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AWA Magazine 1/2015 1
Awapatent puts down new roots in AsiaREAD MORE ON PAGE 2
THEME:
Asia
AWA Magazine1/2015
Harmonious IP relationships in China – the road to success for SSAB READ MORE ON PAGE 4
AWA Magazine – inspiration from Awapatent for making the most of ideas and innovations
1+1=3 or how fantastic does an invention need to be?
Trademarks: Device elements – no longer a safe path to registration
Analysis of uptake of the WIPO Licensing Feature
The Indian Jungle – an IP perspective
China’s transformation: From manufacturer to innovation front-runner
AWA Magazine 1/2015 32 AWA Magazine 1/2015
THEME: ASIA
Asia – a new chapter in Awapatent’s historyAsia-related news almost completely dominates this issue of AWA Magazine, Awapatent’s client magazine. The reason is, of course, the opening of our two new offices in China in February. Now we can offer IP expertise and local business knowledge in both Europe and Asia.
I am extremely proud of and enthusiastic about our new practice in China operating under the brand AWA Asia. However, working with China is nothing new for us. We have been helping our clients with IP issues in China for a long time and we have worked with Chinese companies and IP firms who need IP counsel in Europe for many years. What is new, however, is that we can now support our non-Chinese clients even better, by being on the ground in China and with the help of our own highly talented team of IP professionals.
In this issue of AWA Magazine, you can read more about our presence in China and meet the person in charge of AWA Asia, Ai-Leen Lim. Also read about how SSAB, a Nordic and US-based steel company, feels about IP protection efforts in China. The company’s IP Manager Daniel Moe explains what is important when working with local IP agencies in the country.
You will also find riveting articles, touching on such topics as the Indian “IP jungle”, written by our IP attorneys in this issue. Venturing beyond Asia, we explain WIPO’s patent licensing feature and the latest from OHIM concerning the assessment of device elements in descriptive trademarks.
I wish you a pleasant read,
MAGNUS HALLINCEO
AWAPATENT OPENED two new offices in Hong Kong and Beijing in February of this year. The primary reason for setting up in Asia is to satisfy the steady influx of client requests for help re-garding intellectual property and market entry re-lated matters in Mainland China and Hong Kong. AWA Asia’s presence will also make it easier to aid Asian (particularly Chinese) clients who need help establishing themselves and growing in Eu-ropean markets.
The CEO and Principal Counsel of AWA Asia is Ai-Leen Lim, an experienced IP lawyer of interna-tional standing and reputation in China and Hong Kong. Ms Lim comes to Awapatent from the glob-al law firm Bird & Bird where she was internation-al partner and head of trademark portfolio man-agement. She is joined by a team of experienced IP professionals from the same firm, putting AWA Asia’s headcount at 8.
“Essentially, AWA Asia is an East-meets-West bridge for our clients who need help navigating the very complex, but extremely important markets in
Greater China and Asia,” Ms Lim explains.“AWA Asia’s offer covers all IP services –
from filing through to registration, exploita-tion, enforcement, dispute resolution, related advisory and regulatory matters (such as on product marketing and promotions), as well as IP transactions. We provide support and on-the-ground advice to clients from all over the world, in Asia time zones, based on our collective experience and familiarity with the markets in which we have been operating,” Ms Lim continues.
AWA Asia’s East-meets-West approach becomes even clearer when you consider the
team’s backgrounds. “Our Beijing and Hong Kong teams are bi-
lingual and bicultural, which helps them to un-derstand our clients’ business needs and translate
them into customised solutions, while guiding them through the challenges of operating within a complex market like China.”
With one foot in Asia and the other in Europe, Ms Lim is all too familiar with the challenges that can arise when companies from different conti-nents want to collaborate.
“The aspects of IP protection in China are very different from those of Western legal systems, such as those in the US and the UK. Navigating the Chinese legal landscape requires a basic un-derstanding of what can be achieved within the parameters of the law and enforcement regime,” says Ms Lim.
“In addition, non-Chinese clients are often more comfortable if they can speak to firms that have in-depth knowledge of the Chinese market and yet can explain the ‘ins and outs’ of doing business in China from a legal and risk management perspec-tive, in a manner that they can understand.”
