A comparison of patent provisions: India v China

CHINA

As a country with written statute laws, China enjoys the inherent advantages of them, such as a complete structure and rigorous logic. However, these laws have their own limitations, which are partly reflected in the gap between the universal enforceability of the laws and the diversity of individual cases. In addition, the legislation is a result of social changes that inevitably have a hysteresis quality.

In this regard, the case guidance system can play a role to a certain extent in bridging between the broad extension of legal rules and various specific cases. It can respond in a timely and effective way to all kinds of emerging social conflicts with authority, as only the Supreme People’s Court can select and issue any guiding cases.

It is clear that case guidance can play an important role in unifying the application of laws across the country, especially in response to new social developments accompanied by complicated disputes.

This article takes some specific cases handled by the author as examples of how to use the case guidance system in intellectual property (IP) litigation.

LEGAL BASIS

It is believed that the Supreme People’s Court initially started to explore the possibility of introducing a precedent case system in 2005. In the following 10 years, the apex court continued this effort and issued several regulations on guiding cases.

Nowadays, the cases cited by interested parties can be taken into account by all levels of courts across the country. Some of these cases must be considered if they are guiding cases issued by the Supreme People’s Court. Four categories of precedent cases can be used as guiding cases in the trial, including:

1. 1. The guiding cases issued by the Supreme People’s Court;
   2. The typical cases published by the Supreme People’s Court and the effective judgments made by the Supreme People’s Court;
   3. The reference cases issued by the higher courts within the jurisdiction and the effective judgments made by the higher courts; and
   4. The effective judgments made by the relevant court or the appellate court.

The guiding cases issued by the Supreme People’s Court have the highest priority and must be taken into consideration by the court. The court must explain the reason why it concurs with the guiding case or not in its sentence if a category 1 case is cited by the interested party in the trial. For other categories of guiding cases, the court may or may not refer to the guiding case without any limitation to an explanation of doing so.

IP LITIGATION

Although a relatively complete IP system has been established in China, large-scale IP litigation has only appeared in the past decade. Compared with traditional civilian and commercial disputes, IP litigation is still a new type of lawsuit. Therefore, it is common to see new types of disputes as well as controversial issues in IP litigation, which in turn tends to cause differences in the application of laws.

Moreover, IP litigation includes a considerable number of technical cases as technology constantly advances. The challenges brought about by these new technologies to social and legal systems are becoming increasingly obvious.

The advantage of the case guidance system lies in bridging the broad scope of the legal rules and the ever-changing details in individual cases by using prior cases. Guiding cases help to achieve uniformity in the application of laws across the country.

In IP cases, distilling the apparent and onerous facts into legal points and making factual and legal preparation for each of the points are always necessary processes. However, is it necessary to carry out the search for precedents for all the factual and legal aspects? This article holds that the answer is clearly no.

China is a country with statute laws. Therefore, in the case that the exact and suitable rules can be located in the existing laws and regulations, there is no need to search for precedents, and the case can proceed based on the relevant laws and regulations. The precedent is better used in complicated and controversial aspects of a case.

Although the need to search for precedents has been identified, the search is still an issue worthy of careful study. Real-world disputes are complex, and reflecting them in words can be complex and even open to interpretation. One or two key words may not give the best result.

This puts higher demands on the comprehension of the litigation team, especially in a country with such a huge number of laws and regulations, and where many attorneys are not accustomed to case searching.

The core of a search lies in accurately grasping the relevant legal points under the ever-changing apparent facts. Taking a case handled by the author as an example, the aim of the search was the doctrine of equivalence when applying to numerical features of a claim.

The precedent the author’s team finally locked onto was a Supreme People’s Court case in which the guiding point summarised officially by the court was how to solve a partial overlap between the protection scope of an independent claim and its dependent claims in the trial – nothing to do with the doctrine of equivalence.

In this case, the equivalence of the numerical ranges in the independent claim had been addressed and explained, so this case was cited by the team as a relevant precedent. It can be seen from the above-mentioned case that precedent searching makes higher demands of an attorney’s comprehension of the essence of the facts. And of course, being familiar with the guiding cases issued by the Supreme People’s Court is also important.

USE OF PRECEDENT

After the appropriate precedent case has been retrieved, it needs to be used correctly. Some studies have shown that in actual IP litigation, there are many irregularities in submitting precedents, such as submitting cases from unknown sources, cases with ineffective judgments, irrelevant cases, etc.

In this regard, this article holds that the attorney should first indicate the source and effectiveness of a precedent before going into any details.

