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GE On China IP Protection

China IP Protections

Just came across this article on DrugResearcher.com, “GE’s IP expert offers tips on China” (h/t to Peter Zura’s Patent BlogThe 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:

  1. “First and foremost,” make sure the patents are registered in China in Chinese, “not just English.”
  2. Make sure the goods are as affordable “as possible so as to discourage counterfeits.”
  3. Make sure customs “are aware of you and your product.”
  4. Pursue litigation when your patent has been infringed.
  5. “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.

3 responses to “GE On China IP Protection”

  1. Same Model / Different Result
    Today’s China Law Blog contains a short but pithy post reporting on remarks by GE’s chief patent counsel on strategies for protecting IP in China. While I commend the post to you for a concise list of points to consider

  2. Excellent advice on patent protection, but what I appreciate most is your observation that the model for analysis doesn’t change from one market to the next but the result of that analysis can certainly change due to the cultural and contextual inputs encountered in any given market. Therein lies the secret of much about international business — one of those simple yet profound things.

  3. Craig —
    Thanks for checking in. You make a good point. I only wish I could say I knew I was being profound when I said it. I actually have come to love simplicity more than profoundity. I am always telling clients that my 20+ years of legal practice has convinced me that 99 out of 100, the simplest solution is the best solution. I really liked the post you did on this and I urge everyone to go to Going Global to check it out.

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