PRC Trademark Agency in BeijingOne of the strengths of AWA Asia’s Beijing office is that it is a PRC Trademark Agency (TMA) that is able to file, prosecute and enforce trademarks in China without having to use local agents. The business scope of Awapatent’s IP consultancy in Beijing is the widest possible allowed by the Chinese State Administration for Industry & Com-merce (SAIC) for foreign-owned IP firms, and covers trademark agency, copyright agency and intellectual property consultancy services.
“Through our very own TMA, we can assist our clients in all types of trademark matters, save for court filings and advocacy matters,” Ms Lim tells us. “For these services our own team of qualified lawyers works closely with locally licensed law firms on case strategy and drafting as no foreign firm has the right to an audience before the Chi-nese courts.”
“As for patent matters, we will continue to work with our network of PRC IP associates for filing and litigation whilst we develop a business model for this area of practice in China.”
In addition to traditional IP services, AWA Asia also offers clients support in corporate, commer-cial and regulatory issues for those seeking to in-vest in and set up in Asia.
“These are not ‘pure’ IP issues, but we still offer them since our clients often request such help to bolster their confidence when they start moving into China,” says Ms Lim.
“The business culture and legal environment in China is unlike what our clients are accustomed to back home. In general, foreign companies often rely on local advisors who can ‘hold their hand’ while they pursue their business objectives.”
Chinese IP courts establishedEuropean and US companies have previously had a lot of trouble with Asian companies, in-cluding those from China, copying them. Coun-terfeiting is still a widespread problem in China. However, the Chinese government is working hard to strengthen IPR protection and improve the IP legal system.
“Exciting times lie ahead for the IP landscape in China,” says Ms Lim. “After all, we are only five years away from 2020, by which time China wishes to be in a position to be able to say that it is a knowledge-based economy, and no longer the world’s factory.”
At the end of 2014, China announced the long-awaited establishment of three specialised
After 118 years in Europe, Awapatent has now established itself in Greater China. Having two new offices in Hong Kong and Beijing respectively means that our clients will receive even better assistance on location in Asia. Get to know AWA Asia and meet the person in charge of our presence in Asia, Ai-Leen Lim. TEXT: ANDREAS GRUVHAMMAR PHOTO: TIAN YANQING
ABOUT AI-LEEN LIM:Ai-Leen Lim, CEO and Principal Counsel of AWA Asia, is mainly based in Beijing. Her experience spans a broad range of industry, including food, FMCG products, personal care, fashion, electronics, media, real estate, financial and professional services sectors.
IP courts in the Tier 1 cities of Beijing, Guang-zhou and Shanghai (read also separate text on page 7).
“This is a major step forward in relation to China’s judicial reforms. Generally speaking, IP professionals in China are feeling upbeat about these very welcome developments. They see many potential advantages for IP owners flow-ing from the introduction of these new IP courts, such as unified trial standards, more consistent rulings, more specialisation and expertise,” says Ms Lim.
A fast-growing IP nationThe Asia Pacific including Greater China is a growing region, both IP-wise and economically. Recent years’ activity in trademarks and patents in China has been very high and its ambition is to become a country with a high degree of high-technology innovation and production. For several years, China’s research budget has sur-passed that of North America, and China’s pat-ent office is now the world’s largest. According to WIPO, China ranks among the top in terms of global IP protection of patents, trademarks and design.
“Chinese companies are not only increasing their IP filings, but they are also actively relying on their IP portfolio in enforcement activities,” Ms Lim says. “Over the past few years, Chinese companies have been more active in litigating in the US and Europe than ever before, warranting a whole new look at the China IP landscape and Chinese companies.” ■
AWA Asia– Awapatent’s arm in Asia
AWA Asia’s Beijing office is a PRC Trademark Agency that is able to file, prosecute and enforce trademarks in China without having to use local agents.
We provide support and on-the-ground advice to clients from all over the world, in Asia time zones.” Ai-Leen Lim
AWA Magazine 1/2015 54 AWA Magazine 1/2015
AS A FOREIGN COMPANY in China, the Nordic and US-based steel company SSAB (Swedish Steel AB) has learned the importance of estab-lishing local harmonious relationships in order to succeed in doing business in the country. SSAB has been active in China for many years and has a research and development facility in Kunshan outside Shanghai, where products are tailored to
the needs of Asian customers. The facility is one of five in the group tasked with developing new steel products and applications in close collabo-ration with customers.
