The China Patent Shuffle

Kelly Spors, the Wall Street Journal's spot on Q&A columnist on entrepreneurship and small business answered a question today [subscription may be required] on securing a China patent.

The question asked of Ms. Spors by a U.S. patent holder is whether it is "worth spending the money for a patent in China to prevent knockoffs from being made there?"

Ms. Spors says probably yes. She starts out by noting that given "China's reputation for meagerly enforcing intellectual property rights, getting a patent there may seem like a pointless expense. But you may kick yourself later on if you don't."

She then rightfully notes that in spite of the problems companies have in enforcing their patents in China, they are sometimes critical to prevent others from patenting YOUR product:

The big risk: If another company patents your idea first, it can turn around and sue you for infringement. It isn't as much about "getting a patent in China as preventing other people from getting one," says Siva Yam, president of the U.S.-China Chamber of Commerce, a Chicago-based organization that helps businesses navigate China. Mr. Yam says the Chinese government is trying to better enforce patents, so having a Chinese patent may be worth more in the future.

Mr. Yam recalls a few years back when a Pennsylvania company decided not to seek a patent in China since it was already selling the technology there. But a Chinese company later sought and received a patent on a similar technology and then sued the U.S. company, along with writing letters to its customers threatening to sue if they continued doing business with the firm. The Chinese company eventually backed down, but not before the U.S. company had spent ample time and money fending off the claims.

She says it also makes sense to get a Chinese patent if you are selling your product into the Chinese market and that a "patent will allow you to fight back if the manufacturer starts selling knockoffs of your product." She then notes that if you are going to seek a China patent of that which you have already patented in the United States, you must do so within a year of filing your U.S. patent application, unless you get an extension by filing an international patent application. She is absolutely right about this. My firm has received countless phone calls from companies who are agonizing over whether or not to get a China patent until we end their agony by telling them they are too late.

I am probably a bit less upbeat than Ms. Spoor on the benefits of securing a China patent because they do tend to be difficult to enforce in China. One of the Chinese lawyers with whom we regularly work is even of the view that getting a strong trademark and constantly updating your product militate against the need to get a patent most of the time. However, this does not resolve the problem of someone else stepping in and registering "your" patent in China. Though we are constantly seeing instances where Chinese companies swoop in and register someone's US trademark in China, this is not common with patents and I think this is because patents are generally too complicated and expensive.

Ms. Spoors quotes John S. Paniaguas, a patent attorney at Katten Muchin in Chicago on Chinese patents costing "U.S. businesses $15,000 to $20,000 -- factoring in the filing, legal and language-translation fees involved." She states that the easiest route for getting a China patent is to hire "a U.S. patent attorney who will work with a foreign patent attorney." I disagree with her here as I view it as an unnecessary expense to have a patent lawyer working on both sides of the ocean. If you already have a U.S. patent and you bring in a quality Chinese lawyer to handle the China patent filing, it is perfectly sufficient to have your Western lawyer not be a patent lawyer,p articularly if that lawyer speaks Chinese and is well versed in Chinese law. Cutting out this patent lawyer duplication ought to reduce your China patent fees and expenses to around $10,000 to $15,000.