Patent Trademark Protection in CHINA SBZL IP LAW
Patent & Trademark Protection in CHINA SBZL IP LAW FIRM We bring IP
Table of Contents We bring IP ● Patent & Trademark Authorities in China ● Some Statistics of Patent & Trademark Situation in 2013 ● Different routes of enforcement ● Q&A?
Trademark & Design Authorities Trademark 1. SAIC 2. Local AIC Patent (invention, UM, Design) a) CTMO b) TRAB 1. SIPO 2. Local IPA: 3. Courts 4. Customs: 5. PSB We bring IP a) PTO b) PRB
Some Statistics in 2013 Trademark Prosecution Newly Filed: 1, 881, 500 Newly Registered: 1, 004, 897 Valid trademarks in total: 7, 237, 900 We bring IP Patent (invention, UM, Design) Prosecution Newly Filed: 2, 377, 061 Newly Granted: 1, 313, 000 Valid patents in total: 4, 195, 139 Enforcement AIC actions: raid: 83, 141 Enforcement Court (civil) actions: 23, 272 cases PSB actions: 3, 473 criminal cases IPA actions: 5, 056 cases Customs actions: over 23, 600 times Detention 74, 000 goods for TM infrin. and passing-off (98%); Court (civil) actions: 9, 195 patent litigations 1, 5000, 000 goods for patent & copyright infringement (2%)
Different routes of enforcement A typical AIC proceeding (Trademark) We bring IP A typical IPA proceeding (Patent & Design) Case arise Right Holder Submitting Complaint & Evidence Place the case on file under an order from the director 7 days Filing Receipt 7 days Case Investigation & evidence collection Serve to defendant about 90 days 15 days Conclusion and report for approval Getting response Crime? Transfer to prosecution Sanction to be imposed? Jurisdiction? Transfer to Other AIC No response Invalidation started 7 days Serve to Right holder No sanction No suspension Suspension Investigation about 90 days Serve to defendant for response or argument Hearing (if any) Review or Appeal Report to director or panel if the case is “big” Making decision and serve enforcing the decision Enforcing the review or appeal decision end Review or Appeal Resume Hearing (if necessary) Intermediation (most circumstances) Decision 90 days Appeal No Appeal Refuse to enforce Enforce Compulsory enforcement end
Different routes of enforcement Customs Protection IP right recordal Infringing goods found Ex officio or informed by owner Owner Paying guarantee bond Paying of counter guarantee bond (for patent only) Detaining of suspicious goods Serve to defendant Serving to Owner Defendant submitting argument & evidence Owner submitting Opinion & evidence Official investigation (30 working days) Releasing the detained goods (1)Uncertain (2)infringement found (3) not infringement (1) Within 50 days from detaining of goods Court bill No Court bill Transferring to court Releasing the goods (2) Decision on sanction Informing owner Informing defendant Following-up (3) Releasing the goods Informing owner Informing defendant Following-up We bring IP
Different routes of enforcement We bring IP Customs Training Tips: Frequently training the Customs’ officials is very helpful !
Different routes of enforcement Civil Litigation Lodge a suit Hearing Accept Not accept Withdraw Rejected Avoidance Preparation First Inst. Simplified Normal Property preservation Mediation Adv. Exe Settlement End (6 months) Default Not settled Termination Postpone Suspension Judgment Appeal Withdrawn End Mediation Second Inst. (3 months) Maintenance Judgment Settlement Reversion Return We bring IP
Patent litigation – Court thoughts Formality check: Qualification of plaintiff (ownership, right in force) Manufacturing, sell, offer to sell, import? Jurisdictions Determination of scope of the patent concerned (claims, description, file wrapper, common sense) Literal infringement (functional definition? ) or Equivalent infringement (estoppel) Defense acceptable (prior art, not covered. . )? Civil liability Stop infringement Damage Compensation We bring IP
TM litigation – Court thoughts Formality check: Qualification of plaintiff (ownership & right in force) Jurisdictions Nature of use: Use of a mark in terms of trademark (e. g. OEM)? Infringement judgment Identical or Similar marks? Identical or Similar goods/services? Civil liability Stop infringement Damage Compensation We bring IP
Q & A? We bring IP Johnson GE Partner/Patent & Trademark Attorney geq@sbzl. com
Thanks! SBZL IP LAW FIRM www. sbzl. com
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