|
 |
 |
 |
 |
 |
 |
 |
 |
 |
||||||||||||||||||||||
 |
 |
 |
Part One: Three Types of Patent Protection in China
Philip C. Mendes da Costa and Adrienne Bieber McNeil discuss the key three types of patent protection in China as the first of a three-part series on patent protection in China.
GlaxoSmithKline v. Apotex and "obvious-type"
David W. R. Langton examines the issues of double patenting in Canada.
Toronto Technology Company Awarded $290-million (U.S.) from MicrosoftBhupinder Randhawa outlines the potential damages awarded to i4i Inc., a Canadian technology company that recently won a patent dispute is a U.S. court against Microsoft. Alternate Forms of Patent Protection in China
Part One: Three Types of Patent Protection in China
Philip C. Mendes da Costa and Adrienne Bieber McNeil © 2009 Bereskin & Parr LLP It has become fairly routine for companies to file for patent protection in China. A Chinese patent will allow a company to maintain exclusivity for a new product sold to Chinese customers. More importantly, many products are made in China. A Chinese patent may prevent a competitor from having a product manufactured in China. However, deciding to obtain a patent in China requires a more detailed analysis. In particular, what type of “patent” should be obtained? In this three-part series on alternate forms of patent protection in China, we will first discuss the three types of patent protection in China. In the other stories, we will discuss "Strategies for Patent Protection in China," and "Differences in the Three Types of Patent Protection in China." In China, three different types of patent protection may be obtained, namely an invention patent, a utility model patent, and a design patent. There are advantages and disadvantages associated with each type of protection, and consideration should be given as to which type of protection should be obtained. Invention Patents When people talk about a “patent," such as a Canadian patent or a US patent, they generally are thinking of protecting a new technical solution relating to a product, a process, or improvement thereof[1] - the utility of a product or process. This is the role of a Chinese invention patent. The requirements for an invention patent are that the invention must possess novelty, inventiveness, and practical applicability. These are the standard requirements set by the national patent law of every country. As with many patent offices around the world, prosecution of an application for a Chinese invention patent takes a long time. It typically takes two to five years for an invention patent to issue[2]. The term of an invention patent is 20 years from the filing date[3]. Utility Model Patents Chinese utility model patents are not similar to any type of patent protection in Canada or the United States. They are essentially issued as an unexamined patent but have the same test for inventiveness as an invention patent. A utility model patent may be sought for any new technical solution relating to the shape, the structure, or their combination, of a product, which is fit for practical use[1]. Therefore, in contrast to an invention patent, a utility model patent may only be sought for a product. A utility model patent may not be sought for a chemical compound, a method, or a process. Similarly to an invention patent, the requirements for a utility model patent are that the utility model must possess novelty, inventiveness, and practical applicability[2]. The application undergoes a preliminary examination only. If it is determined that there is no cause for rejection, the utility model patent will be granted. Therefore, utility model patents typically issue much faster than invention patents, such as six to twelve months[4]. A utility model patent will be published only after it is granted. The term of a utility model patent is 10 years from the filing date - significantly shorter than the term of an invention patent. Design Patents Chinese design patents protect the design of a product. They may be used to protect a new design for the shape, pattern, the shape and pattern, or the combination of the color with shape or pattern, of a product, which creates an aesthetic feeling and is fit for industrial application[1]. Accordingly, they are similar to Canadian industrial designs or United States design patents. The requirements for a design patent are that is must not be identical with and similar to design which, before the date of filing, has been publicly disclosed, and must not be in conflict with any prior right of any other person[4]. Similarly to a utility model patent application, a design patent application will only undergo a preliminary examination. If it is found after preliminary examination that there is no cause for rejection, the design patent will be granted. Similarly to a utility model patent, a design patent will be published only after it is granted. The term of a design patent is 10 years from the filing date. Philip C. Mendes da Costa, B.Sc. (Chem. Eng.), LL.B., is the leader of Bereskin & Parr LLP's Patent Practice Group. He can be reached in Toronto at 416.957.1695 or pmdcosta@bereskinparr.com. Adrienne Bieber McNeil, B.A.Sc. (Eng. Chem.), M.Sc. (Pharma), is an associate and patent agent in Bereskin & Parr LLP's Patent Practice Group. She can be reached in Toronto at 416.957.1170 or abiebermcneil@bereskinparr.com. [1] Implementing Regulations of the Patent Law of the People's Republic of China, Rule 2
