December 2018

IP Practice: “Interpreting Standards of Amendments to Markush Claims in Invalidation Proceedings from the Perspective of a Retrial by the Supreme People’s Court of China”

Newsletter (November 2018) │ IP Practice

In Patent Law, a Markush claim is a special type of claim commonly used in the chemical and
pharmaceutical fields when there are a number of variables in one claim and each variable
has multiple options. Once a compound claimed by a Markush claim is patented, its scope of
protection can extend to all the compounds encompassed therein regardless of their effect.


In China, the Guidelines for Patent Examination 2010 contains provisions regarding the
unification of Markush claims, but are otherwise silent on this subject (Guidelines for Patent Examination 2010, part II, Chapter 10, 8.1 Unity of Markush Claims). The nature of
Markush claims and the criteria for amendments has long been a subject of practical and
theoretical discussion (Invalidation trial for ZL94115915.9, ZL97197460.8).


On the retrial of the “Administrative Judgment No. 41 [2016], Retrial, Administrative
Division, Supreme People’s Court”, following three years of careful deliberation, the
Supreme People’s Court of China finally released a judgement which clarified the nature of
Markush claims and the criteria for amending such claims in invalidation proceedings. This
judgement will likely resolve issues where trial court’s criteria has been different and
provides guidance for judging similar cases in the future.


For details, please check the following PDF.

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Notice: Year End Holiday

Please note that our office will be closed during following year-end holiday period:


Monday, December 31, 2018 to Thursday, January 3, 2019


A calendar showing our business days from January 4, 2019 can be found here.


We wish you a very happy holiday season and look forward to working with you in 2019!

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S&E gives presentation in Tokyo on December 10th, 2018 and in Osaka on December 12th, 2018 at the WE2 Study Group held by the Japan Intellectual Property Association (JIPA).

On December 10th and 12th, 2018, Mr. Felix Einsel gave a presentation over the course of six hours on the utilization and practice of intellectual property in the EU at the WE2 Study Group held by the Japan Intellectual Property Association (JIPA). He explained the current developments in intellectual property in the EU, in particular the chances of implementation of the unitary patent and unified patent court, the latest EU regulations and directives, judgments handed down by the Court of Justice of the European Union and, since Japanese corporations are exhibiting a strong tendency to transfer their patent applications from the EPO to the German Patent Office, he talked about patent/utility model prosecution and enforcement at the German Patent Office and in the courts. This year, ca. 75 individuals participated in the seminar in Tokyo and roughly 30 participants took part in the seminar in Osaka. An updated version of the seminar is also planned for the end of next year.

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On November 30, 2018 Sonderhoff & Einsel’s Kengo Sakai Gave a Presentation at the EU-Japan Centre’s Event titled, “Recent Developments in EU and Japanese IP and Privacy Law “

On November 30, 2017, S&E and the EU-Japan Centre for Industrial Cooperation held an event at the Delegation of the European Union with regard to recent developments in EU and Japanese IP and privacy law.  The event offered an update as to how the European Unitary Patent system is expected to be implemented during the first half of 2019 and how the General Data Protection Regulations (GDPR) has been implemented in the past six months, and the second half of the event highlighted key court decisions from the EU and Japan on important intellectual property-related issues.

Sonderhoff & Einsel’s Kengo Sakai gave a well-received presentation titled, “Roundup of Recent Important IP-related Decisions in Japan” and his presentation focused on the IP High Court’s decision on the “Pyrimidine Derivative” Grand Panel Case and later participated in a panel discussion where there was a lively Q&A session among the speakers and the audience on this decision, IoT, and AI.

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