File a patent in China and claim a Taiwan priority

No matter what was said in the past, if you have first filed a patent in Taiwan (Republic of China), within 12-months' time, you want to file the same patent in China, you cannot claim the priority date of the Taiwan application.

Starting from 22 Nov 2010, you can do that (with a small but).

On 12 Sep 2010, China and Taiwan had agreed to accept and recoginize each other's priority certificate. So for a patent application first filed to Taiwan patent office on or after 12 Sep 2010, the same application can be filed to China patent office after 22 Nov 2010 and claim the priority date of the Taiwan application. When filling in the proper forms, it should state that the first filing office is "Taiwan Region", not Republic of China.

It is good to know that, though two patent offices required filing in Chinese, but in Taiwan, you need to file in Traditional Chinese, while in China, you need Simplified Chinese. And apart from character translation, the use of technical terms are different. Some type of redrafting is required between the two versions.

China prepare to put in more effort to protect IP rights of foreign enterprise

In a news announcement made on 8th November 2010, Chinese authority reinstate it's effort to protect IP rights of foreign enterprises.

A meeting was held in Chongqing City (重庆) on 7th November 2010 on the subject matter. The head of State Intellectual Property Office said that 100 or more policy had been rolled out annually in the last 5 years.

It was felt that China has developed leading edge technology in some of the fields, including energy, high speed train and information technology, as a nation, China should have interest in protecting itself in the IP area.

I hope foreign enterprises really had felt the effect in the past 5 years and give hope in the coming years. However, it is still not an easy task to deal with local authority, including the court and custom office with issues related to IP, not to mention when you have to deal with local administrative officials if there is a factory making infringement goods.

The Chinese news announcement can be found here.

Chinese Nobel Prize winner

Just want to let the world know, we have another Nobel Peace Prize winner of Chinese nationality.

The Nobel Peace Prize winner is now serving a 11-years jail term in a prison in North East China. He was charged for co-signing Chapter 2008, promoting human rights in China.

The gentleman is Dr Xiabo LIU. At time of writing, it is believed that Dr Liu is not aware of the prize announcement, Mrs Liu is scheduled to visit him tomorrow.

A common Chinese saying: Liu, go home and have dinner with your family.

Patent as a collateral

Recently as part of the government policy to encourage invention and application of patent from Chinese inventors, banks in China started to use patent right as part of collateral for a commercial loan. As of September 2010, there are 24 banks and 16 guarantee companies in China accepted such property as collateral.

Currently, the total cumulative loan portfolio of the amount RMB25 billion (around USD3.7 billion) was borrowed in 2000 projects that involved at least one patent right as part of collateral, that is, around USD1.8 million per project. According to the report dated September 30, 2010, the new loans approved in the first eight months of this year tallied to 77 cases that involved 504 patent rights with a total of of RMB 4 billion (around USD 600 million).

However, the report did not disclose the average value of each patent right in each loan and what other assets were involved in the loan application process. So in the end, may be the the banks are still considering the hard asset that are used to pledge the loan, and then throw in any intellectual property just to please the government officials. The report also mentioned that the current policy of using patent right as loan collateral is still at it's pilot stage since December 2008 and we are not sure how aggressive banks and other financial institutions to take on the surge in patent application from Chinese inventors.

China “National” Products – with or without

Do you love your country? This is a question always asked by the authority. How do you define a “patriot”? How about consuming the national brands of products? Well, the names of national brands of products in China usually start with “Kuo” which means “country” or “national” …

“Bank of China” (中國銀行), “Petro China Company” (中國石油天然氣股份有限公司), “National Wine: Gui Zhou Moutai” (國酒貴州茅台), “Chung Hwa Pencils” (中華牌鉛筆) … wait a second, are they really produced by the country?

Some Chinese parents have a preference to name their children starting with “Kuo” (國) (pronounced in Putonghua) or “Kwok” (國) (pronounced in Cantonese) as their first name, it means “country” or “national”. They would usually add another preferred element/meaning as the second name after “Kuo” or “Kwok”, e.g. Kuo-Ming (means “clever”) for boys, Kuo-Mei (means “beautiful”) for girls … wait a minute, are they “made in China”?!

You may consider the above ridiculous, however, it may become necessary after an official notice about products containing the name or trademark as “China”, “country” etc. has been published at the PRC’s Trademark Office, the State Administration for Industry and Commerce (CTMO) on 28 July 2010.

This notice is composed of 3 major parts:

(1) Compliance of Laws/Regulations (法律依據);

(2) Review of trademarks containing the word of “China” (含「中國」字樣商標的審查審理標准); and

(3) Review of trademarks containing the first word of “country” (首字為「國」字商標的審查審理標准).

