Philip Brooks' Patent Infringement Updates

China's Guidebook for Pharmaceutical Patent Protection

Research and Markets announced today, June 22, 2009, in a Business Wire press release:

The addition of the "China's Guidebook for Pharmaceutical Patent Protection" report to their offering.

China is expected to become the fifth largest drug market in the world by 2010 with a growth rate of 20-25 percent per annum in next three years. As China joins the World Trade Organization (WTO) and integrates more completely into the global economy, it will further open the door to a lucrative drug market for overseas pharmaceutical companies, which attracts more and more overseas pharmaceutical manufacturers and producers to enter such drug market and seize a larger part of such drug market. However, the Chinese social environment for the protection of intellectual property right is complex. The locally produced generics and copy products dominate the Chinese drug market. It is estimated that about 97 percent of the drugs produced by local companies are generics or counterfeits.

Facing such complex social environment and market, most overseas and multinational pharmaceutical companies fear that their imported drugs and pharmaceuticals produced in China will be imitated or copied, in turn, their intellectual property will be infringed and benefit will be violated. What reason incurred such fear of overseas and multinational pharmaceutical companies? Why did Eli Lilly & Company fail in its litigation of patent infringement dispute case in China? Why can Pfizer win in an administrative proceeding against the Patent Reexamination Board of the China State Intellectual Property Office (SIPO) for its Viagra patent? Lack of knowledge of the Chinese intellectual property right system and legislation institution, the cultural difference between China and Western countries as well as the language barriers incurred such result.

Guidebook Highlights

China's Guidebook for Pharmaceutical Patent Protection provides a comprehensive and thorough knowledge of the Chinese patent system relating to pharmaceuticals, the detailed administrative, civil and criminal judicial pathways for protections of patent right, and the design for composition of optimized protection strategies.

• The organization structure of patent authorities and judicial system;

• A comprehensive and thorough knowledge of the Chinese patent system and the relevant laws and administrative regulations relating to pharmaceuticals;
• The patentable subject matter relating to pharmaceuticals in China;
• Administrative protection for patent right;
• Civil judicial procedures and remedies for patent right;
• Criminal punitions for infringement of patent right;
• Design for compositions of optimized protection strategies;
• Case studies and comparative analyses of patent infringement disputes.

See the full press release here.

Fish & Richardson Wins ITC Ruling in Phison Patent Case

The following is excerpted from an April 22, 2009 Fish & Richardson press release at Marketwire:

Fish & Richardson has won an International Trade Commission (ITC) ruling for Phison Electronics Corp., a large Taiwanese electronics company that manufactures flash memory products, in a patent infringement case brought by SanDisk Corp. On April 10, 2009, an Administrative Law Judge in the ITC issued an initial determination finding no infringement by Phison products.

The ITC case began in 2007 when SanDisk asserted five patents against dozens of companies that make, sell, and import USB flash cards, MP3 players, and other flash storage products. Four of the five patents were asserted against Phison products. By the time of the ITC trial, only one patent remained in the case against Phison. The ALJ's ruling determined that Phison's products do not infringe that remaining patent.

Read the full press release here.

Managing the Dragon

I had the opportunity to hear Jack Perkowski of JFP Holdings speak earlier this week at a Pittsburgh Venture Capital Association luncheon.  He shared some fascinating observations about the Chinese business environment, many of which are captured in his book titled, "Managing the Dragon, How I'm Building a Billion-Dollar Business in China."

The following is an excerpt from one of his recent blog posts at Managing the Dragon:

Almost twenty years ago, I left Wall Street and moved to Hong Kong because I was convinced that Asia’s development would be the story of the twenty-first century, and I wanted to play a role. Due to the demographics and high growth rates in the region, I believed that companies in Asia would have a strong wind at their back, but that they would need access to capital, management and technology to take advantage of their inherent growth opportunities.

