screen in the alleged infringing product can be used for air conditioning, it has the size suitable for the air purifier product involved, and its particle deposition can only be realized when it is used in the product for implementing the patent involved. Therefore, the honeycomb coagulation filter screen belongs to the special product for implementing the patent involved and does not have "substantial non-infringing use". Yujie Company was aware of the existence of the patent involved and knew that the honeycomb coagulation filter screen was a special part for implementing the patent involved, but still provided it to Aerospace Communications Beijing Branch. Yujie Company serves as an infringer assistor and has a subjective intention. Therefore, Yujie Company has helped Aerospace Communications Beijing Branch in its infringement, which constitutes a joint infringement. The first instance decided that the two defendants should stop the infringement and jointly compensate Darwin Company for the economic loss of 350000 yuan and reasonable expenses of 150000 yuan. Yujie Company and Aerospace Communications Beijing Branch appealed against the judgment. The second instance rejected the appeal and upheld the original judgment.

Comments:

This case is a typical case of identifying contributory infringement in patent infringement dispute. This case involves not only the analysis of the use of technology, but also the judgment of the assistor's subjective intention. This case is of reference significance for how to identify the "substantial non-infringing use" rule in the litigation.

(Source of case: Beijing Higher People's Court)

Case brief:

In 2008, Fila Sports Co., Ltd. (hereinafter referred to as Fila Company) was authorized to obtain the only legal right to use the "FILA" series of registered trademarks in China. Through continuous commercial promotion and publicity, the "FILA" series of registered trademarks have high reputation at home and abroad. In June 2016, Fila Company found that Zhejiang Zhongyuan Shoes Co., Ltd. (hereinafter referred to as Zhongyuan Shoes Company) on online and offline physical stores, and Wenzhou Unique E-commerce Co., Ltd. (hereinafter referred to as Unique Company) on online network sales platform such as JDcom opened "GFLA Flagship Store" and "GFLA Official Flagship Store", publicized the footwear products displayed and sold, and used trademark signs and similar to the "FILA" series of registered trademarks held by Fila Company. Liu, as the former legal representative of Zhongyuan Shoes Company, the legal representative of Unique Company, and the registrant of "GFLA 杰飞乐" and other trademarks, participated in the above production, sales and publicity activities. Fila Company requested to order the three defendants to stop infringement, compensate economic losses of 9 million yuan and reasonable expenses of 410000 yuan.

The court of first instance held that the use of the " " logo, the marking of "飛樂 (China)" on the sued products, and the use of the logos and on the website by Zhongyuan Shoes Company and Unique Company infringed the trademark rights of "FILA" series of trademark enjoyed by Fila Company. As operators of similar products, Zhongyuan Shoes Company and Unique Company should know the popularity of the trademark of Fila Company. They prominently used logos similar to the trademark involved on the products they produce, and sold them on multiple online sales platforms, with huge sales amounts. Meanwhile, as early as July 19, 2010, the Trademark Office rejected the application for registration of the trademark on "clothing, headgear, footwear" on the ground that No. 7682295 trademark " " was similar to No. G691003A trademark " " of Fila Company. At this time, the three defendants had been fully aware of the "FILA" series of trademarks registered by Fila Company previously, and continued to produce and sell the infringed products in the case of being aware that use of the sued logo might lead to confusion and misunderstanding of the source of products, the subjective malice was obvious, and the infringement was serious, and punitive damages shall be applied. Considering that Zhongyuan Shoes Company has three brands, but no evidence has been provided to prove the sales volume and profit of each brand, it is presumed that the operating profit of the sued products accounts for 1/3 of the total. Based on this, it is calculated that Zhongyuan Shoes Company's operating profit from infringement in 2015 and 2016 is 2638322 yuan, and a judgment is made that amount of compensation is determined to be 7.91 million yuan according to 3 times of the operating profit. The appeal was rejected in the second instance and the original judgment was upheld.

Typical significance:

This case is a typical case where it is determined that there is willful infringement in the application of punitive damages due to the infringer knowing the trademark right of the registrant in the trademark authorization procedure but still committing infringement.