Ironically, some “national” brands of products exist in the market for a long period of time, causing the consumers (local and overseas) to believe that they are really produced by the country! The best example is “National Wine: Gui Zhou Moutai” (國酒貴州茅台). It is usually served for overseas (especially from USA) presidents, ambassadors and senior officers in China since mid 1970’s.

With the enforcement of this new law/regulation, some existing “national” products which have been in the market for some time would be put in an embarrassing position. Hopefully the brand-building of these “national” products is blossoming in a mutual-beneficial way!

Patent of Invention and Patent of Utility Model in China

For patent applicants in China, or inventors in China, the cost to apply for a patent of Invention and Patent of Utility Model is still a major determination factor. That is why you can see a lot of China originated patent applications are Patent of Utility Model.

This, as a matter of fact, created a large (relatively) number of patent specification that eventually did not go through any examination process. It is just too easy, in terms of cost and process, to get a Patent of Utility Model granted.

We have been approached to provide opinion for value of a granted Chinese patent, with a good story and a patent certificate. Quite often, we cannot put a value on it. This is a polite way of saying that it is worthless.

Testing message for the blog

Hi, Sorry that I have to test the new feed.

Patent applications after publication

I have a couple of calls from different clients related to the publication of patent application (Patent of utility module).

China has a very rigid time schedule, that application are published 18-months after filing date. Anyone who cares to know, can go to the web site http://www.sipo.gov.cn to search for it. That means the invention as described in the application becomes publicly available. Patent applicant may consider to request for examination (if not already done so). Applicant can request for examination within 3 years after filing, failing which, it lapses.

Applicant can withdraw the patent application before publication, then it would not be available to the public, the application and the knowledge related to the invention will remain confidential. Once it is published, then it is no longer confidential information, as the original patent application was intended for 'skilled person of the trade' to understand and to build the embodiment according to what was disclosed in the application. So filing a patent application without going through examination like disclosing your way of building a new invention.

Having said that, there are clients who just want to file an application in China and do not want to spend time and money to go through the patent examination process. There are different commercial considerations for doing this. One being that you have three years' time to claim that you have one 'patent-pending' for the cost of the filing. If the invention is not commercial viable after testing the market for 18-months, applicant can just abandon the patent application.

World Expo Shanghai 2010 - Theme Song: A Challenge or Tribute?

The China government is busy in sending thousands of rescue officers together with food, water, medicine and supplements to QingHai after the horrible earthquakes happened on April 14, 2010, also busy in “decorating” this new wound before the opening of “World Expo Shanghai 2010” on May 1, 2010!

Within or beyond expectation, just two weeks before the opening, their theme song “Waiting you in 2010” (2010等你來) has sparkled this mega event. This is not the same case of Beijing Olympics 2008 during which 2 lovely little girls sang the theme song, one with an open identity while the other one was the hidden-singer. This Expo song is presented by various movie-stars, pop-stars and sports-stars from Hong Kong and China.

It was reported that this Expo song is actually a copyright infringed from a Japanese song “Sonomama no Kimi de ite” (不變的你就好) sung by Maya Okamoto in 1996, 15 years ago! A Singaporean composer has compared and commented these two songs that the Chinese one is 97% identical to the Japanese one.

It is widely recognized that the “copyright” issues in China still has room for improvement, this case is particularly interesting and impressive as it may turn out to be a cultural or diplomatic issue.

After the first Expo being held in London in 1851, it is China’s first time to hold the Expo just 2 years after the Beijing Olympics in 2008. Similarly, Japan held its first Expo in 1970 (the second and third time were at 1985 and 2005) which was 6 years after its Tokyo Olympics in 1964. Needless to say, being a host of Expo is an excellent chance to showcase its power as well as to seek for international recognition. Obviously, China seems more powerful, or aggressive as it only requires 2 years to host Expo while Japan made it after 6 years.

In that case, is this new Chinese theme song a “challenge” or simply a “tribute” from Chinese to Japanese? If it is a “challenge”, is it a soft declaration of China’s upgrading international status? If it is a “tribute”, is it a token for appreciation of the Japanese pop-culture?

Nevertheless, it may be a fabulous idea if the Chinese government invites that Japanese singer to present their theme song on its opening …

The “original” Japanese song:

http://www.youtube.com/watch?v=w_GxVPwSTdw

The “revised” Expo theme song:

http://www.youtube.com/watch?v=lijrVXnCstQ

The “comparison” or “mixed” version of Japanese & Chinese song:

http://www.youtube.com/watch?v=ShWNv48CzQk&feature=related

New address - with new screen design

Now I have the new address operational, however, the blogger.com supplied migration tools is still running. I have changed the theme a bit. See if this is OK with you.

