Dear Sir/Madam
The partners at Peksung Intellectual Property Ltd. are pleased to announce that we have moved to a new office since November 30, 2019. Our new office has the following address: 16th Floor, Tower B, Techart Plaza, 30 Xueyuan Road, Haidian District, Beijing, P. R. China, 100083. Our telephone number, fax number, email address and website remained unchanged as follows:
Telephone number:+86 10 8231 1199
Fax number:+86 10 8231 1780
email:mail@peksung.com
website:www.peksung.com
Thank you for your attention.

北翔

SINCE 2003

Peksung Intellectual Property Ltd. 

Peksung Intellectual Property Ltd. (“Peksung”), is an intellectual property law firm approved by the State Intellectual Property Office of China (SIPO) and previous Chinese Trademark Office (CTMO) of State Administration for Industry and Commerce to provide comprehensive legal services in all aspects related to patents, trademarks, copyrights, trade secrets, licensing, technology transfer for domestic and overseas clients.

| Professionals

  • Jiancheng JIANG
    Jiancheng JIANG
    0.00
    Managing Partner E-mail:jiangjiancheng@peksung.com Tel:(86-10) 8231-1199 Fax:(86-10) 8231-1780 Language:English, Chinese Location:Beijing Mr. Jiancheng JIANG is the Managing Partner of PEKSUNG Intellectual Property Ltd. Mr. JIANG is a well-respected figure in China’s intellectual property circle. He embarked on the career of practicing patent since 1987 when he joined a pioneer IP agency of the country, China Patent Agent (HK) Ltd. He served the firm for 16 years consecutively in the capacity of Patent Attorney, Manager of Chemical Department, Deputy Director of Beijing Office and Assistant General Manager. Mr. JIANG founded in 2003 the legacy PEKSUNG Intellectual Property Ltd. in response to surging client demands and market dynamics. He has been leading PEKSUNG’s practice group in tailoring agile, reliable and efficient legal solutions to cater to the intellectual property needs of multinationals and Fortune 500 corporation clients including Bayer, BASF, Allergan, POSCO and Porsche in China. Mr. JIANG has significant experience in advising clients in various patent prosecution and contentious matters. His expertise primarily focuses on prosecuting and litigating complex patent reexamination, invalidation and infringement disputes, planning and formulating corporate IPR strategy and advising and executing patent-related protection, defense and enforcement strategy in a wide variety of technical fields, particularly biochemistry, biotechnology, pharmaceutics, and organic chemistry. Mr. JIANG is Vice President of International Federation of Intellectual Property Attorneys (FICPI) China and Vice President of All-China Patent Attorneys Association (ACPAA). Publications “Recent PRB Decisions on Pharma and Biotech Inventions”, Asia IP, October 2015 “Patents”, Chapter 1 in IP Protection in China, Donna P. Suchy, ed., 1st ed., ABA Publishing, 2015 (Co-author) “Closer to Best Practice”, China IP Focus, 2015 “US and China: Approaches to Experimental Use”, The Patent Lawyer, January/February 2015 (Co-author) “Precedent Fails to Help Applicants”, China IP Focus, 2014 “Clarification in Dealing With Patent Errors”, China IP Focus, 2013 “Eastern Promise”, IP Litigation Special Report, a supplement to The Patent Lawyer, October 2012 (Co-author) “Higher and Higher: the Five Year Plan”, World Intellectual Property