Member Article

Doing business and protecting your IP in China

By Justin Simpson, Founder, inovia

With growing and large businesses increasingly eager to tap into the potential of China, the country has emerged as a top priority for international patent applicants. Clearly, China is a top priority for the Prime Minister following last month’s highly publicised state visit to our shores by their President. Its good news Britain and China want to do more business together.

However, as the Chinese market continues to open for UK businesses and vice versa, UK start-ups and growing SMEs should be acting now to ensure effective IP protection for their inventions and products is in place.

Armed with some basic information about the patent process, UK companies can now make informed decisions that will help them to maximise their protection where it matters. And with the arrival of technology based IP management portals and specialised legal document translation networks, it no longer needs to cost the earth by avoiding having to outsource a largely administrative process to law firms.

Why should I do it?

Because all the cool kids are doing it. Apple Inc, the technology giant files just about every patent they file into China. Microsoft does too (sure, they’re not quite as cool, but they are smart). The world’s largest foreign filing provider, inovia, says that China is the most popular destination for their clients file in too.

But apart from that, today’s China represents both an opportunity and a threat. An opportunity as they have a large population keen on adopting western innovations. A threat because they’re great at manufacturing. In the past they specialised in “reverse engineering”, but these days the volume of Chinese-originating innovations is growing exponentially. In the last 7 years, the number of international (PCT) applications they have filed annually has grown from 7,000 to 25,000. They will shortly overtake Germany and Japan in the #2 spot behind America (that files ~50,000 PCTs).

When should I do it?

The short answer: the sooner the better, but it really depends on your business. If you think you are going to market your products in China in the coming years, start building a portfolio now. If you think your competitors are likely to make their products in China (and undercut your prices), a Chinese patent might help you stop them from doing so.

If you don’t think you or your competitors are likely to make or sell anything in China any time soon, save your money and stick to markets closer to home.

What are the different patenting options open to me for filing in China (and overseas in general)?

To get patent protection in China (and just about everywhere else) you’ll first start by filing a patent application in the UK. 12 months later you need to decide what to do about overseas filings. You can either buy some more time (an extra 18 months) by filing an international-type application called a PCT application and then lodge a copy of your PCT into your chosen countries. Or, if you’re only seeking coverage in 4 or fewer countries (and you’re not going to change your mind and want broader protection later), you can file directly into those countries by filing a Direct (Paris Convention) application.

Whether you go via the PCT or Paris Convention really depends on how many countries you want to get protection in. If it’s 3 or less, go the Paris Convention route. If it’s 4 or more using the PCT is the most cost-effective approach.

The only other thing to consider in China is whether you want to get an invention patent (the usual way) or a utility model (for simpler inventions). A good article explaining the differences is here: https://www.inovia.com/2013/06/comparison-between-invention-patent-and-utility-model-in-china-2/

How can I make the filing process as easy, fast and affordable as possible?

In the olden days (ie pre 2000) you didn’t have a choice about how you filed your patent applications overseas. You asked your local patent attorney and they got in touch with their patent attorney friend overseas that they met at some conference. Because they were friends and exchanged work, they did so at very full prices.

These days there’s plenty of choice. You can still ask your attorney to handle the process for you or you can go to one of a number of “foreign patent filing providers.” Whilst inovia pioneered the process over a decade ago there are several decent firms around that provide alternatives (usually cheaper) to the traditional patent attorney model.

Why use inovia?

inovia’s foreign filing technology is quite simply the best in the market. And we’re backed by a £400m patent translation company, RWS. RWS’s translation quality and inovia’s technology are a powerful mix. We’re #1 in the world in terms of volume.

This was posted in Bdaily's Members' News section by inovia .