New address

I am taking this weekend to change the url address of this blog. This is a new function / requirement by blogger.com that I have to change the new blog address to:

http://hkpatent.cip-hk.com.

My blog will go to the new address latest coming Monday. Hope to see you there. I was told the old link will have pointer to redirect you to the new address.

Number of patent applications in China

I attended a Symposium on China patent law jointly organized by HK and Guangdong Intellectual Property offices. Interesting things were learnt.

In the recent weeks, there were news about the world wide patent applications and the corresponding figures for patent applications filed to State Intellectual Property Office of PRC ("SIPO"). China is very proud of ever increasing number of cases. However, there were other angles to look at these.

We learnt that there were about 9000 staff in SIPO and we don't know how many of them are patent examiners, but it must be less than 9000. The number of practicing patent attorney in China is about 6000. There were 314,573 invention patent applications (commonly known as utility patent in US) filed in 2009. That means on average, each patent attorney handles about 50 patent application in one year. Furthermore, the boss of one agent firm told the Symposium that for a patent attorney to have a reasonable income, they need to handle about 100 cases per year.

I understand that for those patent attorney who handles 100 cases per year, they must be offering a cut-throat price to their customers. How come? I met some Hong Kong inventors recently in the annual meeting of the Hong Kong inventors group, I was told that they were able to get a patent agent to handle: drafting, drawing, filing and official fee of a utility patent (something like provisional patent in US) in China for about RMB2600, in today's exchange rate, is about USD380.

Now you understand why they need to handle 100 cases per year in order to have a reasonable income. Also, you can understand there is always room for price cutting if you want something from China.

Sorry my customers: I don't cut my price to meet my competitor. You can go somewhere else to get a cheaper service, not from me. Also, I strongly advise you not to file utility patent in China, instead you should file an invention patent application (which is more expansive).

Google finally left China

Is there a Google search engine in China? Yes or No?

Here is the story. Rumor has it, about 40 years ago. When Henry Kissinger visited China in the ice-breaking diplomacy, Chinese Premier Zhou Enlai was asked whether there were sex workers in China. Premier Zhou said, "Yes," with a pause, and he continued "in Taiwan". And the whole China admired Zhou's wisdom, as he did not admit that there are sex worker in mainland China, in addition, restate their position that Taiwan is part of China.

Now, any one who asks "Is there a Google search engine in China?"

The answer is "Yes", .... "it is in Hong Kong."

DAB Trademark – Class “25” & “Class 41”

Another Chinese New Year tradition in Hong Kong is, going to the “flower market”!

It usually starts 5 or 6 days before the Chinese New Year, ends on the dawn of the New Year Day. The flower-owners and other stall-owners would usually drop their prices towards the dawn on the last day with a view to get everything sold. They would even destroy the flowers, tangerines etc as “want money don’t want goods” is their collective goal!

There are several flower-markets (Causeway Bay, Mong Kok, Kwun Tong, Tsuen Wan etc) and the biggest one is Victoria Park in Causeway Bay where a few pan-democratic parties would normally make use of this good chance to promote their own political parties.

After the recent “5 District Resignation” which aims at witnessing their belief on “universal suffrage” by Civic Party (“CP”) and League of Social Democrats (“LSD”) (the two political parties in Hong Kong), supporters have different ideas to support such movement. They put forward a sale of their design of tee-shirts (2 different style) of which the profits will go to the funding of this new political campaign in a booth in Victoria Park. In one of the two tee-shirt design, there is a similar trademark (both form and color) of their competitor – Democratic Alliance for the Betterment and Progress of Hong Kong (“DAB”). This particular design is to put a mark that is similar to DAB’s trademark in the left-hand side, then following with a famous Chinese 4-word proverb whereas the last word means “shame” is missing. For the non-Chinese reader, that 4-words are always used together. Thus by quoting only three words, that implies “shameless”.

The idea is to use the DAB registered trademark and slightly modify it to make it looks different for the knowing, or if you really want to find out the different, but looks the same for the lay man. That is, the tee-shirt would implies that DAB is shameless. Subsequently, DAB was offended!

DAB has lodged a complaint as they are of the view that their trademark has been infringed. In the afternoon of 12 February 2010, the last second day of the flower-market, a few officers from Customs and Excise Department went to this booth to collect the unsold tee-shirts with a view to investigate the intellectual property infringement.

