On June 6, 2019, China allowed 5G licenses to the nation’s three significant telecom administrators and China Broadcasting Network Corp, giving the thumbs up for full business sending of the cutting edge cell arrange technology.
With the commercialization of 5G in China, China turns into the “must” decision for 5G protecting for those organizations that are dynamic in this field. In the conditions, it is critical to get solid standard-related patent portfolio in China. To accomplish this objective, some useful hints in the indictment of standard-related patent applications are presented in this article.
Other than some regular attributes imparting to general kind of patent applications, standard-related applications have their own qualities that ought to be considered by the candidate during in each phase of the indictment.
By and large, there are three phases for an application, which are new application arrange, deliberate revision stage, and office activity organize. For the new application organize, it is essential to draft cases and determination with high caliber and appropriate assurance scope, just as to record the application as right on time as could be allowed; for the willful alteration arrange, the cases ought to be revised by Claim Chart (a correlation table between the highlights of the cases and the highlights in the detail of an objective standard), and if vital, sorts of cases could be finished; for Office Action arrange, presenting a reaction compelling in the two parts of substance and convention to beat the issues brought up by the inspector would encourage the conceding. Subtleties for the above recommendations are as per the following:
For new application arrange
In this stage, drafting methodology and documenting time are two significant issues for standard related applications.
From the drafting viewpoint, drafting imperfections would contrarily influence the approval of standard-related licenses. A case of a standard fundamental patent (SEP) (ZL200710141661.6, hereinafter called as Patent ‘661) being negated in light of terrible drafting is given as pursues.
Patent ‘661 identifies with Audio codec, and all the more explicitly, identifies with a low piece rate advanced sound coding framework that fundamentally diminishes the bit-pace of multichannel sound sign. The innovation accomplishes specialized impact including productive transmission or capacity while accomplishing straightforward sound sign multiplication. Followings are the free guarantee 1 and one of its reliant case 5.
1. A technique for disentangling a sound sign, including:
(an) acquiring a bitstream including a majority of casings, each casing including preparing data identified with the casing and entropy coding quantization lists speaking to sound information in the edge, the handling data including:
(I) a majority of codebook files, each codebook record distinguishing a codebook,
(ii) codebook application data for indicating an entropy coding quantization record range to which the codebook is to be applied, and
(iii) window data;
(b) unraveling the entropy coded quantization files by applying the codebook distinguished by the codebook files to the entropy coded quantization file extend determined by the codebook application data;
(c) creating subband tests by contrarily quantizing the decoded quantization mark;
(d) in light of the window data, distinguishing an arrangement of a majority of various window capacities applied in a solitary sound information outline; and
(e) acquiring time-area sound information by conversely changing subband tests and utilizing the majority of various window capacities demonstrated by window data in the single sound information outline.
5. The technique for guarantee 1, wherein the window data demonstrates an area of a transient in a casing, and wherein the grouping of a majority of various window capacities is recognized in step (d) in light of a foreordained principle identified with the area of the transient.
This patent has effectively become the standard fundamental patent of China’s “Multi-channel Digital Audio Codec Technical Specification”. This implies TV makers should definitely utilize this answer for produce their TVs to be sold in the Chinese market. Hence, this patent is a significant and important SEP.
The creative specialized highlights of this development are in reality about new transient area situating and window work application conspire, just as three specific parameters remembered for the window work.
Lamentably, to seek after an inappropriate expansive extension, the cases and particular were not drafted around these key specialized highlights.
Specifically, with respect to the cases, the above key specialized highlights were not characterized in autonomous case 1. At that point for subordinate cases, for example, guarantee 5, in spite of the fact that the above key highlights were referenced, yet they were additionally comprehensively characterized and didn’t reflect explicit specialized habits. These deformities made the patent right shaky.
At that point, in regards to the determination, contrasted and earlier expressions, the substance to be secured was not featured, either. The most noticeably terrible circumstance for Patent ‘661 is the presence of an earlier workmanship archive, which is an application recently documented by a similar candidate with Patent ‘661 and has revealed fundamentally the same as innovation about sound codec. That is, this earlier craftsmanship revealed the summed up specialized arrangement characterized in the present development. Accordingly, the oddity or imagination of Patent ‘661 is truly tested by a past use of a similar candidate.
Because of the above drafting downsides of cases and detail, Patent ‘661could not to be recognized from the earlier craftsmanship, consequently coming about a negative nullification choice in which the present innovation was esteemed as lacking of innovativeness and gotten discredited. From this model, it could be unmistakably observed that the drafting quality influences the approval of SEP cases.