“In addition to working on the basic properties of our steels in order both to strengthen them and reduce their weight, we run various R&D projects together with our customers. The focus
is on developing new applications for our steel products in the manufacturing industry and for construction projects,” says Daniel Moe, Head of IP at SSAB.
Strong competition on the Chinese marketOn the whole, competition in the market for steel products is fairly intense in China. However, SSAB has the advantage of supplying mostly high-strength steels, which are not subject to the same fierce competition as standard qualities.
SSAB’s roots extend almost 140 years back in time, to when the first ironworks that would later form part of the SSAB Group (formally es-tablished in 1978) began operations in Sweden. Since merging with the Finnish steel company
Good relations with local partners – the key to success in ChinaThe steel company SSAB has operations in China and works directly with Chinese partners on IP-related issues. As SSAB is so heavily dependent on its local IP consultants in China, it is essential that the company feels able to rely 100 percent on the advice it receives. TEXT: ANDREAS GRUVHAMMAR PHOTO: BO BJÖRKDAHL/SSAB AND ERIK SVENSSON
Ruukki in 2014, SSAB has a presence in around 50 countries and more than 17,000 employees worldwide. Steel production takes place in Swe-den, Finland and the USA, but the group also has the capacity to process and finish a variety of steel products in a number of other countries, including China.
The core of SSAB’s business activities is the production of advanced high-strength steel prod-ucts specially adapted to meet stringent require-ments. The group also works with the distribution of steel and with construction solutions for the building industry.
Good relations importantThe importance of maintaining harmonious rela-tions with Chinese partners applies equally to the group’s intellectual property activities. Daniel Moe is responsible for all aspects of intellectual proper-ty at SSAB, not only the group’s IPR portfolio and IP strategy, but also for the processes that pave the way for product innovations within the group. Experience has taught him that good relations with local partners are crucial for success.
“It’s the key to effective collaboration – not only in China but in every other country, too. To a very large extent we are in the hands of our local IP consultants, so we need to be able to attach great faith to their assessment of the situation. That means relying on them and the advice they give us in all sorts of circumstances.”
According to SSAB’s IP strategy, the company must safeguard its essential IP rights in all coun-tries where its products are sold. SSAB has an extensive global portfolio of brands and around 60 patent families. However, much focus is put on the use of business secrets.
“A great deal that relates to the processes behind steel production is protected as trade secrets. These processes are at the heart of our work to develop the high-strength steel segment,” Moe explains.
SSAB also has patents relating to how its steel is used in different types of constructional solutions.
“These patents can be used as sales arguments in our marketing. They help create the right condi-tions for us to be able to sell more steel,” he adds.
Daniel Moe’s experience of the Chinese IP sys-tem is positive. He sees no serious obstacles to prosecuting and enforcing the company’s IP rights in China. In this respect, however, he is especially grateful to have the state authority SAIC (see sep-arate fact box) as a help to resolve any problems relating to trademark issues.
“According to Chinese Trademark Law, if a dis-pute arises from a trademark infringement case, the plaintiff can seek help from the courts or SAIC. SAIC is a more efficient solution in terms of time, and is more flexible and less complex, especially when the case is not serious enough to constitute a criminal act. SSAB and its partners enjoy good relations with many local AIC officials,” Moe says.
THEME: ASIA
SSAB’s blast furnace in Oxelösund, Sweden
THEME: ASIA
IP courts – an interesting development in ChinaWithout going into details about the extent of any IP infringements in China, Daniel Moe does not deny that they have occurred. However, the com-pany’s Chinese IP consultants have been able to deal with any situations that have arisen in a way that has ultimately benefited SSAB.
Daniel Moe is also positive about the IP courts currently being set up in China in an attempt to ensure greater consistency in the judgements that are handed down. The three courts in Bei-jing, Shanghai and Guangzhou began to consider their first cases early in 2015.