Review e-Digest, 2012 “Biotech, Pharma and Chemical Invention Patent Practice Q&A”, The Asian Lawyer, January 2012 “Patent Protection in China”, Intellectual Property Magazine, September 2011 (Co-author) “Understanding the Service Invention-creation System”, China IP Focus, 2011 (Co-author) “Rules on Genetic Resources Tightened”, Managing Intellectual Property, July/August 2010 “Patentability of Medical Use Inventions”, IP Focus Asia, 2009 “The Impact of the Third Amendment to the Patent Law on the Bio-pharmaceutical Industry”, Asia Law IP Review, April 2008 “Due Balance Between Patent Right and Public Interests in China”, Asia Law IP Review, January 2008 Contributor of “Jurisdiction Report - China” in World Intellectual Property Review since September 2009 Education and Professional Training B.Sc. in Biochemistry, Peking University (1984) M.Sc. in Biochemistry, Graduate School of Chinese Academy of Sciences (1987) Studied the European patent law, particularly the protection of biotechnology-related inventions at the European Patent Office (1993) Studied US patent law in the USA (1996) Completed integrated courses of law in Renmin University of China (1999) Membership & Qualification ACPAA (1988) China Bar (2000) FICPI
  • Shouqi ZHONG
    Shouqi ZHONG
    0.00
    Partner E-mail:zhongshouqi@peksung.com Tel:(86-10) 8231-1199 Fax:(86-10) 8231-1780 Language:English, Japanese, German, French and Chinese Location:Beijing Mr. Shouqi ZHONG is a Partner of PEKSUNG Intellectual Property Ltd. Mr. ZHONG is a licensed patent attorney and an attorney at law admitted to China Bar, with his technical expertise focusing on petrochemical, fine chemical, organic chemistry and material fields. Mr. ZHONG has been practicing intellectual property since 1993, with his practice primarily focusing on patent prosecution and contentious, civil and administrative litigation pertaining to patent and technology-related matters, and administrative enforcement of clients’ IPRs in China. Mr. ZHONG has abundant experience in advising clients in respect of patent reexamination, invalidation and litigation cases. He also does opinion work for clients on a frequent basis. Before joining PEKSUNG in 2004, Mr. ZHONG had served a renowned IP firm of the country for 11 years, firstly as Patent Attorney and later as Vice Head of the department. Mr. ZHONG has the ability of rapidly identifying intricacy of the entangling legal matters and gives insightful perspectives in a responsive manner. He is equipped with the experience, capacity and language skills to offer the clients strategic and comprehensive legal advice on IPR matters in multiple jurisdictions. Education and Professional Training B.Sc. in Chemistry, Beijing Normal University (1988) MEng in Applied Chemistry, Petroleum University of China (1991) Studied US patent law in the USA (2002) Studied EP patent practice in France (2009) Membership & Qualification ACPAA (1995) China Bar (2000) LES
  • Jianhui ZHENG
    Jianhui ZHENG
    0.00
