Number of patent applications in China
I want to share my experience, as a patent agent in Hong Kong, for working on Intellectual Property Protection in China and the rest of the world.
I think our company break a record. From instruction to filing: Two days.
Labels: Business
Congratulations to one of my clients, who is one of the award-winners of the “Innovation-Knowledge Enterprise Award” which is co-organized by the Hong Kong Productivity Council and Guangdong Provincial Intellectual Property Office since 2004.
This award is targeted with a view to increase the Intellectual Property (“IP”) management capability of Hong Kong and mainland enterprises. When the enterprises are facing the arising challenges from the Pearl River Delta region due to the economic upsurge, this award serves as a tool to upgrade them from Original Equipment Manufacturer (OEM) to Original Design Manufacturer (ODM) and Original Brand Manufacturer (OBM).
As it is commonly known, or recognized, that there are tremendous infringement products from the mainland China, this award become more important, meaningful and perhaps sarcastic!
My client is a product development and investment company. The main business is to identify product improvement opportunity and invest in the design, whereby intellectual protection is the major vehicle to protect the return on investment.
My client is involved in inventions related to product improvement and new product design. The areas of improvement include improvisation on functionality, durability, cost in production and maintenance. They have the core design and management team resides in Hong Kong and has a manufacturing facility in Dongguan where a team of draftsmen, testing engineers and production workers helps the design, prototyping, testing and pilot run process. With more than 150 workers, the Dongguan factory also produces products that export to North America, Europe and Middle East.
My client has applied and obtained more than 10 patents for design done before 2006. All of these patents are now commercialized and products being sold or licenses granted to US companies. Since 2006, the group has filed more than 15 patent applications per year in the PRC, United States, and European Community. Currently, they own more than 70 patents or patents pending right in these countries/community. Non-exclusive license rights for about one-third of patents pending are granted to companies which expects to market products using these new invention in their respective countries. Of course, we handle most of their intellectual property related work.
Further information about the Award can be found here:
http://www.hkpc.org/html/eng/award_schemes/award_schemes.jsp#awards6
Hi, after so many months, I am back. I was planning for expansion of our service offering, so we dont want to limit ourself to handle patent applications in China, Hong Kong, United States and Europe. Let's talk about that later.
This session I am very busy with various business and personal matter, so have to do the visit on Sunday.
I visited the show because two of our clients asked us to do, to check out if there is any infringing products. I spotted one potential infringement and decided to purchase the product for further analysis. We will have our associated company in China to handle that later.
After doing what I have to do, I also want to see other types of goods, fishing if you like. I saw at least 5 counts of possible infringement, two are design patents, one utility patent. These can be good job to work for their IP owner. As I am not a lawyer in Hong Kong, I have more freedom to cold call custmers!
Chinese New Year holidays came and gone. Busy as hell.
I was doing some search as a background search on an invention patent. I am working on a leisure product which is not common in China until in the past 2 or 3 years, so I don't expected a lot of patent in this area from domestic inventor.
I was wrong.
I found there were quite a large number of Invention or Utility Modle Patent from domestic inventors / applicants, with filing date in or around 2003. Now it is four years after these patents were published but not granted. I also noticed that these patents represent design of a part of the product. I can say that it would be a challenge to get granted, given our knowledge of this product our clients and their competitors make.
Is this aggressive patenting or even patent squattering?
So regardless of whether you sell to China now, if you or your competitor manufacture in China, do get IP protection in China.
Labels: Business
I was working before the holiday to update our 'sales material'. I have checked the government information related to the HK Government Patent Application Grant, here is some highlight:
Labels: Business
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Our firm have quite some works in January, including a few deadlines towards end of January. We got some forms filled and search report answered, some applications filed.
Then we have 5 new inventions in a 2 hours meeting with the client. So I started looking for one more agent firm in Shenzhen. In 2002 there were less than 10 patent attorney firms in Shenzhen, now there are more than 30. Some of the new one are actually started in recent years or months, and they are hunger for business. This is good for pricing but may be bad for quality. I heard that some drafting work were not done professionally and there were a lot of requisition later on, and now the effect is becaming serious, as these new firms have been operating for more than 1 year now.
However most of the raise in patent applications are utility model for domestic applicants.
Labels: Business
The Hong Kong Intellectual Property Department is going to have an Open Day on 9 Feb this week, however, I only knew this from one of an association as a member. In the official web site of IPD, this event was not listed.... Well, that seems a good invitation to this event.
Labels: Business
Please check that out on the official web site:
Labels: Business
I have been very busy in January. Not that I have finished my work now, I just do this during lunch for an reply to one of the reader. Will tell that works in January later.
A reader asked about what is the definition of Patents in Hong Kong. I am not adding value to cite you the law, as law are easily accessed via the web.
Hong Kong was under British ruling for more than 150 years, so law and regulation related to intellectual property protection pretty much follows British system and that has not been changed since China took over, excepted for some operational aspects.
Now the fine print: legally Hong Kong has an independent legal system, meaning patent needs registered in Hong Kong before it got protection. For example, if a patent is registered in China, it won't get automatic protection in Hong Kong.