The formula for creating successful businesses and investment opportunities in China is to combine the best technology, know-how and management practices from around the world with the China market. My Wall Street experience and the time I have spent learning how to do business in China provide a unique knowledge base, set of experiences and network of contacts that are well suited to help close the technology and know-how gaps that still exist. That is the essence of what I will focus on in my second phase in China.

JFP Holdings was established in January to help global companies develop and implement their China strategies, provide infrastructure support and access to capital as required, and to assist Chinese companies to develop global footprints. We are just getting started, but we have already made significant progress. Our staff now includes a half-dozen dedicated professionals, with many others anxious to join as our business grows. We are already working with companies and organizations in some of the most promising areas for future development: environmental technology, high value-added manufacturing, services and health care.

Read the full post and find a link to purchase his book here.

HP Resolves Ink Cartridge Patent Infringement with Ninestar

The following is excerpted from a March 24, 2009 HP press release:

HP (NYSE:HPQ) today announced that it has resolved patent violation issues with China-based Ninestar Image Co., Ltd. relating to HP 02 and HP 14 inkjet cartridges.

As part of the settlement, Ninestar acknowledges that HP’s patents are valid and infringed, and has agreed to stop selling the cartridges in question in the United States and other countries where HP has corresponding patent rights. Additionally, the company has agreed to pay HP an undisclosed sum of money.

This is HP’s second patent violation issue with Ninestar. In July 2006, HP filed complaints with both the U.S. District Court and the International Trade Commission for patent infringement relating to a different set of inkjet cartridges. The parties reached a settlement in March 2007 in which Ninestar admitted the validity of HP’s patents and agreed to remove its products from specified countries.

See the full press release here.

Zhongwei Loses Bus Patent Infringement Case to Neoplan

Bao Wanxian in today's (March 9, 2009) China Daily writes:

Jiangsu-based Zhongwei Bus & Coach Group lost the first round of a patent infringement lawsuit filed by German bus maker Neoplan Bus GmbH. Zhongwei is accused of copying the entire design of Neoplan's Starliner bus.

Zhongwei Bus, together with its subsidiary Zonda Industrial Group and its sales agent Beijing Zhongtong Xinhua Vehicle Sales Co, were required to pay 20 million yuan in compensation to Neoplan Bus and 1.16 million yuan in legal costs.

In addition, the Chinese company was ordered to stop manufacturing and selling its A9 buses in the future.

Read the full article here.

Intellectual Property Symposium

Second Annual Intellectual Property Symposium takes place March 31 and April 1, 2009 in Silicon Valley.  Sessions will include:

• United States Patent Policy – Likely Changes and Their Impact presented by Kevin Rivette, Chairman, USPTO Advisory Committee
• The Recent Amendments to the Chinese Patent Law and their Implications for Your Organization presented by John Huang, Managing Partner, East IP Law
• The Procedure for Obtaining a Patent in Europe presented by Jozef Albert of the European Patent Office
• Key Court Rulings Impacting the Electronics Industry: Federal District Judge Jeremy Fogel of the Northern District Of California (San Jose Division), Edward Reines, Partner, Weil Gotshal
• Litigating with the ITC — Steven S. Baik, Partner, Orrick
• The Changing Patent Landscape in India and China – George Sawyer, eValueServe

More information and registration details are available here.

NERA Releases Report on Intellectual Property Litigation and Damages Trends in China

The following is excerpted from a February 13, 2009 NERA press release appearing at Business Wire:

Though intellectual property rights (IPR) infringement damage awards continue to be small in China, the number of IPR awards appear to be increasing and foreign firms seem to be faring better in Chinese courts than Chinese firms, according to a report released today from NERA Economic Consulting.

Intellectual Property Rights Protection in China: Trends in Litigation and Economic Damages analyzes the changing role of Intellectual Property Rights enforcement in China and examines trends in damages awards in IPR cases in China, using a proprietary database, developed by NERA, of cases filed in China between 2002 and 2008.