Double Patenting in Canada:
GlaxoSmithKline v. Apotex and "obvious-type"
© 2009 Bereskin & Parr LLP Traditionally, "double patenting" has been a non-issue in Canada. There are no statutory provisions dealing with double patenting – merely language suggesting that one patent is to be granted for one invention. At the Patent Office (CIPO) level, that has been taken to mean that different applications may contain similar claims as long as they are not the same. However, the case GlaxoSmithKline v. Apotex case has brought "obvious-type" double patenting to the forefront with CIPO. The case was decided in the context of Canada's special rules for pharmaceutical inventions and is more than a little curious. The Judge's comments on double patenting may be considered as merely obiter. Nevertheless, the case is being cited by CIPO Examiners as requiring that claims in a divisional application must be non-obvious over claims in a parent application. Some Examiners have even extended that reasoning to co-pending applications where one is not a divisional of the other. It seems illogical to permit Examiners to reject co-pending claims as obvious over one another when they are in commonly owned applications, but not when they are in applications that are owned by different parties. Further, there is no basis for the practice in the Patent Act or Rules and no guidelines as to how obviousness is to be judged on a claim versus claim basis. The traditional view has been that double patenting is a "sin" only if granted patents are misused. In other words, it is a question of how the patents are used after they have been granted – not whether they should be granted in the first place. Quite where this is leading is not clear. Examiners seem reluctant to issue "final" office actions – which would allow applicants to proceed before the Patent Appeal Board. As such, it remains to be seen whether or not the Board will take the view that Examiners should go back to the "co-terminous" test and leave it to the Courts to decide on the "sins" of the patentee. David W. R. Langton is a partner and a member of Bereskin & Parr LLP's Patent Practice Group. He can be reached in Toronto at 416.957.1690 or dlangton@bereskinparr.com Toronto Technology Company Awarded $290-million (U.S.) from Microsoft© 2009 Bereskin & Parr LLP Toronto-based technology company i4i Inc. has been awarded $290-million (U.S.) from Microsoft Corporation by a Texas Court for willfully infringing on a patent belonging to i4i. i4i develops software for authoring and submitting pharmaceutical regulatory documents to governmental agencies such as the Food and Drug Administration in the United States. In 1994, i4i applied for U.S. patent No. 5,787,449 and the patent was issued in 1998. The patent covers computer systems and methods for manipulating the structure and content of a document separately, allowing the content to be presented in different ways by changing only the structure information. i4i alleged that Microsoft’s use of XML in MS Word 2003, MS Word 2007 and other software in Microsoft’s Office suite infringes the patent. A federal jury in Texas agreed and awarded $200 million to i4i based on the market price of a similar standalone product. Following expert testimony, it arrived at a figure of $98 for each individual that used Microsoft’s programs. This week, District Judge Leonard Davis decided that Microsoft had willfully infringed the patent and added another $40-million, plus $37-million in prejudgment interest payments, and post-verdict damages from May at the rate of $144,060 a day. Even more stunning than the award for damages, Davis also ordered Microsoft to stop selling Microsoft Word and other software infringing i4i’s patent by October 12, 2009. A spokesman for Microsoft, said that the court's ruling disappoints Microsoft and that the i4i patent is invalid. The case was filed in March 2007 and has been fought in U.S. Federal Court in Tyler, Texas, a jurisdiction that has heavily favored patent owners in recent years. Microsoft has announced they will appeal. The case will move to the Court of Appeals for the Federal Circuit, which is generally not quite as welcoming for patent owners. The Federal Circuit may delay the injunction, allowing Microsoft to continue to sell MS Word and the other software, but at the risk of an even higher damages award if the appeal fails. Bhupinder Randhawa, B.A.Sc. (Comp. Eng.), J.D., is a member of Bereskin & Parr LLP's Patent Practice Group and Software/High Technology Practice Group. He can be reached in either Toronto or Mississauga at 416-957-1630 or brandhawa@bereskinparr.com.
|
Last Modified:
|
 |
|
|
||
|
Contact Us: Toronto | Mississauga | Waterloo Region | Montréal |