Subsequently, considering of the exercise of this discredited SEP, just as other extraordinary characters of SEP, drafting recommendations are given as pursues:
1. Drafting a proper assurance scope relating to a commitment. The arrangement proposed in the commitment probably won’t be consummately equivalent to the later discharged standard. Hence, when drafting the particular around the hour of presenting the commitment, the most prudent procedure is to draft a summed up specialized issue and numerous particular specialized issues; and a nitty gritty encapsulation explicit to the commitment just as a few exemplifications around the commitment with proper alterations. This procedure would improve the SEP’s likelihood to cover the future discharged standard.
2. From the perspective on the foundation of encroachment, composing different exemplifications involving adequate performing sides. For instance, for a specialized arrangement concentrating on terminal side, other than the exemplifications for the terminal side, it is prescribed to compose relating epitomes from the base station side, or possibly thinking of certain words like ” The activity of the base station can be alluded to the above-depicted activity regarding the terminal, and in this manner a point by point portrayal thereof will be excluded.”
1. Drafting claims with an appropriate assurance scope, instead of a too expansive security scope.
2. Drafting total sorts of cases. For Tele-Communication standard, in perspective on the foundation of encroachment and to boost potential sovereignties, complete kinds of cases including single gathering ought to be drafted, which incorporates: device and strategy cases of terminal side, mechanical assembly and technique cases of base station side, and, if conceivable, center system gadget and technique claims.
3. Drafting segment guarantee just as entire item guarantee involving the segment. While it is essential to draft a free case for least marketable unit, for example, a chip, it is valuable to draft another autonomous case for the entire item in which the base attractive unit is characterized as a part. From the perspective on sovereignty base, an entire item guarantee gives the patentee a superior decision for ascertaining eminence dependent on the business volume of the item as opposed to the segment.
Going to the recording time, it is favored that the documenting date of the application ought to be in any event ONE day sooner than the submitting time of the commitment by considering the time zone contrast.
In a negation system identifying with a SEP patent dealt with by the writers of this article, the distribution date of an earlier craftsmanship archive, which is a commitment put together by an organization to a standard gathering association, was discussed a considerable amount during the oral becoming aware of the nullification strategy for whether the commitment could be esteemed as a certified earlier workmanship record.
This patent identifies with a strategy for transmitting channel state data, just as the base station and client hardware thereof. The application was documented on April 06, 2010 in China, on Beijing Time. The commitment was sent through email at that day. Be that as it may, since the email was recorded in New York Time, it was recorded as sent on 11:50 PM, April 05, 2010, that is, one day before the application.
Accordingly, if moving the sending time of the commitment to an equivalent time zone as the documenting time, that is, Beijing time, the commitment was sent on an equivalent day as the recording time. The commitment couldn’t be considered as a certified earlier craftsmanship. Be that as it may, if not moved, the sending time of the commitment is one day before the recording time. In this way, the commitment establishes a certified earlier workmanship archive against the objective patent.
There is no express lawful arrangement in the Patent Law of China concerning whether distribution time ought to be moved into an equivalent time zone. Along these lines, during the oral hearing, the distribution date of this commitment was discussed a considerable amount.
Despite the fact that in the nullification choice, the commitment was not utilized as an earlier workmanship on the grounds that there was no proof for the receipt of the donor by a server, it ought to be noticed that the discussing could have been kept away from if this application was recorded one day sooner than the sending date of the commitment.
In rundown, to dodge the danger of commitment being utilized as an earlier workmanship, it is fitting to record the application at any rate ONE day sooner than the hour of presenting the commitment by considering the time zone distinction. Or then again, put it in another way, presenting the commitment 24 hours after the fact than the documenting time.
For the deliberate alterations organize
In this stage, the cases could be altered by Claim Chart, and, if important, extra free and ward cases could be finished.
For a standard related application, it is very basic that the cases are drafted before the standard is discharged. In this way, when of intentional change, it is helpful to alter the cases as indicated by an accessible Claim Chart to cover the standard.
During the indictment, it is suitable for the candidate to make changes at two phases, one is at the willful alteration arrange, and another is at the workplace activity organize. The Chinese Patent Law enables the candidate to make deliberate alterations at the willful correction arrange, i.e., while mentioning for substantive assessment, or inside 3 months from the receipt of a notice from the CNIPA informing the section of the application into the substantive stage. At the point when an office activity is given, the candidate can at present make revisions to the application report, however normally restricted to defeat the issues or dismissals made by the inspector in the workplace activity.