The “Trade Mark Record” as obtained from the Trade Marks Registry, Intellectual Property Department, shows that their registration number is 200102834, they registered for it in 1999 with the expiry date on 26 April 2016. They are registered as “Class 41” of which the specification reads: “arranging and conducting exhibitions, conferences, public meetings and group discussions for cultural and educational purposes; arranging and conducting lectures relating to culture and education; publication of books, magazines and printed matters; conducting and arranging conference, exhibitions, public meetings, group discussion and lectures relating to political affairs and elections, and the safeguard and maintenance of social and political stability in Hong Kong; all included in Class 41.”

Unfortunately, they have not registered for “Class 25”! If they do, they would have the exclusive right to use the mark for tee-shirts or other clothing. Without that, it can become a “passing off” case, they may consider to take civil proceedings. Infringement and passing off are different concepts in terms of intellectual protection and the whole case of Customs and Excise Department taking such a high profile action can be an interesting topics in the coming few weeks.

For further information, “Class 1” to “Class 34” are for “goods” while “Class 35” to “Class 45” are for “services”. Details can be found here.

Now it is time for me to make some purchases at the flower-market and check out other infringemnt cases! Well, as I am told that I look like Andy Lau, please do not ask for my autography or taking photos with me if his fans meet me there!

See you soon in the year of Tiger!

“Big Cleaning” with Pomelo-Leaf before Chinese New Year

One of our Chinese New Year traditions is, to clean our bodies and hair with pomelo-leaf (碌柚葉)! The best day to do the cleaning (not only body and hair, also the household furniture and utilities) is usually the 28th day of the last month before Chinese New Year, i.e. 11 Feb 2010 according to the Christian calendar in this year.

It is believed that pomelo-leaf is able to wash away the dirt, to cast away the evil spirits and to get ready for the brand new year!

Incidentally, just the right timing to see a half-page announcement of a “Pomelo Leaf Body Wash” in one of the local newspapers on 10 February which is the last fourth day before Chinese new year!

This half-page announcement mentions about the “Utility Patent” and “Trade Mark” in both China and Hong Kong. They started to apply for the patent in 2003 and successfully got it in 2005.  

While reading between lines, there is a hidden story of the Lee’s family for three generations. This family is given a name as “The King of Pomelo for three generations” (三代柚王) whom claims to conduct research and development on pomelo-leaf for a few decades. They have successfully added a particular element “flavonoids” (類黃酮) which is refined from pomelo-leaf into their product toiletries (including body wash, shampoo and facial wash).

This announcement serves to remind the public that there is only one brand of “pomelo-leaf” as well as to declare that this is now a legal case for any infringement.

Apart from using their specific products, I plan to buy some original pomelo-leaf (usually a few bunches for 10 Hong Kong Dollars) from the market for my body-cleaning tonight! I believe no one from the vegetable stalls will care about the “utility patent”, “trade mark” of the fresh pomelo-leaf.

Hope everyone has a brand new year of Tiger!

P.S. For those who want to check it out, the announced patent is CN03146856.X.

Google-China – Is “leaving China” a Whistle for a “Cyber War”?

Since the announcement of “A New Approach to China” by David Drummond (Senior Vice President, Corporate Development and Chief Legal Officer of Google Inc) on January 12, 2010, the incident is not merely a commercial one, but is upgraded as a whistle for a “Cyber War” in a fortnight!

Apart from the possible “Cyber War”, it also ignites again the crisis of the diplomatic relationship between China and the USA just within two weeks. It is interesting to note that USA is making this incident more juicy and spicy while China remains silent!

When Hilary Clinton, US Secretary of State made an announcement of the same during her official visit at South Pacific on January 21, 2010, it indicates that the trust on cyber territories between China and the USA is collapsing. Furthermore, it is developed into a “Presidential level” when Barack Obama expressed that he is “troubled” about Google-China is being “cyber attacked” and he “wants answers”!

Even the Office of the United States Trade Representative (美國貿易處) is considering to lodge a complaint to World Trade Organization (“WTO”) about China’s intervening the cyber limitation which is violating the international trading ordinances.

One of the major differences in their approaches is, possibly that there is a huge variation on the definition of “cyber privacy concept” between China and the USA.

There are many USA enterprises which are establishing their offices in China, for instance, the garment industry, the luxury brands and the pharmaceutical products. If Google-China is to withdraw from the territory, it may be a “green light” for other corporations as these industries require a high degree of intellectual property rights (“IP rights”).

