China – Patent Protection Case Study: The Importance Of A Robust IP Enforcement Strategy.

 

6 December, 2016

 

Enforcing your patent rights in China could oftentimes be challenging as counterfeiters are also getting smarter and more innovative over time. However, if a European SME has a good IP enforcement strategy in place, it is possible to successfully defend your business against patent infringers. In today’s blog post we are taking a look at a case study involving a Spanish SMEs that experienced some issues with patent infringements. This case study shows the importance of a good IP enforcement strategy for the business success.

 

Case Background 

 

A Spanish SME in the scientific research and development industry has patents around the world and in China on certain cutting edge surgical instruments. At an international exposition of surgical instruments the Spanish Company discovers a Chinese company advertising their patented products under the name of the Chinese company. The Spanish company obtains flyers and photos of the products. However, the Spanish company is also concerned that the Chinese company might have defensive utility model patents in place. Since, utility model patents are approved quickly (usually within one year) and do require official examination on novelty, inventiveness and industrial applicability, this could potentially bar the Spanish

company from entering the Chinese market.

 

Action taken

 

The flyers and photos of the products obtained by the Spanish company are not recognised as evidence under Chinese law. In China, potential evidence must be notarised by a Chinese notary public before it is recognised as official evidence. Therefore, the Spanish company hires a law firm and a Chinese notary public to facilitate this process.

 

The company first must employ a patent attorney to make correct assessments on whether infringement has actually occurred and on the patent portfolio of the Chinese company. This is necessary because Chinese companies often use defensive patents against foreign companies to scare them away from the Chinese market and from going through the financial burden of a patent infringement case.

 

Under a defensive patent case, the Chinese company would claim that the original patents of the Spanish SME to be invalid and that the SME would therefore be infringing upon the patents of the Chinese company which are often utility model patents.

 

After conducting a patent search, it is revealed that the Chinese company indeed has many utility model patents. The Spanish company’s patent attorney will need to make a patent assessment with regards to the infringement case after the notarised evidence is obtained. After obtaining the evidence, the Spanish company has three options. The first would be to negotiate with the Chinese company to stop the infringement. Secondly it could start administrative action through the local Intellectual Property Office where the infringer is located in order to raid the premises and confiscate and destroy the infringing goods and to penalise the company. Finally, the Spanish SME could start a court action against the Chinese company in order to obtain a long-term solution to the infringement.

 

Lesson learned:

 

• Make sure evidence is notarised in China by a Chinese notary public
• Assess a competitors patent portfolio before taking action
• Assess whether or not a Chinese patent is infringed before you start any enforcement against a Chinese infringer.