“From my point of view these courts repre-sent an interesting development,” Moe says. “As
a general rule it is always an advantage – in any country – to have a handful of judges who spe-cialise in IP law.” ■
Daniel Moe, Head of IP at SSAB
ABOUT SSAB• Steel from SSAB is used in earth-moving
plant, mining equipment, cranes, buildings, wind turbines, vehicles, etc.
• 17,300 employees in 50 countries• Headquarters in Stockholm, Sweden• Listed on the NASDAQ OMX Nordic
Exchange in Stockholm and also in Helsinki, Finland
ABOUT SAICSAIC (the State Administration for Industry and Commerce) is a national Chinese authority responsible for market supervision/regulation and related law enforcement through admin-istrative means. SAIC has a broad remit, for example in the fields of enterprise registration, competition, consumer protection, trademark protection and in combating economic illegali-ties. The authority is of central importance for anyone wishing to do business in China.
These patents can be used as sales arguments in our marketing. They help create the right conditions for us to be able to sell more steel.” Daniel Moe
AWA Magazine 1/2015 76 AWA Magazine 1/2015
NEWS ITEMS FROM ASIANEWS ITEMS FROM ASIA
IN 2014 THE NUMBER of patent applications filed with the European Patent Office (EPO) by Chinese companies rose by 18.2 percent. This means that almost one out of every ten patent applications to the EPO during the year originated in China. Two thirds of all applications filed with the EPO come from countries outside Europe, and among these it is China that accounts for the greatest percentage increase. However, the USA and Japan still lead the field as far as the actual numbers of applica-tions are concerned.
As regards international patent applications with-in the framework of the Patent Cooperation Treaty (PCT), China overtook Germany in 2013 to become the third largest user of the PCT system after the
Steep rise in internationalIP applications filed by China It isn’t just the number of domestic IP applications that has risen steeply in China in recent years. Chinese companies are now also making increasing use of the international registration systems for patents and trademarks.
USA and Japan. The number of PCT applications from China rose by 18.7 percent during 2014. In addition, two of the top three PCT applicants in 2014 were from China – Huawei (1st) and ZTE (3rd).
China is also one of the most prolific users of the Madrid System for the international registra-tion of trademarks. In 2013, the volume of Chi-nese applications soared by 36.4 percent, cata-pulting China above both the UK and Japan and into sixth position. However, in 2014 China saw a decline (-5.5%) and now occupies seventh place.
Statistics from OHIM show a similar steep rise in Chinese applications for European trade-marks. A 27.4 percent increase in 2014 means that China is now the third biggest user out-
side the EU, surpassed only by the USA and Switzerland. When the list is expanded to also include EU member states, China now occupies eleventh place in the rankings. ■
Never before have so many Chinese brands featured on the lists of the world’s most valuable brands. Things are not what they once were.
FOR THE FIRST TIME ever, a Chinese brand joined the ranks of brand consultancy Inter-brand’s Best Global Brands 2014. Huawei, a telecommunications company, ranked 94 on their list.
Brand valuation consultancy Brand Finance’s Global 500 List compiles an annual report on the world’s most valuable global brands. One Chinese company actually made its way onto its Top 10 list in 2014, namely China Mobile, ranked 9th. A further nine Chinese brands were placed among the list’s first 100 entries.
Millward-Brown publishes the annual BrandZ Top 100 Most Valuable Global Brands. Internet company Tencent ranked 14th, followed by Chi-na Mobile at 15th and Industrial and Commercial Bank of China at 17th. A total of ten Chinese brands made the list.
Millward-Brown also publishes an annual top list of Chinese brands in China, BrandZ Top 100 Most Valuable Chinese Brands. In the latest re-lease, published in January 2015, the Top 10 List looked like this:
China sets up its first specialised IPR Courts
Chinese brands increasingly stronger internationally
80,000 applicationsUS
Japan
Germany
China
South Korea
70,000
60,000
50,000
40,000
30,000
20,000
10,0002009 2010 2011 2012 2013 2014
European patent applications, by country
1. Tencent (Technology) 2. Alibaba (Retail) 3. China Mobile (Telecom provider) 4. ICBC (Financial) 5. Baidu (Technology) 6. China Construction Bank (Financial) 7. Sinopec (Oil & gas) 8. Agricultural Bank of China (Financial) 9. Petrochina (Oil & gas) 10. Bank of China (Financial)
FOLLOWING LENGTHY PREPARATIONS three courts, all of which have a special focus on in-tellectual property rights issues, were set up to-wards the end of 2014 in Beijing, Shanghai and Guangzhou. By the start of the new year all three had commenced hearing their first cases.