A variety of techniques can be used in the detailed analysis. For example, a Chinese attorney may refer to the common law system and use a precedent by comparing the facts, pointing out the applicable laws and asserting the outcome step by step.

The attorney may also go straight to the core of the case and match it with the key points of the decision in precedent cases to have the current case approach a preferable result.

In addition, an analogical argument can be used. In another case handled by the author, the key fact was that a selected range of numerical parameters can produce unexpected technical effects in a patent application. In contrast, a reference document disclosed a different numerical range without showing any unexpected effect.

However, the patent application was rejected as lacking inventive steps with respect to the reference because the examiner held that the numeric range was conventional and could be changed without paying any inventive effort when one skilled person had noticed a similar range in prior examples.

A precedent retrieved by the author’s team showed that even if a selected parameter range of a patent application falls within the range disclosed by a prior reference, the patent application is still patentable if the selected numerical range can result in unexpected technical effects.

Based on the above-mentioned precedent, the team asserted that if the patent application in the precedent is patentable when its parameter range is included in the parameter range of the prior art reference, but can result in unexpected technical effects, the patent application is naturally patentable.

This is because the parameter range that leads to these effects was not previously disclosed, yet it still can produce unexpected results. It was argumentum a maiore ad minus (from the larger-scale argument to the smaller one). The facts and the outcome become very clear, thanks to the precedent case the team found. The adverse verdict on the patent application was then reversed.

CONCLUSION

The case guidance system has been proven to play an important role in refining general rules, unifying judgment standards, forming judicial accumulation, promoting dispute settlement, and limiting improper judgments. The system is also of great significance for parties or agents to better safeguard their rights and interests in practice.

CCPIT PATENT AND TRADEMARK LAW OFFICE

10/F Ocean Plaza

158 Fuxingmennei Street

Beijing, 100031, China

Tel: +86 10 6641 2345

Email: mail@ccpit-patent.com.cn

www.ccpit-patent.com.cn

Back to top

INDIA

India’s evolving IP ecosystem has garnered significant global attention. This article aims to highlight important patent provisions and provide updates on relevant patent-related developments in the country.

FOREIGN FILING LICENCE

India’s patent law includes a provision for a foreign filing licence (FFL), which requires prior approval and has criminal penalties for non-compliance. Despite ongoing discussions among various stakeholders of the patent system about the need to decriminalise such provisions, the FFL requirement remains in effect.

An Indian resident inventor must submit a brief disclosure of the invention to the Indian Patent Office (IPO) before filing the first application outside the country. The IPO will scrutinise the disclosure to ensure it does not pertain to defence or atomic energy, and within three weeks issues the FFL to the inventor, allowing them to proceed with the filing. Alternatively, the applicant can file the first application in India instead of obtaining the FFL from the IPO. If there are no objections from the IPO within six weeks, the applicant can proceed to file applications outside India. If there are any concerns about filing applications abroad, the IPO may issue secrecy directions to the applicant, but this is a rare case.

PATENT FILING AND AMENDMENTS

The IPO accepts applications in English, eliminating the need for translations into native languages and resulting in a significant reduction in overall patenting costs compared to other jurisdictions that require translations. India’s official fees for patent filing are notably lower than most patent offices worldwide.

Indian patent law also allows applicants to drop certain claims when entering the national phase. This flexibility can help save on excess claim fees and expedite the process by removing claims directed towards non-patentable subject matter in India. However, it’s important to note that once the application is filed, any amendments can only be made through disclaimers, explanations or corrections. All amendments must be supported in the specification, and claims cannot be broadened beyond their original scope once filed.

PROSECUTION PROCEEDINGS

The patent prosecution process in India commences with the request for examination. Significant progress has been made in clearing the backlog of pending applications, resulting in faster examination, typically taking less than a year from the date of request.

On receiving the first examination report, the applicant is granted six months to respond to any objections raised. If the applicant successfully addresses all objections, a patent is directly granted. If there are still outstanding issues, an oral hearing is scheduled, providing the applicant with an opportunity to present their case. Following the hearing, a decision is issued. In cases where the decision after the oral hearing is unfavourable, the applicant has two possible remedies. The first is to file a review petition before the patent office, seeking a reconsideration. The second is to file an appeal before a high court, presenting the case to a higher judicial authority for further examination.

DIVISIONAL APPLICATIONS

A divisional application in India can be filed at any time before the grant or refusal of its parent application. Due to the lack of advance notice regarding the disposal of a patent application, it is advisable to file the divisional application at the earliest opportunity. To be considered valid, the divisional application must arise from a parent application that discloses multiple inventions, with distinct claims not overlapping with those of the parent application.

