Recent Successes
August 12, 2014
Fitch Even and a trusted Chinese associate have successfully defended a client’s Chinese patent against a request for invalidation filed by a third party with the Patent Reexamination Board (PRB) of the State Intellectual Property Office (SIPO) in Beijing, China. Multiple briefs were filed and an oral hearing was held in the matter, resulting in the issuance of an examination decision upholding all claims of the client’s patent in August 2014. The client is a large maker of electronic components, and the patent at issue covers a valued process used to manufacture components. The patent was drafted by Fitch Even and is the subject of international patent applications and patents.
Fitch Even partner and counsel for this matter, Edward E. Clair, noted the following:
With the huge uptick in Chinese patent filings, many more patent owners will be forced to become familiar with requests for invalidation filed with the PRB. Given the differences in patent systems, evidentiary requirements, and cultures, it is extremely important for North American businesses to know what is required to succeed in such proceedings and the corresponding deadlines. Equally important is having a proficient team that can handle such challenges in a timely and economical way.
In 2011, with 526,412 filed patent applications, China’s SIPO became the largest patent office in the world, as reported in World Intellectual Property Indicators 2012. That year, the United States dropped to second with 503,582 filed patent applications. In 2012, China’s number jumped to 652,777, while the United States’ total went to 542,815. The increase in filed applications in China was even more dramatic in 2013, with China’s total number surging to 825,000, compared with 571,612 filed in the United States. According to World Intellectual Property Indicators, in 2012 China became the leader for both source and destination filings.
These statistics indicate that many more patent validity challenges will be brought before SIPO’s PRB over the coming years.