The background to the new IP courts is the central government’s ambition to improve the protection of intellectual property rights in China. The intention is that the courts will expedite legal proceedings and lead to greater consistency in the adjudication of IP disputes. To this end the judges
have specialist competence in IP issues and work exclusively with intellectual property cases.
The new courts hear civil and administrative cases involving IP rights, but not criminal cas-es. One novel innovation is the use of so called technology investigators, a concept adopted from IP courts in, for example, Japan and Taiwan. A technology investigator is employed by the court and has a scientific background. These experts in different fields of technology are able to assist the judges in cases that involve particularly complex technological issues. ■
Source: EPO
AWA Magazine 1/2015 98 AWA Magazine 1/2015
IP BRIEFINGS FROM AWAPATENT
Trademarks:
Device elements – no longer a safe path to registrationFOR MANY YEARS, adding device ele-ments to descriptive words included in trademarks has been sufficient for obtain-ing distinctiveness – non-distinctive words could be registered if only a device ele-ment was added. Of course, the scope of protection would be reduced compared to distinctive word marks and in that sense the value of the trademark was limited.
OHIM has changed and is still in the process of changing its practice regarding device marks including de-scriptive words. The change implies that a device mark including descrip-tive word(s) does not necessarily have the necessary distinctiveness per se. Now, also the figurative ele-ments are evaluated.
A special typeface or simple de-vice element may not suffice in terms of adding distinctiveness. Examples of such are marks consisting of a de-scriptive word written in italics, add-ing a circle around the word, placing a dot above the word or underlining the word. But also other device el-ements may not be sufficient as it was decided in the application for the device mark BEST BUY sought for services in classes 35, 37 and 42
– see T-122/01. The trademark consisted of a yellow price tag containing the words BEST BUY in black. This mark was not accepted for registra-tion and one of the ar-guments is therefore that the trademark “is merely composed of elements which, when examined sep-
arately, are devoid of distinctive character for the marketing of the services concerned. Nor is there any interaction between these different elements which might confer a dis-tinctive character on the whole”.
Simple device elements are not sufficient, but more complex device elements may be. The more complex a device element, the more distinc-tive a trademark. But where is the line between acceptable marks and unacceptable marks?
According to OHIM, it will also consider whether a device element is commonly used within the line of business. However, to what de-gree and how similar? And will the list of goods and services, which is usually affected by the line of business, also be taken into ac-count? I trust that these matters will also be taken into account and if so, the device element may not
be sufficient for registration even though the device element is not banal. This may also be the case if the device element underlines the meaning of the word, even if the device itself is complex. But how about adding further device ele-ments? Or colours? And what about marks already registered, but un-acceptable if applied for today? Will their scope of protection be influenced and how would this be evaluated in conflict cases? Is the value of such trademarks increased or decreased? At this stage, a lot of questions are being raised and practice is still developing.
Still, national practice among the community countries also varies and may be different to OHIM practice. This is the case when comparing na-tional and OHIM practice and may be worth considering when applying for trademarks. However, this may be only for a short period of time. As a consequence of the participation in the Convergence Programme CP3, the Danish PTO is considering chang-ing its practice in the same direction as OHIM in order to harmonise. Also, other national PTOs are in the same process and it is expected that some of the other national PTOs within the EU will change their practice in the same direction. Let me stress that the decision to change Danish prac-tice has not yet been made, but if so
and implemented, this would lead to significant changes.
If the Danish PTO changes its practice, some special fonts that have been accepted before may not be accepted in the future. The prac-tice regarding one colour in combi-nation with ordinary fonts (those that were also not accepted before the proposed changes) may also to some extent be affected and it will be difficult to have such trademarks accepted, if at all. Another example among other proposals is a Danish practice change regarding simple ge-ometric device elements framing or used as a border around descriptive word elements.
Based on the changes and espe-cially when deciding which trade-marks to apply for or which should be used as the basis for oppositions, cancellation actions etc., such con-siderations regarding the strength of the prior trademark are also essential.
