MACAU SAR, CHINA Trends and Developments Contributed by: João Nuno Riquito, Bruno Almeida and Daniel de Senna Fernandes, Riquito Advogados
This extends beyond the gaming industry to any other IP-intensive industry. Ripple effects As previously mentioned, the Court’s reasoning cen- tred on the finding that a person skilled in the art could have derived the alleged “innovative effect’ from the prior art, rendering the patents obvious. By foregrounding the substantive standards that underlie patentability, this judgment could be doing more than resolving a single dispute. Validity challenges as first line of defence Historically, many IP disputes in Macau have focused on direct infringement; however, this ruling illustrates that a plaintiff (or defendant as the case may be) may angle the dispute to the foundational validity of the patents themselves (even when the pleadings origi- nally centred on infringement, if applicable). The judg- ment expressly noted that the court opted to reassess the validity of the patents as this conclusion preceded any of the relief sought by the plaintiffs. Consequently, it is likely that inventive step argu- ments are likely to be embedded early on, rather than being reserved for the later stages of the proceed- ings, as defensive strategies may increasingly feature pre-emptive validity attacks, leveraging the same doctrinal benchmarks that the court applied – ie, the requirement that the invention must not be obvious to a skilled practitioner and must satisfy the non-suscep- tibility condition of Section 47 (a). While this does not guarantee a uniform outcome, the precedent signals that validity challenges are now a credible, perhaps preferred, line of defence in this arena. Effect on patent grant timelines While the agreements between Mainland China and Macau SAR already embed CNIPA’s expertise into DSEDT’s grant procedure, this ruling may encourage a more rigorous examination process (which could man- ifest as longer processing intervals and heightened evidentiary thresholds for inventive step, for example), as it may be interpreted as a signal to examiners that a stricter gate keeping stance is warranted. And, if that is the case, for investors, especially those whose business models rely on securing enforceable
patents, the prospect of a slower, more demand- ing examination trajectory may introduce a modest degree of uncertainty when projecting time to market. Effect on 1+4 Macau’s economic diversification plan – commonly known as the “1+4 Development Strategy” where the “1” refers to the development of Macau’s tourism industry, and the “4” represents four emerging sec- tors: “Big Health”, modern financial services; cutting- edge technologies; and the convention, exhibition, sports, and commercial and trade industries – is set to be in effect until at least 2028. This plan was first set out during Macau’s Chief Executive’s 2023 Policy Address, where the government described the role that it would take as that of a facilitator, leaving the market to lead the diversification effort while the state provided policy support, infrastructure and co-ordina- tion with the Greater Bay Area. However, entities and/or individuals interested in investing in cutting-edge technologies often look for robust, enforceable IP portfolios as a signal of com- mercial viability and a shield against copy-cats; but when a court declares a locally granted patent null and void on the basis of its lack of novelty or inven- tiveness, it signals clearly to the market that the grant- ing of a patent does not guarantee its enforceability. Even though the decision concerns a niche segment (electronic table game equipment), the legal reason- ing on inventive step applies equally to any technolo- gy‑focused patent dispute. Investors whose projects are typically highly reliant on patents, eyeing Macau’s emerging tech clusters (such as fintech platforms, healthtech devices or advanced manufacturing), are likely to display greater caution and increase due diligence standards before commit- ting capital. Patent‑dependent projects are an obvious point of interest in the current economic environment, as these represent “cutting‑edge technology” a pillar of the 1+4 Development Strategy, and a potential way- in for candidates hoping to acquire temporary-resi- dence permit in Macau. But investors must be wary of the legal environment and business rules, employ adequate business practices and procure proper advice as to the subject matter of the investment.
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