Todd Dickinson, former USPTO Commissioner and current VP and chief IP counsel at GE, spoke at the recently-held China intellectual property conference in London, and provided some tips for companies looking to expand their patent rights in China:
• Policy regarding ownership of employee inventions is unsettled in China. Currently the law leans towards the employee, which can create problems from a business perspective.
• If the R&D for an invention is carried out in China, the draft patent must first be filed in China before it can be filed anywhere else.
• If a patented technology isn't used within three years, the government has the right to claim the patent for itself under the compulsory licensing law.
• Filing a patent in China may immediately expose the invention to counterfeit.
• Make sure relevant patents are registered in Chinese, not just English - patents not filed in Chinese have a tendency to be disregarded. Keep in mind that translation costs may likely be higher than the filing process itself.• Make sure customs officials are aware of you and your product. Don't let infringement continue without a challenge.
• Most importantly, while China has taken great steps in protecting IP rights, the system is still perceived as having fundamental flaws. Think hard about releasing key technologies in China. According to Dickinson "at the moment it is just not worth it."
However, see the article "Overcoming Intellectual Property Phobia in China" - according to Chief Justice Jiang Zhipei, commissioner of the Trial Committee and Chief Justice of the Third Civil Trial Chamber (Intellectual Property Right Trial Chamber) of the Supreme People's Court of China, “Ninety per cent of infringement cases launched by foreign firms in China are successful, however very few are embarked upon as it is perceived as being too hard.”