by Avraham Hermon, Israel Patent Attorney, US Patent Agent, Partner JMB Davis Ben-David

One of the important questions business owners consider when filing patent applications is, in which jurisdictions they should pursue patent protection. Business owners frequently have limited budgets for patenting activities and cannot afford to file in every jurisdiction worldwide.

For many patent applicants, an important consideration when selecting filing destinations is the effectiveness of the local patent system, especially for non-local entities. My firm frequently files patent applications in China on behalf of our clients, but early-stage entrepreneurs often question the value of having a patent in China, and whether it can really be enforced.

Recently I had the opportunity to assist a client in a proceeding in China which offers insight into the value of a patent in China. This client had obtained patent registration for their invention in many jurisdictions, including China, in relation to a product that they have been marketing for many years. Their patent was already close to expiration when I received notification from our Chinese associate that a Chinese party had filed a request for invalidation of the patent with the China Patent Office (CNIPA), and that we were requested to respond to their invalidity claims within a short period of time. The client, recognizing the importance of this patent, requested that the request for invalidation be translated. After reading the grounds for invalidation, I worked with the client to prepare a response to the request, which together with evidence we later provided, would serve as the basis for a hearing to be attended by our Chinese associates. The hearing, which was conducted over video because of the COVID-19 pandemic, took place within three months of the filing of the request for invalidation. 

During the hearing, our Chinese associates presented the evidence and arguments for patentability. Within a few weeks of the hearing, the opponent withdrew its request, leaving the patent in force as granted.

This hands-on experience defending a client’s patent in China has revealed important insights about the Chinese patent system which can reassure potential patent applicants:

  1. The petitioner who requested invalidation was aware that my client’s patent was going to expire shortly but did not take a risk of infringing it. This appears to show that they were deterred by the existence of the patent and of possibility being sued for its infringement. 
  2. The proceeding, from filing of the request for invalidation until the hearing, took less than three months. From my experience with patent invalidation/ opposition procedures in other jurisdictions, the Chinese process was extremely quick. Even though China was still dealing with the COVID-19 pandemic, as most of the world was, timelines for the procedure proceeded quickly.
  3. The patent owner is an Israeli, not a Chinese, company. Nevertheless, the procedure was conducted fairly and a positive outcome for the patent owner was obtained. 

Despite continuing misconceptions of some clients regarding IP and China, the above case is just one more example of the efficiency of the Chinese IP system, and that as part of a market strategy, an investment in Chinese IP assets of all kinds (patents, utility models industrial designs, trademarks and copyrights) is a valuable investment. 

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