For the independent claims of divisional applications, it is preferable to include at least one novel and inventive feature that was not claimed in the parent application. Additionally, these claims should be adequately supported within the description of the parent application. The decision to file a divisional application can be voluntary, or in response to a lack of unity objection from the IPO. The current position on the maintainability of voluntary divisional applications in India may appear complex compared to other jurisdictions. A recent case, Boehringer v Controller of Patents DHC (2022), established a restrictive interpretation of laws governing divisional applications, requiring that the claims of the divisional application must be derived from the claims of the parent application.

In July 2023 another judge of the IP division found that the aforesaid legal position appears to be not supported by the statutory provisions and therefore referred that question before the chief justice of the high court for constituting a two-judge bench to examine the issues related to the filing of voluntarily divisional applications and on maintainability of claims in divisional that are carved out from the disclosure and not necessarily from claims. The aforesaid question is still under consideration and hopefully, the larger bench would clear the mist around divisional applications in India.

Applicants may have the option to introduce claims meant for a divisional application into the parent application. According to a recent ruling by Delhi High Court in Nippon A&L v the Controller of Patents (2022) and Allergan v the Controller of Patents (2022), as long as the invention is disclosed in the specification, and the claims are limited to the disclosures already made, such amendments should not be rejected, particularly during the examination before grant stage.

If such claims get accepted in the parent application, that should be good enough for the applicant. Otherwise, the patent application will receive an objection for lack of unity or newly added subject matter. Such an objection supplies legitimate grounds for the applicant to pursue the objected claims through a divisional application.

DISCLOSURE OF FOREIGN FILING

Under Indian patent law, this legal requirement can be divided into two distinct parts. The first part, known as the section 8(1) requirement, obligates the applicant to provide a comprehensive list of all corresponding applications filed outside India voluntarily and whenever requested.

These corresponding applications encompass applications stemming from a common priority or Patent Co-operation Treaty (PCT) application, along with all PCT national phases, continuation, continuation in part, and divisional applications within the same patent family. The necessary details must be submitted on form 3 at the time of filing the Indian patent application, or within six months after. If any new corresponding application is filed outside India, its details must be promptly provided to the IPO on form 3 within six months.

The second part, governed by section 8(2), pertains to the requirement of supplying copies of the search or examination reports, and the granted claims of corresponding applications, to the IPO only when requested.

As the IPO has become a providing office for the World Intellectual Property Organisation’s centralised access to the search and examination system, controllers can access reports of corresponding applications through this system.

WORKING STATEMENT

One unique provision in Indian patent law is the requirement of a working statement, which outlines the details of how the patented invention is being used. The government has simplified the format and procedures for this process. The new form 27 no longer necessitates the supply of the “quantum” of patented products manufactured and/or imported into India. There is no longer a requirement to provide details of licences issued in any given financial year in the working statement, or to ascertain whether the reasonable requirement of the public has been met by the patented product.

The due date for filing the annual working statement has been shifted from 31 March to 30 September, and the covered period has also been changed from the calendar year (January to December) to the financial year (April to March). No working statement must be filed for the financial year in which the patent is granted.

Another noteworthy change is that one working statement can now be filed for multiple related patents. This applies when it is not feasible to derive the approximate revenue or value gained from a particular patented invention separately from related patents, and all such patents are granted to the same patentees.

The patent co-owners have the option to jointly file one working statement for one or related patents. However, each licensee needs to file their statements separately, demonstrating how they are utilising the patented invention. Recently, stakeholders have been engaged in discussions to examine if there is a need to incorporate SEP-related information into the working statement format. Patentees should monitor the progress of these discussions for any advancements.

IP DIVISIONS

The Indian government has abolished the Intellectual Property Appellate Board (IPAB), which formerly served as the appellate authority for hearing appeals arising from IPO decisions. Following this, Delhi High Court was the first to establish an IP division to exclusively handle all IP-related cases, including those transferred from the IPAB, and introduce the IP Division Rules and the Rules Governing Patent Suits.

The Madras High Court has also created an IP division, as well as notified the IP Division Rules and the Rules Governing Patent Suits to govern these proceedings. It is expected that other high courts across India may adopt a similar approach. The creation of specialised IP divisions and the implementation of corresponding rules can significantly enhance the resolution of IP matters, offering a more efficient and dedicated platform for addressing IP disputes.

LEXORBIS

709/710 Tolstoy House

15-17 Tolstoy Marg

New Delhi – 110 001, India

Tel: +91 11 2371 6565

Email: mail@lexorbis.com

www.lexorbis.com

Back to top