We will continue to follow the Euro-pean practice changes as much more attention should be paid to trade-marks that include device elements, and consequently, it is now even more essential to have a discussion on risks, filing strategy and expecta-tions of the scope of protection prior to filing a trademark application.
HENRIETTE VÆNGESGAARD RASCHAttorney at [email protected]
HENRIETTE V. RASCH
IP BRIEFINGS FROM AWAPATENTAnalysis of uptake of the WIPO Licensing FeatureBASICALLY, LICENSING is a permis-sion granted by the patent owner to another entity to use the patented invention on agreed terms and con-ditions, while the patent owner re-tains ownership of the patent.1
The PCT Newsletter published in December 2011 (No. 12/2011) announced that the World Intellec-tual Property Organization (WIPO) was about to launch a new PCT feature in January 2012: applicants interested in licensing the inventions described in their international applications could now request the International Bureau (IB) to make this information available on its PATENTSCOPE website. This feature was developed following a recommendation by the PCT Working Group in June 2010 to establish a system for promoting licensing, including the introduction of a register encouraging applicants to signal their willingness to license their patents.
Since then, applicants interested in licensing their invention(s) have been able to submit the Form PCT/IB/382 “Request for indication of availability for li-censing purposes” or send a letter indicating that the claimed invention(s) is (are) available for licensing. The applicants may also include, in the form or in the letter, further licensing terms. It is possible to submit such licensing indications at any time from the filing of the international application until the ex-piration of the 30-month time period. The licensing indications will be reflected in the bibliographic data relating to the particular application (under the “Bib-liographic data” tab on PATENTSCOPE) but are not part of the published international application itself. A link is provided between the licensing statement
on the bibliographic data page and the content of Form PCT/IB/382 or the letter, allowing third parties to directly access this content; in addi-tion, the licensing availability request is also available under the “Docu-ments” tab on PATENTSCOPE as a separate document.
Evidently, any initiative to boost the commercialization potential of patents is highly commendable. The possibility to signal one’s am-bition to license a patent at an early
stage is likely to be a boon to many applicants, es-pecially those who do not have the capability and/or funds to manufacture or implement the patent’s product or process. By establishing a contact plat-form between applicant (licensor) and company (licensee), the WIPO has taken a step in the right direction in its matchmaking between the two.
But how have applicants responded to this oppor-tunity so far? An analysis of PCT publications over the last 2.5 years reveals that the portion of publica-
tions that actually include an indication of licensing availability is relatively small (see chart). Although there seems to be an increase from the introduction of the feature in January 2012 until June 2014, one might have expected more significant uptake. For example, in June 2014, only 9 of 108,119 PCT pub-lications contained licensing availability information.
In my opinion, the initiative of the PCT Working Group embodied by this licensing feature is praise-worthy – licensing not only creates an income source for the patentee, but also establishes the legal framework for transfer of the technology to a wider group of researchers and engineers, who may, in turn, further advance the technology concerned.1 I believe that one explanation for the relatively low number of licensing indications might simply be a lack of awareness of the opportunity among appli-cants and/or IP firms, and I am convinced that in-terest in licensing opportunities far exceeds the few parts-per-million indicated by the analysis.
LOVE KOČIEuropean Patent [email protected]
LOVE KOČI
1 http://www.wipo.int/patent-law/en/developments/licensing.html
250
150
100
50
0
200
Jan
'12
Feb
'12
Mar
'12
Apr
'12
May
'12
June
'12
Jan
'14
Feb
'14
Mar
'14
Apr
'14
May
'14
June
'14
Jul '
12Au
g '1
2Se
p '1
2O
ct '1
2N
ov '1
2D
ec '1
2Ja
n '1
3Fe
b '1
3M
ar '1
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3M
ay '1
3Ju
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l '13
Aug
'13
Sep
'13
Oct
'13
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'13
Dec
'13
Portion of published PCT applications from January 2012 to June 2014 with indicated licensing availability (ppm)
Source: WIP
O
AWA Magazine 1/2015 1110 AWA Magazine 1/2015
IP BRIEFINGS FROM AWAPATENT
CHINA USED TO be known as “the world’s factory”, but this has certainly changed in recent years. China is becoming an invention superpower and this fact is also reflected in the patent filing sta-tistics, where China has over-taken Germany and become the third-largest filer of international patent applications, also known as PCT applications. From 2013 to 2014, the growth in the filing of PCT applications originating from China amounted to an impressive 18.7%, not least thanks to Huawei Technologies and ZTE Corporation, which together filed more than 5,600 PCT applications during 2014.