    Partner E-mail:zhengjianhui@peksung.com Tel:(86-10) 8231-1199 Fax:(86-10) 8231-1780 Language:English, Japanese, Chinese Location:Beijing Ms. Jianhui ZHENG is a Partner of PEKSUNG Intellectual Property Ltd. Ms. ZHENG began her IP practice in 1996 with her technical expertise focusing on general machines, home appliances, hydraulic control system, cutting tools, mechanical transmission and braking systems. Ms. ZHENG is a veteran practitioner in prosecuting design patent application, reexamination and invalidation matters. She has been leading PEKSUNG’s Practice Group of Mechanics and Electronics and has significant experience in patent reexamination and invalidation procedures, and patent infringement disputes, both civil and administrative in China. Ms. ZHENG is also an active writer. She authored the “China chapter, Designs: A Global Guide, a supplement to World Trademark Review, 2013-2016”. Education and Professional Training B.Eng. in Mechanical Engineering, University of Science and Technology Beijing (1996) LLM, Renmin University of China (2005) Studied European patent law in Germany(2003) Membership & Qualification ACPAA (1999) AIPPI
  • Guangyu ZHANG
    Guangyu ZHANG
    0.00
    Partner E-mail:zhangguangyu@peksung.com Tel:(86-10) 8231-1199 Fax:(86-10) 8231-1780 Language:English, Chinese Location:Beijing Mr. Guangyu ZHANG is a Partner of PEKSUNG Intellectual Property Ltd. Mr. ZHANG is a licensed patent attorney and an attorney at law admitted to China Bar, with his technical expertise focusing on microbiology, biotechnology, medical technology and pharmaceutics. Mr. ZHANG began his career of practicing intellectual property in 1997, after he had completed his preparation both in science and law. He has been leading PEKSUNG’s Practice Group of Biotechnology and Pharmaceutics for prosecuting and litigating a variety of reexamination, invalidation and infringement disputes, both civil and administrative, in respect of patent and pertinent technology field in China. Mr. ZHANG has represented the firm’s clients in quite a few high-profile cases and managed to deliver desirable results. One of the cases represented by Mr. ZHANG was listed as top 10 cases of the Patent Reexamination Board in 2013 after he won the case for the client in all levels of proceedings. Education and Professional Training M.Sc. in Microbiology, Wuhan University (1996) JM, Peking University Law School (2002) Studied US patent law in the USA (2005) Membership & Qualification ACPAA (1999) China Bar (1996) AIPPI
  • BEIXIANG PERSONNEL
    BEIXIANG PERSONNEL
    0.00
    Beixiang's professional team is composed of people with rich experience in intellectual property legal services. These people have a solid technical background, deep legal knowledge and excellent foreign language ability.
  • Beixiang personnel
    Beixiang personnel
    0.00
    Beixiang'sprofessionalteamiscomposedofpeoplewithrichexperienceinintellectualpropertylegalservices.Thesepeoplehaveasolidtechnicalbackground,deeplegalknowledgeandexcellentforeignlanguageability.
  • Beixiang personnel
    Beixiang personnel
    0.00
    Beixiang'sprofessionalteamiscomposedofpeoplewithrichexperienceinintellectualpropertylegalservices.Thesepeoplehaveasolidtechnicalbackground,deeplegalknowledgeandexcellentforeignlanguageability.
  • Beixiang personnel
    Beixiang personnel
    0.00
    Beixiang'sprofessionalteamiscomposedofpeoplewithrichexperienceinintellectualpropertylegalservices.Thesepeoplehaveasolidtechnicalbackground,deeplegalknowledgeandexcellentforeignlanguageability.
  • Beixiang personnel
    Beixiang personnel
    0.00
    Beixiang'sprofessionalteamiscomposedofpeoplewithrichexperienceinintellectualpropertylegalservices.Thesepeoplehaveasolidtechnicalbackground,deeplegalknowledgeandexcellentforeignlanguageability.

