China Patent Matters

Developing and maintaining an effective IP strategy are essential steps in cross-border business dealings in China. Our bilingual team has the cultural understanding and legal knowledge to help you analyze your IP needs in light of your business plan as well as provide the best strategy to protect, trade, license, and enforce your IP within your available budget.

For multinational corporations that have R&D centers anywhere in greater China or Asia, we offer strategic advice on how to navigate China’s unique laws surrounding inventions that are made in China or made by Chinese inventors. Our team of patent practitioners can draft patent applications in either English or Chinese in a full spectrum of technologies. This diversity provides tremendous flexibility for companies that want bilingual services.

For companies where an English specification is already available, we can provide full translation and filing services for China and the whole of Asia. For China, our fully Chinese/English bilingual patent practitioners will check each translation carefully to ensure faithful translation of the specification and claims. Our team of experienced Chinese patent attorneys can also help you maximize the value of your portfolio by aligning filing and prosecution strategies with your business plans.

In cases where Chinese applications were not previously filed, we can evaluate your technology and the current products/processes to see if we can file additional invention or utility model applications to “salvage” part of the IP.

Our multi-lingual team enables us to effectively search through prior art in different jurisdictions, including Chinese prior art in the original Chinese language, and conduct the analysis in-house. We can provide simple cursory review with basic relevance ranking, and also provide full analysis/opinion on patentability and/or freedom to operate.

A design registration can be a very valuable IP asset for any company having a physical product that can take on a distinctive appearance. This includes biomedical devices, consumer electronics, and any other household, sports or business items. This type of intellectual property is enforceable through a local administrative office in addition to the Courts. Administrative enforcement provides an inexpensive and fast route and is very effective against infringers and counterfeiters. Please contact us if you need more information regarding the requirements for filing and enforcing design patents.

Our Chinese patent attorneys have extensive experience in the entire invalidation processes, including prior art search in English and Chinese, prior art analysis, drafting and filing invalidation requests before the Patent Re-examination Board (PRB) and attending oral hearing at the National Intellectual Property Administration (CNIPA).

For those who are interested in investing in technology originating from Asia, we can investigate risks and liabilities through patentability, enforceability, and clearance investigations, technology/trade secret review and claim scope analysis. Our advice is based on our in-depth knowledge of the Chinese culture, legal system and way of doing business.

For companies that are negotiating with potential Chinese investors, we can assist you in formulating business and IP strategies, and responding to queries from the Chinese investors.

We assist clients in developing a holistic and effective enforcement strategy. We manage enforcement programs including engaging investigators, filing court proceedings or taking administrative action (for design patents) to bring about the most cost-effective and desirable outcome.

In China, our Western-type advocacy approach ensures that client’s interests are proactively pursued. We will leave no stones unturned in formulating the best enforcement plan, considering both administrative and judicial routes.