Recently, the China National Intellectual Property Administration (CNIPA) released the "Typical Cases of Intellectual Property Administrative Protection in 2024", aiming to strengthen professional guidance for administrative adjudication and enforcement in intellectual property, improve case-handling quality and efficiency, deter infringement and illegal activities, and create a favorable environment for innovation and business operations. Notably, two cases represented by NTD - the "Connector" Invention Patent Infringement Dispute and the "Process for producing 5-hydroxy-4-thiomethylpyrazole compound” Invention Patent Infringement Dispute-were selected as typical cases of patent administrative protection in 2024, accounting for two of the ten typical cases. These two cases demonstrate the efficiency and professionalism of administrative intellectual property protection from the dual perspectives of "proactive rights enforcement" and "defensive counterarguments". There are not only administrative rulings to cease infringement but also settlements through mediation to resolve disputes, highlighting NTD's long-standing commitment and professional capabilities to provide comprehensive intellectual property protection strategies for clients.
"Connector” Invention Patent Infringement Dispute: Representing the Petitioner for Proactive Enforcement to Resolve Dilemma of Patent Infringement
Attorneys: Qingzhong JIA and Zhihui WANG
Case Introduction
NTD represented A. Raymond, an internationally renowned automotive parts supplier, in filing an administrative complaint with the Suzhou Intellectual Property Office, alleging that the respondent, a Suzhou Automobile Technology company infringed its patent right. The key point of dispute focused on whether the accused infringing product has the technical feature of an "insertion portion". After trial, the Suzhou Intellectual Property Office finally determined that the "insertion portion" is a usage environment feature, and the accused infringing technical solution is applicable to the usage environment defined by this feature. Therefore, the accused infringing product falls within the protection scope of the concerned patent, the infringement was established, and the respondent was ordered to cease manufacturing, selling, and offering to sell the infringing products, and to destroy the specialized molds for manufacturing the infringing products.
Significance of the Case
The usage environment feature is a special form of claim, and it is somewhat difficult to accurately identify it in patent infringement determination. This case reflects the high-level professional knowledge and strong capabilities of local patent administrative enforcement officers in accurately identifying the complex patent infringement activity and making an accurate patent infringement determination, providing valuable reference and guidance for handling such cases.
"Process for producing 5-hydroxy-4-thiomethylpyrazole compound" Invention Patent Infringement Dispute: Representing the Respondent to Resolve the Dispute through Mediation
Attorneys: Christopher SHAO and Fei KOU
Case Introduction
NTD, jointly with CAIHE Law Firm, represented a technology company (the respondent) in responding to the administrative adjudication request filed by Kumiai Chemical Industry Co., Ltd. (the petitioner) with the Shandong Intellectual Property Office based on a process patent. Based on a reasonable interpretation of the claims and an accurate understanding of the technical solution in dispute, the respondent fully elaborated the key technical information during the appraisal work. After full communication between the two parties, the willingness to reach a settlement increased, and the case was finally closed through mediation.
Significance of the Case
This case involves the preparation process of compound characterized by complicated technologies. The appraisal work requires scientific and reliable protocol and the selection of competent testing institutions. The final settlement meets the value pursuits of both parties, and the patent infringement dispute was efficiently and properly resolved.
Industry Insights: With the continuous strengthening of administrative protection, enterprises need to choose the optimal solution between civil litigation and administrative procedures based on their technical characteristics and business goals. The role of professional attorney teams will become increasingly crucial. The selection of these two cases represented by NTD as typical cases of intellectual property administrative protection in 2024 by the CNIPA undoubtedly reflects NTD's profound accumulation in both offensive and defensive aspects of patent administrative protection.
Attorneys' Profiles
Christopher SHAO, NTD Senior Partner, Patent Attorney, Attorney-at-Law, and Trademark Attorney. Christopher has been with NTD for more than 30 years and has litigated many complex cases and frequently represented his clients before administrative agencies and courts in China. He also counsels clients and provides legal services in all areas of intellectual property (“IP”) including licensing, dispute resolutions before administrative and judicial authorities, patent law, trademark law, copyright law, trade secrets, unfair competition, domain name disputes, and patent prosecution and invalidation. Christopher has been actively involved in the legislative process in China relating to IP laws and regulations and is a frequent speaker/panelist on patent litigation, trademark enforcement and technology transfer issues at various world leading conferences and seminars.
