LAURENCE J. SHAW, PHD
Foreign Filing in China
When selecting countries for foreign filings, I generally recommend a strategy similar to that used in “Risk,” the well-known board game. When playing Risk, the best strategy is to concentrate resources in one or two key countries on each continent when one has limited resources.
With regards to Asia, for many types of products it is making more and more sense to obtain patent protection in China. As China modernizes, it is determined to transition to an economy based on innovation and is tailoring its intellectual property laws and policies towards that end. The patent laws have undergone three major revisions in the past 25 years, with each revision strengthening IP enforcement. The upcoming Fourth Revision is expected to include measures such as new rules of evidence for the determination of damages, increased statutory damages, and punitive damages. The increasing effectiveness of China's evolving intellectual property laws and policies is reflected in the rapid rise in IP filings shown in the graph.
China's legal systems differ considerably from legal systems in the West, and options and procedures which Westerners would not expect exist in China. For instance, in addition to the two types of patents which inventors in the US are familiar with (i.e., "invention" and design patents), China has "utility model" patents which do not need to meet as high a standard of invention as invention patents. Another significant advantage of China's legal system for infringement plaintiffs is that litigation and
Meeting with the directorship of the Guangdong IP Office.
Number of invention patents filed in China by year.
administrative actions take place over much shorter periods in China and, with the strength of the dollar relative to the yaun, enforcement of IP rights can be considerably more economical in China than the US.
One of my areas of specialization is preparing US applications that are well-suited for filing in China. For instance, in China there are limitations on amending claims during prosecution which are not paralleled in the US, and it is important to file in China with claims that are expected to only need narrowing or deletion. Another option not available in the US is to file an application in China as both a
utility model application and an invention application -- with claims suitable for both types of application due to the difference in the inventive step requirements -- to gain quick protection via the utility model patent while the invention application is prosecuted. This can be useful for products that make it to market quickly.
So although pursuing patent protection in China has been viewed dismissively for decades, that attitude should be re-examined. China is a major economic power with huge production capabilities, and the Chinese legal system is becoming increasingly tailored for the enforcement of intellectual property rights. A well-crafted international strategy now involves careful consideration of protection in China.