The authors of the report, NERA Senior Vice President Dr. Alan Cox and Senior Consultant Kristina Sepetys, found that while there has been a marked increase in IPR infringement cases being brought before Chinese courts and, consequently, in the frequency of damage awards over the past decade, the damages both claimed and awarded tended to be very small compared to those in other jurisdictions and compared to the likely degree of harm caused.

The full release and a link to the report (in English and Chinese) are available here.

Patent Strategies for Foreign R&D Work in China

On December 27, 2009, the Standing Committee of the National People's Congress passed the amendments to the Patent Act.  Tian Junfeng, an attorney with Unitalen Attorneys at Law, analyzed China's Patent Law and Foreign Trade Law and shares some insights in this article. China Business Weekly will run the article in several issues. Below is an excerpt from the first part of it which appeared in the January 12, 2009 issue of China Daily:

Numerous multinational companies, such as Microsoft, IBM, Lucent, Hewlett-Packard, Samsung, Philips, Motorola, Nokia, have established their R&D centers in China, respectively. Up to now, the number of foreign companies that have set up R & D centers in China has exceeded 1,000.

Most of these companies are ranked in the world top 500. They established their R&D centers in China in order to meet demands for localization of products, technologies and services, and to promote their enterprise image. They also want to sharpen their competitive edge in the local market by exploiting the rich human resources of technical professionals and taking advantage of the low capital costs. This has become an important part of their localization strategy.

Although these R&D centers are playing an ever-important role in technological innovation and making great achievements, they have encountered all sorts of problems in implementing their patent strategies so as to better protect their R&D achievements. One of the outstanding problems is how to transfer their technological breakthroughs abroad.

Regarding this issue, there are relevant provisions in China's Patent Law, the Foreign Trade Law and others.

Mr. Junfeng goes on to discuss the implications of Articles 8, 10 and 20 of the Patent Law on R&D.  See the full article here.

China Mulls National Security Scrutiny for Patent Applications

The following is excerpted from a December 22, 2008 article appearing at China View:

Chinese inventors who wish to apply patents for their innovations in foreign countries must first go through government scrutinies to find out if such innovations should be made national secrets, according to a draft amendment to the country's patent law.

The Standing Committee of the National People's Congress (NPC), China's top legislature, discussed some proposed amendments on the 23 year-old Patent Law Monday at the opening session of its bimonthly meeting.

The draft amendment says innovations that have not be subject to security scrutinies will not be granted Chinese patents, and that those who leaked national secrets by failing to apply for the scrutinies will be punished according to the law.

Read the full article here.

China's Judiciary Improves IPR Protection

The following item appeared in today's, November 14, 2008, issue of China Daily:

A vice president of the Supreme People's Court told reporters in Beijing on Monday that the abilities of Chinese courts to protect intellectual property rights (IPR) have constantly improved in recent years.

Xi Xiaoming said that the courts had rendered verdicts on all kinds of IPR infringement cases, covering the creation, use, protection and management of intellectual property.

Before the mid-1990s, IPR court cases mainly concerned technology contract disputes. Between the mid-1990s and 2002, most IPR cases involved patent infringement. Since 2002, copyright violation cases have soared and become the dominant type of cases, Xi said.

Xi said courts at all levels had fully used their civil, criminal and administrative trial functions to provide comprehensive judicial protection of IPR.

From 2001 to 2007, courts received 77,463 civil IPR cases, of which 74,200 had been concluded.

From January to September this year, courts initially received 18,545 civil IPR cases, up 39 percent year-on-year.

In 2007 alone, courts concluded 2,684 criminal IPR cases, in which 4,322 defendants were convicted.

Xi said that this month has been designated to mark public awareness of IPR protection and spark enthusiasm for innovation.

During the month, some IPR infringement cases will be tried in public and some intellectual protection policies will be promulgated.