Despite these impressive numbers, there is still some way to go before China can be considered a truly dominant player on the international patent scene. The number of PCT applications originat-ing from China still only constitutes a little over 3% of the number of national Chinese invention patent applications filed by Chinese applicants and each PCT application only results in 1.18 na-tional/regional phase applications on average. In comparison, a PCT application from a European country results in 3–4 national/regional phase ap-plications on average.
One factor that has had a great influence on the rapid increase in the number of patent appli-cations is the strong political attention, which has resulted both in subsidies being given to small and
medium-size enterprises filing patent applications and in the formulation of specific targets for how many patent applications should be filed. This has undoubtedly resulted in the filing of several patent applications that either did not relate to actual inventions or where the interest in obtaining patent protection outside China was not ac-tually particularly high.
However, we see a clear trend to-wards an ever-increasing quality in the patent applications originating
from China. Combined with an equally increasing interest in protecting Chinese inventions outside China, this will no doubt result in more foreign patents being granted for Chinese inventions in the coming years. Europeans will therefore have to focus even more on patent applications orig-inating from China in the future. Not only when making freedom to operate analyses, but also in order to identify potential business partners with a different perspective on the world.
VIBEKE WARBERG ROHDEEuropean Patent [email protected]
VIBEKE WARBERG ROHDE
China’s transformation:
From manufacturer to innovation front-runner
The Indian Jungle – an IP perspective“Now these are the laws of the jungle, and many and mighty are they…” – Rud-yard Kipling wrote these lines over 100 years ago in his “Law for the Wolves” from the famous Jungle Book. As IP practi-tioners, we are con-stantly reminded of the complex nature of today’s Indian IP jungle and the many and mighty laws therein. This article will discuss some of the pe-culiarities of the Indian patent laws focusing mostly on differences in patenting practice between Europe and India.
India is a WTO member and has signed the TRIPS Agreement, which provides patent protection for a pe-riod of 20 years from the filing date of the application. In addition to the
typical requirements for novelty, inventive step and industrial application, the sub-ject matter of the invention must more-over not fall under one of the (many!) classes excluded from patentability, the best known be-ing the Section 3(d) exception relevant to
many pharmaceutically active com-pounds, which holds i.a. that a new form of a known substance is not an invention unless it shows “en-hanced efficacy”.
Indian case law (Glivec case: Novartis vs. Union of India) has established that “efficacy” refers to therapeutic efficacy, which means that arguments for inventive step accepted under EP law like e.g. higher stability of new crystalline
compounds or salts will not be accepted as “enhanced efficacy” under Indian law. On the other hand, improved bioavailability is specifically mentioned in Glivec as not ruled out as an example of “en-hanced efficacy”. Thus some hope still exists!
India does not permit claims to a method of medical treatment, nor claims presented in 1st or 2nd med-ical-use format. Claims to a phar-maceutical composition containing two or more active components may be permitted, provided 1) all the active components and their concentrations are specified in the claim and 2) support for an unex-pected synergistic effect is pro-vided in evidence of an enhanced efficacy of the claimed composition in comparison to known composi-tions. Such comparative data (i.e. not stand-alone) must be present in the application at filing in India.
India does not allow for utility mod-el protection, but does allow for “Patents of Addition” that relate to improvements or developments of the invention to which the pat-ent application or granted patent relates; the subject matter does not have to involve an inventive step over the parent patent or applica-tion, but must share the same in-ventive concept and have absolute novelty. The term of a Patent of Ad-dition is the unexpired term of the main patent. No annuity is payable. Patents of addition should be con-sidered as an interesting option for European clients.