Under the Chinese Patent Law, making changes to the cases at the deliberate alteration organize is far superior to making corrections at the workplace activity arrange. At the willful change arrange, the main confinement is that the alterations will not go past the account of the first cases and particular. Subsequently, at the willful alteration organize, it is reasonable to include new free and ward guarantees, or even substitute the present cases set with another cases as long in that capacity new claims don’t go past the account of the first claims and detail. Be that as it may, when reacting to an office activity, as referenced in the abovementioned, the changes are typically restricted to beat the issues or dismissals made by the inspector in the workplace activity. Once in a while the inspector may acknowledge a recently included ward guarantee if the candidate plainly expresses the help for the new guarantee in the perception. Be that as it may, regardless of whether to acknowledge the new guarantee is at the inspector’s tact.
So it is critical to utilize the deliberate change to make guarantee alterations. In this way, if the case outline is accessible when making deliberate alterations, we propose changing cases as indicated by the case graph.
Moreover, when documenting a divisional application, it is likewise passable to document another arrangement of cases other than those in the parent application as long as the new claims don’t go past the chronicle of the first claims and detail of the parent application. Subsequently, if the case graph isn’t accessible when submitting intentional corrections, the candidate may consider to record a divisional application after the standard is discharged.
From the point of view of finishing the sorts of cases, the two phases of making willful changes and documenting divisional application are for the most part great chances.
In synopsis, for a Tele-Communication SEP related application, it is prudent to have single gathering claims, for example, terminal mechanical assembly/technique, base station contraption/strategy, and center system gadget/technique. On the off chance that this application incorporates segment, it is fitting to have an item guarantee remembering the asserted segment for request to diminished sovereignty estimation base. On the off chance that lacking of the above sorts of cases, it is fitting to finish them when making willful changes or by documenting a division application.
For the Office Action arrange
For a SEP related application, for the most part there are two commanded issues among all others, one is oddity/innovativeness issue, and another is changes going past the extent of the first divulgence issue.
For the oddity/imaginativeness issue, the accompanying practices are recommended:
In the event that the Claim Chart is accessible when getting the Office Action, discovering the correct exemplification in the determination which relates to the case diagram.
By alluding to the case graph, investigating whether it is conceivable to include extra ward claims or extra highlights to mirror the careful highlights which relate to the standard and the correct exemplification.
Finally, setting up an appropriate reaction by discussing similar dialects in the cases or determination for crossing the analyst’s dismissals/complaints.
In a nutshell, the practices to defeat the issue of lacking of curiosity and imaginativeness include: when making changes to claims, alluding to the Claim Chart, to all the more likely spread the principles and reflect appropriate exemplifications; while getting ready perception, continually attempting to recount similar dialects in the cases or determination while crossing the inspector’s dismissals or complaints.
The issue of revisions going past the first revelation is another generally observed issue since it is regularly that a standard related application is corrected by a standard after the standard is discharged. Hence, it is an extremely intense issue by and by.
The followings are the related articles and arrangements with respect to this issue.
Article 33 of the Patent law of China gives that the correction to the application for a patent for innovation or utility model will not go past the extent of exposure contained in the underlying depiction and cases.
In the Examination Guideline, it clarified which sorts of revisions could be considered as not going past the extent of introductory divulgence. That is the changes ought to be resolved straightforwardly and unambiguously as indicated by the substance depicted in the underlying portrayal and claims, and the drawings of the portrayal.
By and by, Chinese inspectors are normally severe for A33 issue, particularly, in Office Action arrange.
As a rule, re-speculation of a case isn’t permitted when reacting to an office activity. Furthermore, a few analysts are much stricter by requiring the revisions being truly same as or relating to the underlying revelation.
In our encounters, to encourage the acknowledgment of corrections, there are three down to earth approaches to defeat the A33 issue.
To begin with, recounting similar dialects in the cases or particular (not to discuss Claim Chart) while crossing the inspector’s dismissals/complaints would be useful to convince the analyst.
In subtleties, when the case graph is accessible, the supporting substance in the detail ought to likewise be explained. At that point, mentioning objective fact by utilizing a table contrasting the exposure and the corrected highlights, to obviously show to the analyst that the alterations could be resolved legitimately and unambiguously from the substance.
From our practices, the perception including the examination table by presenting similar dialects in the underlying exposure has a higher probability to be acknowledged.
Second, it is constantly useful to make a telephone call with the analyst to talk about the A33 issue, before the accommodation of a perception. The telephone call permits the candidate’s progressively point by point clarifications about the innovation and how the cases are significantly bolstered by the revelation of the particular.
On the off chance that, as per the correspondence with analyst, corrections are probably going to be dismissed by the inspector, it is smarter to make some “traded off” alterations as opposed to demanding the changes precisely the equivalent with the standard.
The “bargained” alterations could encourage the allowing, and the patent with “traded off” changes still has the chance to be developed as a SEP patent during patent detailing and encroachment strategy.