Christopher has served as the Vice President of Licensing Executive Society International 2018-2021, Vice President of Licensing Executive Society China, Senior Counsel of Legal Counsels Committee on Economic and Trade Frictions of CCPIT and so on. He is also a member of Intellectual Property Committee of ACLA, American Intellectual Property Law Association (AIPLA) and Federation Internationale des Conseils en Propriete Intellectuelle (FICIP). Meanwhile, he is the Invited Lecturer of Law School of China University of Political Science and Laws.
Christopher has been honored for a consecutive number of years as the leading practitioner in IP litigation area in China. During his recent nomination, he has received the following comments from one of his clients, a fortune 500 company – “Christopher Shaowei from NTD is a well-respected intellectual property litigator. Clients like his execution, pro-activeness and creativity. He consistently brings new and creative approaches to resolving our issues. These kinds of skills and acumen are so lacking and rare in typical China law firms.”
Gavin JIA, Senior Partner, Patent Attorney and Attorney-at-Law. Mr. Jia has more than 20 years of experience in intellectual property practice. He provides legal services in such areas as IP litigation, patent reexamination and invalidation, patentability and infringement assessment. He also counsels clients and provides legal services in all areas of intellectual property including IP due diligence，licensing, trade secret protection, copyright and dispute resolutions before administrative and judicial authorities.
Over the years, Mr. Jia has handled hundreds patent litigations before the local courts and the Supreme Court, invalidation actions before Patent Reexamination & Invalidation Department of CNIPA, with extensive experience in complex intellectual property dispute resolution. With particular expertise in handling tech-related legal matters, Mr. Jia has abundant experience in handling legal affairs related to equipment manufacturing, high-end medical equipment, artificial intelligence, automobile manufacturing, new materials and other technologies. Mr. Jia represented many well-known multinational and domestic corporations such as Johnson & Johnson, Intel, Bosch, Danone, Unilever, Volvo, Toshiba, Hitachi, Sumitomo, SAIC.
Mr. Jia was selected as one of the "High-Level Intellectual Property Personnel" by All-China Patent Attorneys Association in 2012，was selected as a Top 50 lawyer of National Outstanding Intellectual Property Lawyers in 2022, participated in the compilation of "Patent Agency in Patent Application Reexamination and Patent Invalidation", "Design Protection - Germany, EU, US, Japan, China and Korea's Laws and Practices" and other works in the field of intellectual property.
Fei KOU, Partner, Patent Attorney and Attorney-at-Law. Dr. Kou joined NTD as a patent attorney in 2014 and handled patent filings and prosecuting cases. He became a patent litigator in 2016 and provides legal services relating to patent invalidation, administrative litigation, civil litigation, FTO search, patent landscape analysis, IP strategy consulting, etc. in various practice areas including Pharmaceuticals & Medical, Life Health, New plant variety, Chemistry, etc.
Before joining NTD, Dr. Kou started his career as a patent examiner in China National Intellectual Property Administration, where he received professional training of IP and handled hundreds of patent examination on medical apparatus, analytical and detecting instruments, biological detection, etc. for four years.
After the role transitions among scientific researcher, patent examiner, patent attorney and patent litigator as well as more than ten years of IP practicing experience, Dr. Kou is committed to customizing strategy and comprehensive problem solutions from an entire perspective for various clients like Pfizer, Novartis, Roche, DuPont, IFF, Syngenta, etc.
Zhihui WANG, Attorney-at-Law and Patent Attorney. Zhihui Wang has been engaged in intellectual property (IP) since 2014 and has many years of experience in patent application drafting and patent search. She joined NTD in 2018 and is committed to providing clients with IP related legal services, including patent litigation, patent reexamination and invalidation, patent infringement and patentability assessment, IP due diligence, IP licensing and other related matters.
