In search of Patent Attorneys in China - Part 2

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 search of Patent Attorneys in China - Part 1

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.

Those we called foreign firms, they have local staff who can handle both English and Chinese work, no problem in working with us for any patent applications coming from our US customers. They have engineers from different fields, including biochemical, electronic, mechanical... So we would be very comfortable working with these people. What is the catch? We would price ourself out of the market. These firms were charging US rate, that us USD5,000 and up for standard process utility patent.

Then there were a large number of local and national firms. Local firms with one office in their city of operation, among other things, are likely to be small firms with one or two experience attorneys. Again, some of these firms were a special products in China.

Years before, China have a very large government structure in the local levels that duplicated Central Government. That means as there was a Patent Office in the Central Government level, they had a similar offices in province, county and city levels. For some of these officies, they were actually an office with many plates, that is, one small office taking care of a lot of different areas of trade, commerce, manufacturing, etc. For some of the local governments that really need to govern local activities that were related to intellectual property protection, then a number of local government officials were handling patents and related matters. Then cames 1990s, to downsize government and drive privatization, some of these local goverment officials were asked to leave the government and set up their own Patent Attorney business. They had their local government and business connection. This was good for them to start off their business.

However, some of the local and national firms were charging US rate. With that knowledge we would wish them luck and said goodbye.

One customer who got we started

In mid-2001, a customer who needs about 10 China patent applications per year approached us, see what we can help. We took off as a practice to enlarge our coverage of legal and consultancy services. We also need to see what additional resources we need in order to provide values to this and other customers.

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.

How we started our business

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 China. Then a company was formed to handle this.

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…

The begining of a patent agent

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.

I manage patent application since 2002, I did patent application in China, for customers mainly based in Hong Kong and US.

I found this challenging because I did a lot of translation: Translate technology ideas into 'people with suitable training' can understand essay; Translate English into Chinese; Translate business requirement into tasks list; Translate Intellectual Property into property protection strategy...