(Source of case: Beijing Higher People's Court)

Basic information:

Case No.: (2016) Jing 73 Min Chu No. 93, (2017) Jing Min Zhong No. 413

Plaintiffs: Deere Company, John Deere (China) Investment Co., Ltd

Defendants: John Deere (Beijing) Agricultural Machinery Co., Ltd., John Deere (Dandong) Petrochemical Co., Ltd., Lanxi Jialian Deere Oil Chemical Co., Ltd

Case brief:

Founded in 1837, Deere Company is a world-famous agricultural machinery manufacturer and engineering and forestry equipment manufacturer. It entered China in 1976 and established John Deere (China) Investment Co., Ltd. (hereinafter referred to as John Deere China Company) in 2000. Deere Company holds series of trademarks such as "JOHN DEERE" and "约翰.迪尔". Deere Company grants its non-exclusive license to exploit the trademark to John Deere China Company. The two plaintiffs found that the three defendants produced and sold industrial oil and other products with the same or similar logo as the registered trademark of Deere Company in China, and registered the trademark "佳联迪尔" on industrial oil and other products, and registered the business names as "佳联迪尔" and "约翰迪尔". The two plaintiffs claimed to calculate the amount of punitive damages based on 3 times of the profits from infringement, and requested to order the three defendants to jointly compensate the economic losses of 5 million yuan.

The court of first instance held that the three defendants jointly infringed the trademark rights of the two plaintiffs. As for the calculation of the amount of compensation, considering that the three defendants committed various forms of infringement, not only using the trademarks involved on the same or similar products, but also using the trademarks involved through registering domain names, business names, etc., and copying, imitating, and translating the trademarks involved in the way of registered trademarks. The three defendants have a great number of franchisees, and they have sales networks in Liaoning, Heilongjiang, Xinjiang, and Beijing, and the profits from infringement are considerable. Based on the calculation from the evidence on record, the three defendants' sales volume from infringement in two years exceeded 16 million yuan. After the administrative penalty, the defendants still continued to commit infringement, with obvious subjective malice and serious infringement. For the profit from infringement, it is calculated by reference to the number of infringing products seized and detained, the monthly sales volume of infringing products involved in relevant administrative penalties, the monthly sales volume of infringing products reflected in the case of invalidation of trademark rights, the average unit sales price of the two defendants, the average profit rate of the industry in which the products involved are, and other indicators. 3 times of the amount determined by the above method is far more than the compensation amount of 5 million claimed by the two plaintiffs. The first instance fully supported the two plaintiffs' claim for compensation. The appeal was rejected in the second instance and the original judgment was upheld.

Typical significance:

This case is a typical case where there is willful infringement and serious circumstances in the application of punitive damages. The continuous infringement of the defendants shows being aware of the nature of the infringement of the acts committed, and the defendants continue to commit infringement in disregard of the administrative penalty decision. The infringement of the defendants has two elements at the same time: willful infringement and serious circumstances, which meet the applicable requirements of punitive damages.

(Source of case: Beijing Higher People's Court)

In the morning of September 15, 2022, the "China Trademark and Brand Protection Digital Forum and the China Trademark Association Digital Working Committee Inauguration Ceremony" hosted by the China Trademark Association was held in Beijing. The theme of this forum was "the new trend of integration of digitization and professionalization of trademark and brand protection in the new era". Attorney ZHAO Lei, senior partner of Unitalen, was invited to attend the forum and give a keynote speech.

At this forum, the Digital Working Committee of China Trademark Association was formally established. Unitalen Intellectual Property was selected as one of the first members of the Digital Working Committee, and attorney ZHAO Lei was appointed as a member of the Digital Working Committee.

Recently, the Pre ANDA Litigation: Strategies and Tactics for Developing a Drug Product and Patent Portfolio (Third Edition) organized by the American Bar Association (ABA) was officially published. Dr. PENG Kunpeng, a partner of Unitalen, as a specially invited author, participated in the writing of the content related to the Chinese drug registration and patent linkage system therein.

On September 21, 2022, the sixth conference of the fifth council of Shanghai Trademark Association was successfully concluded. In the conference, Shanghai Branch of Unitalen was elected as the vice president unit of Shanghai Trademark Association.