2020 China patent portfolio and application FAQ

2020-07-24

How to build a patent portfolio and patent application in China?

During the whole process of technology transfer, starting from technology R&D phase (this phase requires a comprehensive understanding of technology and market needs, assurance in the relative accuracy of the project and the support of various equipment and funds) to technology production (will involve IP protection, application scenario selection, market and business model settings, conversion model settings, etc. We have to emphasize that “technology to product” process is very complicated and requires the assistance of industrial design and production) and then, after entering marketing and trading, it is necessary to understand the market, the capital and especially the law; a series of questions such as how to conduct roadshows, how to communicate with enterprises and investors, how to communicate with the government and STP authorities, how to obtain various policies, incentives and subsidies, how to determine the transaction mode and the development strategy. Even after the deal is closed, the follow-up technology delivery implementation and project adoption also involve a series of issues, including innovation and the subsequent secondary research and development (in cooperation with the company's prior technology), technology upgrades and improvements in R&D etc., that will be the beginning of another technological innovation.

The application process is shown as follows.

Step One: Technology R&D

  • R&D project
  • Business cooperation
  • Startup team
  • Financial support

Step Two: Technology production

  • Conducting research on technology innovation
  • Technical value assessment
  • IP Protection planning
  • Transfer model development

Step Three: Marketing

  • Market matching
  • Roadshow
  • Technology transfer agency
  • Negotiation

Step Four: Technology transaction

  • Cooperation negotiations
  • Contract drafting
  • Transaction process
  • Assessment and publicity

Step Five: Delivery & implementation

  • Delivery of technology
  • Technology implementation
  • Acceptance confirmation
  • Industrialization of technology

Step Six: Follow-up support

  • Secondary development
  • Technology upgrade
  • IP
  • Technical requirements

What difficulties may I encounter in the process of technology transfer?

  • Division of ownership of transformation of scientific and technological achievements
  • Protection of scientific and technological achievements
  • Required authenticity verification
  • Technical value judgment
  • Technology transfer prevention and control

What is a high-value patent?

The value of patents is reflected in the following three aspects:

  • Technical value (advanced technology)
  • Legal value (right stability and proof of ownership)
  • Market value (feasibility of transformation of technological achievements)

High-value patent can reflect the market value, legal value and technical value of patent. They can solve corresponding problems and must have high commercial value. For example, the patent applied for the multi-touch technology developed by Apple Inc. fully reflects all three values.

  • Legal value: Apple applied for a large number of patents before coming into the market and established a strict patent rights protection network. In the lawsuits between Apple and Samsung, Apple relied on the patent to win the lawsuit;
  • Technical value: The patented technology is a breakthrough technology in the industry, and it assumes lead technical position;
  • Market value: The technology is applied to all Apple products, and all Android phones are also using it. Even Samsung phones currently pay high patent fees.

What are the characteristics of high-value patents?

High-value patents have three characteristics:

  • Stability: the stability of the patent before litigation and licensing (whether the patent is likely to be invalidated by the opponent through legal means);
  • Correspondence: before negotiating purchases and mergers, it is necessary to verify the correspondence between patents and products, and whether the product falls into the scope of patent protection.
  • Easy to obtain evidence: different law in different countries will lead to different difficulties in obtaining evidence for infringement.

These three characteristics of the high-value patent determine whether the patent can be commercialized and the size of commercialization.

How to buy high-value patents?

The company wants to build a patent portfolio in a short time, but it doesn't have a enough patent, so it needs to buy high-value patents. Where to buy high-value patents?

  • Large companies regularly sell patents, such as: IBM, HP, Sony, Sharp and other companies regularly update the patent sales list. Get their patent sales list, select and purchase appropriate patents to obtain high-value patents.
  • Carry out technical cooperation or entrusted cooperation with R&D institutions or universities to fill their own research and development deficiencies.
  • Companies willing to sell: Some companies are willing to sell patents due to poor management. Timely negotiate with these companies to obtain high-value patents.
  • Cooperate with intermediaries to get the patent list and search for patents that can be purchased. Avoid high-risk patents being purchased by opponents or NPE, resulting in litigation and infringement risks.

How can I protect my patents?

The patent portfolio of a company is divided into short-term, medium-term and long-term patent portfolio plans, and the corresponding plan is selected according to the characteristics of the company and product technology positioning.

  • Short-term patent portfolio plan: protecting existing products and technologies, developing next-generation products and technologies;
  • Medium-term patent portfolio plan: based on the mid-term business strategy of the company, product and technology medium-term planning;
  • Long-term patent portfolio plan: Based on the company's long-term business strategy, long-term planning of products and technology development, the company's long-term intellectual property goals and patent strategy layout.

How to operate my patents in China?

How to operate my patents in China

How to apply for a patent in China?

How to apply for a patent in China

What documents do I need to submit to apply for a patent in China?

Invention

  • Request
  • Claim
  • Manual
  • Manual summary
  • Abstract drawings and description drawings (if necessary)

Utility model

  • Request
  • Manual summary
  • Abstract drawings
  • Claims
  • Manual

Design

  • Request
  • Design pictures or photos
  • Brief description

Optional Documents

request for fee reduction, request for public declaration in advance, genetic resource disclosure, certificate of microbial preservation, request for substantive examination, request for confidentiality examination, power of attorney for patent;


The importance of the quality of the application documents: affect the success or failure of the application, affect the outcome of the dispute, affect the scope of protection

How will my patent application be reviewed in China?

The utility model and industrial design reviewing procedures are shown as follows.

Step One: Review content

  • Confidentiality review (only for inventions and utility models)
  • Legality review
  • Format review (form review)
  • Apparent defect review
  • Examination of other procedures and documents related to patent applications
  • Cost review

Step Two: Writing review

  • Applicants are allowed to make corrections, amendments and statements

Step Three: Review result

  • Withdrawal, deemed to be withdrawn or rejected
  • Notification of Qualification for Preliminary examination/Publication (Invention)
  • Authorization (utility model and design)

The invention patent examination procedures are shown as follows.

Step One: Substantive examination

  • Substantive examination by request
  • Submit within three years from the date of application

Step Two: Substantive examination content

  • Novelty
  • Creativity
  • Practicality

Step Three: Substantive examination reply

  • Written corrections, amendments, and statements in response to review
  • Can meet with the examiner

Step Four: Substantive examination results

  • Withdrawal
  • Deemed to be withdrawn
  • Rejected
  • Authorization/Announcement

How can I register an international patent?

The PCT is a way to apply, and the authority of granting a patent remains in the designated national office: there is no "international patent", only the PCT international application. PCT includes international phase and national phase:

  • International phase: international application, international search, international publication, international preliminary examination
  • National phase: specify on entry into the country and conduct patent examination