| Services 

| News and Events

Main Points of the 4th Amendment of Chinese Patent Law
Details 白箭头 黑箭头
A Look into the Sunitinib Case Concerning Amendment to Markush Claim, Judgement of Novelty and Allocation of Burden of Proof
Patent concerned in this case is a patent for invention named “Pyrrole Substituted 2-Indolinone Protein Kinase Inhibitors” (patent number: ZL01807269.0). The patent, which is a core patent of Sunitinib compound, was granted on August 1, 2007 and will expire in February 2021. Sunitinib (trade name: “Sutent”) is a small-molecule, multiple target receptor inhibitor of tyrosine kinases (RTK). It plays multiple roles in the inhibition of tumor angiogenesis and the prevention of generation and metastases of tumor cells. It was approved and launched on US and European market in 2006 and came into Chinese market in 2008. Although Sunitinib’s sales revenue worldwide witnessed a downward trend year by year, it achieved $1.049 billion sales revenue globally in 2018.   In May 2019, invalidation petitioner CSPC OuYi Pharmaceutical Co., Ltd. filed a request for invalidation. OuYi Pharmaceutical Co., Ltd. developed Sunitinib malate capsules and received drug registration documents issued by National Medical Products Administration on January 2, 2020. The capsules became the first generic drug of this category that had been approved in domestic market.   As the outcome of the invalidation proceedings, the patent was upheld by the Chinese Patent Office on the finding that all claims are novel and inventive. Extracts from the invalidation decision (herein referred to as Invalidation Decision) are quoted in this article.   II. Brief of the Case   Patent concerned relates to pyrrole substituted 2-indolinone compounds of formula (I). They exhibit protein kinase (PK, such as PDGF and VEGF) modulating ability and could be used to treat conditions relating to abnormal PK activity, for instance, neuroglioma. The patent concerned specifically elaborates the cell activity of the compounds on PDGF and VEGF as well as the in vivo activity tests relating to the two kinases.   The petitioner filed for invalidation based on the following reasons:   Claim 1 does not possess novelty over evidence 3 or evidence 6 (priority document of evidence 3) for the evidence discloses compound “dimethyl sunitinib”. Further, claim 1 does not possess inventiveness over compound 13 of evidence 6.   III. Amendments to Markush Claims   Compound of formula (I) in claim 1 is drafted in a Markush format:   “1. Compound of formula (I) or pharmaceutically acceptable salt thereof :                     Wherein: R1 is selected from the group consisting of hydrogen, alkyl and –C(O)NR8R9; …… R12 is –NR13R14, hydroxy, -C(O)R15, aryl and heteroaryl; …… n is 1, 2, 3, or 4…….”   In reply to the observations of the petitioner, the patentee restricted the radical R12 in claim 1 to “-NR13R14”. The amendments involved deletion of “carboxyl, -C(O)R15, aryl and heteroxyl” from the original definition. After judgment, the panel deemed that the amendments did not belong to deletion of parallel technical solutions and were not acceptable based on the Chinese Guidelines for Examination. Thus, the amendments were not accepted.   In fact, as Markush claim has high generality, interpretation on its scope and acceptability of amendments are always subjected to strict criteria. The criteria is mainly stemmed from the precedent case “Sankyo Pharmaceuticals Co., Ltd v. Beijing Wansheng Pharmaceuticals Co., Ltd.” (concerning Patent No. 97126347.7) heard by the Supreme People’s Court. In accordance with this case, claims of compounds drafted in Markush format are a generalized technical solution rather than parallel technical solutions, nor are collections of a number of compounds. The principle for making amendments to Markush claims should be: a class of compounds or a single compound possessing new property(ies) and function(s) must not be generated due to the amendments. Moreover, any option of any variable in Markush claims is not allowed to be discretionarily deleted. As Markush claim per se is considered as not being a group of “parallel technical solutions”, small wonder that the deletion of “options” thereof is not deemed as “a deletion of parallel technical solutions” prescribed in the Chinese Guidelines for Examination.   The reason why strict criteria as such is adopted in judicial practice is that there are uncertainties over whether new protection scope will emerge provided that patentees are allowed to delete any option of any variable. For example, if a specific compound that is never disclosed in the patent could be obtained via deletion, the public may not maintain stable expectations and this will undermine the stability of the patent validity system. In this regard, the author believes that patentees would do their best to retain those critical elements, as both patentees and invalidation petitioners know that the critical elements of the core solutions covered in a Markush claim usually represent the drugs that are being launched and the two parties often center their disputes on these critical elements
Details 白箭头 黑箭头
Peksung Intellectual Property Ltd.

Address: 16th Floor, Tower B, Techart Plaza, 30 Xueyuan Road, Haidian District, Beijing, P.R. China
Zip code: 100083

Tel: 86-10-8231-1199
E-mail: mail@peksung.com

ZHONGDE

-  Peksung Intellectual Property Ltd  -

Peksung Intellectual Property Ltd.

Copyright © 2019  Peksung Intellectual Property Ltd
Record No. of Haidian Branch of Beijing Public Security Bureau: 1101084961

Powered by www.300.cn

 京ICP备13002127号
 

 

Disclaimer – The information contained in this website is for your reference only. It should not be considered as rendering any legal advice or legal opinion, nor should it be used for said purposes.