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We give talks and write regularly about patent law, especially cases and changes in the law that we find interesting.
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Foreigners Beware: China Proposes Requiring IP Made Using Exported Chinese Genetic Resources to be Co-Owned by Chinese Collaborators
22 March 2023Proposed Examination Guidelines for the New Chinese Patent Law – Topic 2: Genetic Resource Restriction How Will the Tightened Genetic Resource Restrictions Affect Your IP In 2019-2021, China’s Ministry of Science and Technology (“MOST”, or the Science Ministry) established several laws and regulations with respect to biosafety1 and human genetic resources management2 (collectively referred as […]
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First Ever Successful Invalidation Challenge Due to Unauthorized Foreign Filing
8 March 2023What does an invention “completed” in China mean? China and the US are similar in that both countries highly value national security, and thus have rules regulating the exportation of technology and information from within their borders. This includes new inventions that arise from within their respective borders. As such, both governments require inventors who […]
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Introducing the New USPTO Cancer Moonshot Expedited Examination Pilot Program
10 January 2023Starting from February 1, 2023, the USPTO will begin the new Cancer Moonshot Expedited Examination Pilot Program that advances out-of-turn applications that are directed to oncology or smoking cessation. This new program will replace the Cancer Immunotherapy Pilot Program that has been in place since 2016, and covers more technologies than only cancer immunotherapies. Applications […]
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FOLLOW UP: Amendments to the China Patent Examination Guidelines in 2022 – Part 1: New rules for designs in view of China signing onto the Hague Agreement
4 January 2023Since the publication of our earlier article about China signing onto the Hague Agreement, some of our Hong Kong clients have expressed interest in taking advantage of the Hague international design application system, i.e., filing a Hague international design application with the CNIPA (Chinese National Intellectual Property Administration) as a receiving office (RO). Up until […]
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BREAKING NEWS: New Pilot Program for Hong Kong Applicants to get Accelerated Patent Examination in the Chinese Patent Office Starting January 1, 2023
4 January 2023New year, new resolutions! The CNIPA has recently announced a pilot program that provides Hong Kong applicants the opportunity to expedite their patent applications filed in China. Starting 1 Jan 2023, Hong Kong permanent residents and entities legally registered in Hong Kong can request prioritized examination for their invention patent applications before the CNIPA. To […]
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Chinese Courts Cares More About Patent Quality Now (A Doctrine of Equivalents Story)
13 December 2022There is no doubt that the drafting quality of a patent can be crucial in determining the success (or failure!) of the patent during litigation. However, due to various reasons, patents often fail to use the right drafting strategies that best protect the invention. Too often, inexperienced or unsophisticated patent drafters merely listen to an […]
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Amendments to the China Patent Examination Guidelines in 2022 - Part 1: New rules for designs in view of China signing onto the Hague Agreement
2 December 2022This year, China stepped further onto the international scene by signing on as a member of the Hague Agreement. The Hague Agreement is an international registration system allowing applicants to file a single international design application in a single language to obtain protection in over 100 designated member countries. The US has been a member […]
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China Proposes New Examination Guidelines for Utility Models
24 November 2022The Utility Model (UM) in China has always been a popular choice for patent filing due to its relatively low cost and speed of prosecution. The UM prosecution only includes a preliminary examination, which is essentially a mini (stripped down) version of an invention application’s substantive examination.1 With the simplified examination process, UMs are typically […]
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China Announcing More Proposed Amendments to the Examination Guidelines in 2022
17 November 2022It’s been a year and a half since the new Chinese Patent Law came into effect (1 June 2021). Although various versions of draft Examination Guidelines have been released, thus far no official finalized versions have been confirmed. On October 31, 2022, yet another new list of proposed amendments was published1, this time consolidating the […]
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US vs CN: Foreign Filing License Requirements
9 November 2022In China, foreign filing requirements are generally very similar to the US — a foreign filing license is required if a foreign application is to be filed first for an invention made in the country. The Chinese equivalent to the US foreign filing license is called a confidentiality examination for foreign filing. According to Chinese […]
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Compositions Limited by Use: A Cautionary Tale
26 October 2022Section 4.2.3, Part II Chapter 10 of the CNIPA’s Examination Guidelines (“Guidelines”) stipulates that if the specification only discloses one property or use of a composition, the composition claim shall be drafted as a “composition limited by the function or the use”. Furthermore, it specifically states that “most pharmaceutical claims shall be drafted as claims […]
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How the Chinese Patent Office Rejected a Plate-Making Method Based on Food Safety Law
19 October 2022Previously we published an article about CNIPA rejecting a patent application claiming a food that could also be used to treat or prevent diseases based on the food’s alleged non-compliance with Food Safety Law. China’s Food Safety Law includes a provision which states any use of a composition as a food must be strictly separated […]
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