Then what is the patents application system? There is no examination system but only a registration system. The Hong Kong Intellectual Property Department doesn't have a group of engineers and attorneys to examine patent applications. They rely on the respective 'central government' patent office(s), this is not a political correct statement but will give you the idea. Before 1997, legal owner of a patent can apply for registration in Hong Kong if the same have been granted in U.K. Since 1 July 1997, legal owner of a patent can apply for registration in Hong Kong if the same have been granted in China, U.K. OR the European Patent Office (designating U.K.).
I want to add that there are two types of patent in Hong Kong and there is a time schedule when to file registration.
More questions before you read this? Guess so, let me put some more Hong Kong patent related issues in future blog.
Labels: Business
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In China, there are many ways to classify patents, one of the way is the nationality of patent applicant (owner). The first difference is the application fee. A local Chinese citizen or company enjoy a much lower application fee, while a foreign resident or company have to pay a higher fee for the patent application, both governmental fee and handling fee charged by patent attorney. There are two sides of a coin. For example, a customer had companies registered in Hong Kong and China, we recommend the customer to use the Hong Kong entity (regarded as a non-domestic under Patent system) as the applicant. Why pay more for a foreign status?
In the Chinese socity, government is like the grand parents, and the local government officials are the parents, so we have the old saying of "father-and-mother-officials", these officials are the fathers and mothers of the countrymen. The central government actually represent the heaven. So much so for the history, nowadays goverment officials still want to protect their people like parents taking care of children, in particular against some bad-faith foreign business man.
Now, a Chinese inventor, after all the hard work and went though the patent application process, eventually got something valuable, decided to sell the patent rights to an investor in Europe, say for USD200,000. The parent(s) may step in and say, look, the international market value of such piece of work should be USD500,000. The inventor may say "my price is the best I can bargain for." Well, in the transfer of patent right process, the government have the right to look at such transfer and make requistion, and in the end, the tax man will charge tax based on the USD500,000 value estamted.
However, a Hong Kong inventor may sell the patent to a US company and such transfer of right only calls for a simple registration. No question asked.
So pay more for the foreign status and less trouble when such transfer is required in the future.
There are tax implication even before such transfer, so talk to your accountant as well as the patent attorney.
Labels: Business
We need to find one or more Patent Attorneys in China as an association to get our business started.
Apart from the smaller firms, there are national firms. National firms may have one office in Beijing and branches in cities of their choice. A national firms with offices close to us are important. It is the Chinese traditions to deal with some one you met before, not some one you talked over the phone or communicated by email. By simple logic, a large firms have a more diverse field of expertise. Be it chemical, electronic, mechanical, and even legal. That may be useful for us, so that when we expand beyond the first customer. In house attorney at law would take up the legal fight for IP protection in China. That was not part of our initial reuirement for association but nice to know our potential partners have attorney at law when we need one.
Interesting enough, there were large and small firms who charge US rate, at the same time, there are large firms who charge less then US rate. So high price is not a guarantee of professional service.
We ended up using one national firm and one local firm in our first year of operation. However, we only gave one job to the local firm in Guangzhou and switched to another national firm, making two national firms as our partners.
In parallel with the experience of the start up of our company, I also want to share some experience with current customers. Dont be excited, nothing confidential.
A Hong Kong customer engaged us for about one year. The customer has Small and Medium Enterprise (SME) status in Hong Kong. The current definition is on the number of staff. A manufacturing company with less than 500 staff, or a non-manufacturing company with less than 50 staff is an SME. The Hong Kong SAR Government may grant a fund of HKD100,000 (about USD12,800) for the application of patent in countries of the SME's choice, when certain conditions are met.
The company runs his management, design and engineering office in Hong Kong. Manufacturing are being done in China with customers in US. They engaged us in doing trademark work and had some discussion on patent works. So we had an early start on their patent process and adviced them of this governmental funding scheme. We worked with the company for filling up the grant application about three months before the patent application was ready. The grant got approved in mid-2006.
The China Patent Application (Design Patent, equivalent to Utility Patent in US) was ready and waiting for the paper work for the grant, when the grant was approved, the Application was filed within the week. Then we did the translation back to English and get ready to file the US Patent Application after this New Year holiday. This patent would claim the China Patent filing date as priority and so no time was lost. Later on, we will file for Hong Kong Standard Patent.
It is so nice that 90% of all these worked are paid out of the HKD100,000 grant. So a Hong Kong company is on his way of protecting his intellectual rights of products he sells in US.
Labels: Business
In Oct and Nov 2001, we launched a major China expedition, that included Shenzhen (just across the broder), Guangzhou (2 hours by train) and Beijing (4 hours by plane). We planned our trip with internet search, referral by other law firms, etc. We visited a number local and foreign patent attorney firms and see how we can team up our association.
In mid-
We need technicians for drawings, we need experience patent attorney to handle China filing, we need to plan to expand after this customer. We did feasibility study and a simple business plan with financial projection, and we kicked off.
First we decided to have associates in China to handle patent filing, we leveraged on one of our sister company who have draftmen in China. The small office was based in Hong Kong to work with customers in US and Hong Kong. This was the plan and we need to execute it quickly for the first batch of works.
In late 2001, a group of IT, Electronic and Mechanical engineer, together with a lawyer came together, spent a few nights together, and then get hold of a customers who need a lot of patent protection in
Why a bunch of HK professionals can be a middle man between a customer and China Patent Office? What do we offer? Will tell you more…
I would like to start a blog, as a patent agent living in Hong Kong. I want to share my experience, from the very beginning, when I started this business.