Just came across this article on DrugResearcher.com, “GE’s IP expert offers tips on China” (h/t to Peter Zura’s Patent Blog) The article [link no longer exists] consists mostly of China IP and patent advice from Todd Dickinson, General Electrics VP and chief intellectual property counsel.
Dickinson talked about how if the R&D for an invention is done in China, “the draft patent must first be filed in China before it can be filed anywhere else and if the patent isn’t used within three years, the government has the right to claim the patent for itself under the compulsory licensing law.” He notes the problem with this law is that three years is often not enough time to get a final product ready for market, while filing the patent in China “immediately exposes the invention to counterfeit.”
Dickinson sets out a portion of GE’s road-map for protecting its IP in China:
- “First and foremost,” make sure the patents are registered in China in Chinese, “not just English.”
- Make sure the goods are as affordable “as possible so as to discourage counterfeits.”
- Make sure customs “are aware of you and your product.”
- Pursue litigation when your patent has been infringed.
- “Be very mindful of introducing your key technologies into China.”
All very good advice.
The decision making model to be used in deciding whether to file a patent in China is really no different from that in North America and the European Union. However, because the facts on the ground with respect to patents in China are so different (in particular, the rampant counterfeiting and the low damage awards for infringement) the actual decision itself will often be very different.