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Is it beneficial to protect my product or design in China?

15 Jan 2009

There are three types of patent protection available in China. Jacqueline Hewett asks patent attorney Mark Yeadon to explain the options, exactly what each one covers and why they are worth considering.

Harrison Goddard Foote (HGF) is a UK-based firm of patent and trade mark attorneys that handles all aspects of protecting inventions, designs and trade marks across Europe and the rest of the world. Together with intellectual property (IP) solicitors at its sister firm HGF Law, the company is a one-stop-shop for everything relating to IP from protecting ideas right through to enforcement. Mark Yeadon of HGF is a chartered UK patent attorney and a European patent attorney whose clients range from lone inventors and universities and their spin-outs right through to multi-national companies.

Why should I bother applying for a patent in China? Is it worth it?
Patents are territorial. If you hold a UK patent or trade mark then you can only stop people from making your invention in the UK or importing it into the UK. You can't stop people making it in China and then selling it in the US, for example.

If you want to be able to stop people manufacturing and selling your invention in China, then you must have a Chinese patent. When you have IP rights in China, you can stop companies from copying your product at source and using your trade mark in China. On the other hand, if you are manufacturing in China and don't care that Chinese companies could copy and sell your product in China, there is no need for Chinese protection.

Increasingly, companies are protecting in their main markets (usually Europe and the US) and also in China. It is worth remembering that the potential revenue opportunity and market in China could be as much as three times that in Europe or the US.

The protection available and the manner in which it is enforced have improved dramatically. The rights that you can obtain with a patent today are likely to become more and more valuable in the future.

What guarantees allow me to enforce my IP in China?
China acceded to the World Trade Organization (WTO) in December 2001. In signing up to the WTO, it committed to certain minimum standards of protection that it must provide for IP. Since that date, there has been a significant improvement in terms of the enforcement of inventive patents, design patents, utility model patents, trade marks and copyright. The Chinese government is understandably unsympathetic to people who do not have rights in China. You can't stop a Chinese company copying your product and selling it in China if you don't have rights in China.

According to the World Intellectual Property Office, China increased its share of worldwide patent filings four-fold from 1.8 to 7.3% between 2000 and 2006. The Chinese expect other countries to provide world-class enforcement. This is one of the reasons why the Chinese government is keen to provide world-class enforcement.

How do I apply for a patent in China? Is it necessary to use a Chinese patent attorney?
There is no need to approach a Chinese patent attorney. A UK patent attorney will act for you, and this is probably cheaper than going direct, and far more effective because you would be dealing with a local person. This is crucial as during the application process you will have to explain the invention to the patent attorney.

At HGF, we have a network of associates in China that we work with regularly. We are able to get excellent value for money and choose associates based on their specialisms. The associate translates the application into Chinese and works with the state intellectual property office of China to obtain the patent.

What types of patent protection are available in China?
There are three kinds of patent protection available in China: invention patents, utility model patents and design patents.

Invention patents provide protection for a product or process. They are subject to rigorous and substantive examination to ensure that nothing exactly the same has been disclosed to the public before and also that the invention has an "inventive step". Patents are usually granted within three to five years and can be maintained for up to 20 years from their filing date.

Utility model patents only protect products, not processes. The patent covers what is special about the product, which could be the way you have designed a lens or some electronics, but not the process that you used to make it. In contrast to invention patents, these patents are not subject to substantive examination, unless you want to rely on it in order to take action against an alleged infringer. Utility model patents tend to get granted quicker than invention patents. They can be maintained for up to 10 years from filing.

Design patents protect the appearance of a product and can also be maintained for up to 10 years from filing. These patents protect the appearance only, not the way that the product operates or functions. For example, it would cover a shape such as a laser casing that had something distinctive and new about it. A design patent will stop carbon copies of your product being made, so no one can steal the value that you have added through your unique design.

For more information on the IP services offered by HGF, visit www.hgf.com.

• This article originally appeared in the January 2009 issue of Optics & Laser Europe magazine.

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