On December 8, 2016, Chinese Supreme People’s Court ruled in Michael Jordan’s favor for his right in the Chinese version of his name “乔丹”， which was previously registered as a trademark by a Chinese company – Qiaodan Sports. However, the Court dismissed Jordan’s challenge to the Romanized version trademark, which is “Qiaodan”. The presiding justice is Vice-chief of the Supreme People’s Court, Tao Kaiyuan.
In an initial decision on November 16, 2016, Chinese State Intellectual Property Office Patent Reexamination Board invalidated Novartis’ Chinese Patent No. 01809781.2 related to treatment of advanced malignancies involving bone and tumor-induced hypercalcaemia and the drug Zometa (zoledronic acid) for lack of novelty and inventiveness. Please note that this decision can be subject to judicial review. Keep posted.
Eli Lily lost a patent infringement appeal at the Chinese Supreme People’s Court last week, 13 years after its initial lawsuit. The Court held that Changzhou Watson Pharmaceutical Co., Ltd. did not infringe Eli Lily’s Chinese Patent No. 91103346.7 directed to olanzapine manufacturing method. Although Eli Lily initially obtained a favorable judgement of infringement and damages of 3.5 million RMB, the Chinese Supreme People’s Court ruling overturned the initial judgement. Notably, the Chinese Supreme People’s Court hired a technical expert from the Patent Reexamination Board of SIPO. see trial video at http://ts.chinacourt.org/1124.html.
In a final judgment on April 26, 2016, Beijing Highest People’s Court invalidated Gilead Science’s Chinese Patent No. 200710196265.3 related to HIV/AIDS and hepatitis B drug Viread (tenofovir disoproxil fumarate) for lack of novelty.
On April 14, 2016, Beijing Intellectual Property Office and Beijing Municipal Government Information Office jointly issued the 2015 White Paper on Intellectual Property Rights Protection in Beijing. White Paper shows that the courts received 13,939 first instance IPR civil cases, an increase of 24.1% from last year; concluded 11, 858 cases, an increase of 8.49% from last year. The first intermediate court and the intellectual property courts in 2015 received a total of 7948 new first instance administrative intellectual property rights cases, a reduction of 18.38% from last year. The Beijing Intellectual Property Office handled 126 patent infringement cases, an increase of 57.5% from last year; investigated 551 cases of counterfeit patents, an increase of 96.1% from last year.
On April 14, 2016, Shanghai Intellectual Property Court released the first white paper. According to the white paper, the Court in 2015 received a total of 285 cases involving foreign, Hong Kong, Macao and Taiwan parties, accounting for 16.13% of total cases of 2015.
The foreign parties to the cases involve the United States, Germany, France, Britain, Italy, Japan, South Korea and Taiwan, Hong Kong, a total of 15 countries and regions and include General Electric, Hewlett-Packard, BASF, Microsoft and other Fortune 500 companies as well as Burberry, BMW, BOSS, LV, Rafi, Gucci, Victoria Secret, ZOJIRUSHI and other international brands.
SIPO publishes new enforcement guidelines for comments on March 4, 2016. The new guidelines include:
(1) Patent Infringement Activity Identification Guideline(《专利侵权行为认定指南》);
(2) Patent Administrative Enforcement Evidence Guideline (《专利行政执法证据规则指引》);
(3) Other Patent Disputes Administrative Mediation Guideline (《其他专利纠纷行政调解指南》).
The deadline for comments is April 5, 2016, see http://www.sipo.gov.cn/tz/gz/201603/t20160304_1246757.html.
For those prefer or advocate judicial enforcement, the administrative enforcement appears to be here to stay. It is important to take advantage of the administrative procedures. According to available statistics, SIPO and its local offices handled 24479 patent-related disputes in 2014, and 21334 patent-related disputes in the first 10 months of 2015.
Shanghai IP Court accepted Apple’s filing of a lawsuit seeking a declaratory judgment of noninfringement against Shenzhen Baili Marketing Services Co. Ltd. regarding Chinese Design Patent No. 201430009113.9.
According to the Court, the suit for patent non-infringement is an extension of suit of patent infringement. Thus, the territorial jurisdiction requirements related to patent infringement lawsuits apply. Shanghai is the place where the alleged infringement occurs. Thus, Shanghai IP Court has jurisdiction under Article 28 of Chinese Civil Procedure Law.
Shanghai IP Court just accepted a patent infringement complaint by Huntsman Advanced Material (Switzerland) Gmbh for alleged 200 million RMB damages against Zhejiang and Shanghai companies regarding Chinese Patent ZL00106403.7. We will keep you updated about further development of this case.
According to recent 2015 U.S.-China Strategic & Economic Dialogue, China commits that the intermediate people’s court in the locality of the antimonopoly enforcement body issuing the administrative decision under the Anti-Monopoly Law (AML) would have jurisdiction over the administrative appeal regarding that decision; provided that when such decision involves intellectual property rights, and the issuing authority is located in Beijing, Shanghai or Guangzhou, the intellectual property (IP) court in that municipality would have jurisdiction over the administrative appeal.