Comparing with other hot issues like human rights, Tibet, sale of military weapon to Taiwan etc., this particular “cyberattack” seems playing a more essential role for USA enterprises to leave China. As a majority of Chinese are concerned about their “face” issues, the USA could take this incident as a “stepping from the stage”, i.e. to provide a good chance for those corporations to leave China in a graceful manner.

Furthermore, as quoted from an article “In Digital Combat, US finds no easy Deterrent” of New York Times on 25 January 2010,

“ … After that, the trail disappeared into a cloud of angry Chinese government denials, and then an ugly exchange of accusations between Washington and Beijing. That continued Monday, with Chinese assertions that critics were trying to “denigrate China” and that the United States was pursuing “hegemonic domination” in cyberspace. These recent events demonstrate how quickly the nation’s escalating cyberbattles have outpaced the rush to find a deterrent, something equivalent to the cold-war-era strategy of threatening nuclear retaliation. …”

You may see the original article here.

Dramatically, Barack Obama has announced their coming decision of the sale of military weapon to Taiwan in a high profile, which is after the last sale from President George Bush in 2008. At the same time, with the recent state-visit of Taiwan President Ma Ying-Jeou to Central America, the diplomatic relationship among China, Taiwan and the USA will draw more attention from the world-stage.

“World Expo Court”, a Privilege to World Expo Shanghai

“Welcoming World Expo, Fighting Against Piracy”

The “Shanghai World Expo” is definitely a milestone in the contemporary history of China at the last year of the 21st century’s first decade.

The term “World Expo Court” in the announcement (dated 25 December 2009) from the State Intellectual Property Office (“SIPO”) is absolutely an “eye candy” for me! It seems to be a “privilege” to China as this is tailor-made for the Shanghai World Expo.

This “World Expo Court” will definitely play a special role during the Expo period (i.e. 168 days/half-year running from 1 May to 31 October 2010). What kind of legal cases it will deal with? Does it imply that a great deal of “intellectual property” issues would happen? Who will be plaintiffs and the defendants? All those relevant issues come to my mind, say the logo, trademark, theme-song, the mascot, the tickets (9 different types of tickets) and even the Expo staff, the participants, the audience may occur.

Furthermore, I am also curious about the credibility of the judges, legal clerks, staff, their qualifications, identities, documents, news etc.

There is an old Chinese saying: “There is no silver being buried” which means “someone does something deliberately to tell others that he is innocent”.

Besides being the “world factory”, everyone knows China is a “paradise” for different types of infringement of luxury goods and even food and drinks – sadly to say so.

Can you imagine it is dramatic if a foreign luxury brand finds its fake products in one of the booths at the Expo Shanghai?

If a “World Expo Court” could handle any legal cases or legal disputes incurred during the period, would it be a great chance for them to showcase to the world that there are “Intellectual Property Rights” in China?

It reminds me another famous quote in China in the last decade: “Everything is fake except the liars in China”.

Speedy patent application drafting

I think our company break a record. From instruction to filing: Two days.

Meaning we have about 24 hours to handle one patent application.

Of course, it is not started from nothing. We were presented with a filed US patent, foreign filing right will expire the next day. So we still go though the normal process: (1) translate the US (English) Patent Application into Chinese; (2) rewrite the Chinese Patent Application suitable for filing to SIPO; (3) retouch on patent drawing; (4) fill up the right forms and (5) filing the same to SIPO.

And there are still follow-up actions, including the filing of Power of Attorney and the original Priority Certificate.

The only step we skipped is customer confirmation. We cannot wait for client confirmation because of time-zone difference, and we will fix any error later.

And because the client was thinking and thinking whether they should file the US patent to China, it took them 363 days to think, and we have 2 days to work on it.

And we did not charge extra for this urgent work, because this is a good customer who pay us really fast.

Google is leaving China

I guess everybody knew this already. I just want to pick up (and translate) a few interesting lines that may be non-Chinese reader missed in their daily news.

1. Sending flower illegally.

Once the news was spread around China, there are people in Beijing and Shanghai who sent flower (personally) to Google offices in these two cities. Then certain government departments announced that sending flower to Google offices need pre-approval. That is, a lot of people are sending flower illegally.

2. Someone's comment:

It is not Google leaving China, it is China leaving the world.

3. In twitter, this is the one of the hottest tag: #googlecn.

4. Google removed any filtering in it's search engine in China immediately. All of a sudden, it was reported that search engines of other local Chinese companies also lifted their filtering. Not because they want to support Google. It was reported that they actually use google.cn as their backend (without paying a license fee to Google). What a country of IP protection!

Enjoy the freedom while you can, and tomorrow may be you cannot access gmail in China!