China Patent Agent (HK)

Firm overview:

China Patent Agent (HK), founded in 1984, is one of the first three pioneer IP firms in China. Headquartered in Hong Kong, the firm has offices in Beijing, Shenzhen, Shanghai, and overseas offices in New York, Tokyo and Munich.

The patent team's service scope covers patent application consultation, patent search and analysis, patent mining and portfolio management, patent drafting and filing, responding to office action, reexamination and invalidation proceedings, administrative litigation, annuity management, as well as patent registration in Hong Kong and Macao. Working languages of the team include English, Japanese, German, French, Chinese, and Cantonese.

It now provides full-range patent-related services to thousands of overseas clients, including Fortune 500 companies.

In 2023, among CPA’s cases, one foreign-related case was selected into the "Tenets of Adjudication of the IP Tribunal of the Supreme People’s Court of China 2022", three cases were named as Top 10 Patent Grant and Confirmation Exemplary Cases of 2022 by teh Beijing IP Court, and three cases were selected as 2023 China Trademark Festival Exemplary Cases.

Team overview:

CPA has 550 staff members, including 230 patent attorneys (76 with mechanical & design background, 81 with electronic & electrical background, 73 with chemical & biotech background), 34 trademark attorneys, and 85 attorneys-at-law.

Yuhe Wu is the general manager of CPA, a patent attorney, and an attorney-at-law. He has broad experience in practicing before the Chinese courts of various levels (including the Supreme People's Court) and IP administrative authorities, and several of his represented cases relating respectively to enforcement of patent rights and judicial reviews of patent validity are selected and recommended by the Supreme People's Court or some other institutes as high-profile, landmark, or exemplary IP cases in China.

Yanfeng Xiong is a deputy general manager at CPA, a Chinese patent Attorney, and a patent agent of the United States. He is experienced in handling Standard Essential Patent (SEP) litigation and invalidation for multinationals in telecommunications. A number of his patent litigation cases were recognized by the Supreme People's Court and Beijing High Court as representative cases.

Key matters:

• China Patent Agent (HK) lawyers, Patents Department Deputy Manager Ke Ke and Deputy General Manager Yanfeng Xiong, on behalf of the patent co-applicants, Erasmus University Medical Center Rotterdam and Roger Kingdon Craig, received a favourable retrial ruling in May, 2023 from the Supreme Court of China. The ruling rejected the petition of retrial of the China National Intellectual Property and affirmed the second instance judgment.
• In the second instance judgment, the IP Court of the Supreme Court reversed the reexamination decision of the CNIPA, as well as the first instance judgment, and ordered the CNIPA to make a reexamination decision anew, on the grounds that the reexamination decision errs in evaluation of inventiveness and the reexamination decision could be partly reversed.
• The CNIPA filed a petition of retrial with the Supreme Court. The Supreme Court rejected the petition of retrial of CNIPA and affirmed the second instance judgment.
• The decision is significant for future reference. Current practice, where the reason for one claim of a reexamination decision is affirmed in the administrative litigation (appeal against reexamination decision), the whole reexamination decision will be affirmed no matter whether the reasons for other claims of the reexamination decision are correct or not.
• However, according to the second instance judgment and retrial ruling of the present case, as long as the reason for one claim of a reexamination decision is wrong, the reexamination decision could be reversed at least partly, which would influence the general practice of administrative litigation in the future.
• China Patent Agents (HK) lawyers Bruce Chunlong Tang and Xin Wan, on behalf of our client Ericsson, received a favourable 2nd instance judgment from the IP Court of the Supreme Court, which reverses both the 1st instance judgment of Beijing IP Court and the reexamination decision of CNIPA.
• The subject application relates to a small-formfactor pluggable (SFP) module. CPA team carefully studied the case history and relative materials, developed a thorough strategy for court hearing, and submitted detailed post-hearing observations to further elaborate on the key issues in the court hearing. The focus of the 2nd instance is whether the subject application possesses inventiveness. In order to facilitate the court's understanding of the subject application, CPA team provided a detailed explanation of the differences between the subject application and the prior art. Finally, the court supported our position. In the 2nd instance judgment, the court affirms the determination of the distinguishing technical features and holds that there was an error in the determination of the technical problem actually solved by claim 1 in both the reexamination decision and the 1st instance judgment, and the prior art did not provide corresponding inspiration to solve the technical problem. Therefore, the subject application possesses inventiveness.
• This outcome holds significant weight, especially considering that the average reversal rate before the Supreme Court for patent administrative cases stands below 6.5%.

Clients:

Erasmus University Medical Center Rotterdam, Ericsson