Publication of the unexamined In-dian application occurs at 18 months after filing; an examination for nov-elty etc. is subsequently conducted before a decision is made concern-ing whether to grant the application. Typically this process takes five to eight years. In contrast to European
practice, pre-grant opposition may be filed at the IPO by any party, and without payment of fee. Post-grant opposition may be filed within 12 months of grant at the Indian courts but only by an “interested party”, and can be a very long-winded af-fair. The grounds for both pre- and post-grant opposition include i.a. the right to the invention.
Once the patent is granted, India has a working requirement: Every
patentee and licensee has to fur-nish annual statements regarding the working of the patented inven-tion on a commercial scale in India. Importation does not count towards the working of the invention. Com-pulsory licensing may be granted to local Indian companies, i.a. in case working requirements are not met or if the patented invention is not available to the public at a “rea-sonably affordable price”, for which
reason India granted its first com-pulsory license ever to the Indian pharmaceutical company NATCO against Bayer Corporation in 2012.
In summary, India’s IP laws can be seen as a balancing act between on one hand a desire to fully com-ply with WTO/TRIPS requirements, and on the other providing afforda-ble medicines to its vast numbers of poor people. India, however, also offers exciting opportunities
in the electronics, automotive and computer science areas where the quickly growing Indian middle class wants access to new, imported products that should be protected by patents, designs or trademarks. Please contact Awapatent if you need strategic advice on how to protect your IP rights in India!
MICHAEL BECH SOMMEREuropean Patent Attorney [email protected]
MICHAEL BECH SOMMER
IP BRIEFINGS FROM AWAPATENT
JULIA MANNESSON
IT IS EASY to think that an inven-tion needs to be something ex-traordinary in order to fulfil the re-quirements for inventive step. One might be discouraged when read-ing definitions of inventive step: the invention cannot be obvious to a person skilled in the art and it should involve the exercise of any skill or ability beyond that to be ex-pected of a skilled practitioner in the relevant field of technology.
But if we take a look at a couple of examples of what is considered to be obvious, you will probably agree that such inventions are not inventive.
A first example is using a well-known equiv-alent such as exchanging an electric motor in a pump for a hydraulic motor.
A second example is filling a gap in what is described in the prior art. If for example a prior document describes a building structure of light-
weight material, the same structure but made of aluminium would then not be inventive.
A third example is juxtaposition or association of known devices or processes functioning in their normal way and not producing any non-ob-vious working inter-relationship. This could e.g. be a machine for produc-ing sausages consisting of a known mincing machine and a known filling machine disposed side by side.
But then what is considered in-ventive? In short, inventive step would be recog-nised for the application of known measures in a non-obvious way. A new use of a known device or material that involves overcoming technical difficul-ties not resolvable by routine techniques would also be inventive. Additionally, a known working method or means when used for a different purpose that in-volves a new, surprising effect would be considered inventive. Let us take a look at a couple of examples.
A first inventive example is the widely known spaghetti spoon. A spoon and a fork, the prior art, have been combined in a new and non-ob-vious way into a tool that simplifies the serving of spaghetti.
A second inventive example is a cup with a handle. Before having a cup with a handle, fingers got burnt when drinking hot beverages. An obvi-ous modification would be to make the wall of the cup thicker. But by, instead, adding a handle, the cup is rendered inventive.
A third example is an adjustable spanner or monkey wrench. A prior art one-end wrench has a very limited field of use due to the fixed dis-tance between the jaws. A double-ended wrench provides different-sized openings at each end and would be novel. An adjustable spanner, however, is inventive.
To sum up, one plus one needs to equal three.
JULIA MANNESSONEuropean Patent [email protected]
1+1=3 or how fantastic does an invention need to be?
70,000
52,500
35,000
17,500
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United StatesJapanChinaGermanyRepublic of KoreaFranceUnited KingdomSwitzerlandNetherlandsSweden
PCT applications from the 10 most active countries
Source: WIP
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AWA MagazineAWA Magazine is published by Awapatent.editorial staff: Birgitta von Friesendorff, Yana Broberg, Jytte Prieem Balle and Andreas Gruvhammar address: Box 5117, 200 71 Malmö, Sweden phone: +46 40 98 51 00 fax: +46 40 26 05 16 e-mail: [email protected] internet: www.awapatent.compictures: Andreas Offesson/Awapatent, Thinkstock Copyright © 2015 Awapatent. All rights reserved.
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