VOICES FROM CHINA

VOICES FROM CHINA

An Interview with Chinese IP Experts on the Recent Trends in IP Protection and Enforcement

In the lead up to IP Academy’s Global Forum on Intellectual Property 2015 (GFIP 2015), we had a chance to conduct an interview (in Mandarin) with some of our panellists for “China – Recent Trends in IP Protection and Enforcement”, our panel discussion at GFIP 2015.

Wang HaibingWang Haibing
Director of IP
Xiaomi Inc.

Wang Haibing graduated from Jiangxi University of Finance and Economics, majoring in Information Management and Information System in 2003. In the same year, he joined Foxconn Technology Group as a patent engineer in charge of drafting and analyzing software-related patents. In 2007, Haibing joined Shenzhen Xunlei Networking Technologies and established its intellectual property department to facilitate and protect the company’s key technologies and product innovations. Haibing joined Xiaomi in 2012 to build its intellectual property department, and he is currently the head of its intellectual property department. He is in charge of Xiaomi’s global IP deployment strategy with regards to all forms of IP including patent, trademark, domain name and copyright. He also manages Xiaomi’s IP licensing negotiation, IP acquisition, IP dispute and litigation.

Helen Cheng

Helen Cheng
Partner
Zhong Lun Law Firm

Helen Cheng is a partner at Zhong Lun Law Firm‘s Shanghai Office. She holds a master’s degree in science and an LL.M. from Stanford Law School. In addition to her New York bar license, Ms. Cheng is admitted to both the Chinese bar and the Chinese patent bar.

Ms. Cheng has practised Chinese IP law since 2000. Her practice encompasses all aspects of IP, including patent and trademark litigation, trade secret protection, anti-unfair competition, licensing and technology transfer, IP due diligence, and client counselling in a variety of industries.

Ms. Cheng was recognized by Chambers and Partners as an “Outstanding Young Partner” in 2014, a “Leading Lawyer for IP Litigation” in 2014 and 2015, and a “Leading lawyer for Healthcare” in 2015. She is praised by clients for her business acumen as well as her communication skills and strategic approach (Chambers 2015 Edition). Ms. Cheng has published numerous articles on IP protection in China in a number of influential periodicals and magazines. She is also an adjunct professor at the East China University of Politics and Law.

Tong XinTong Xin
Senior Licensing Director
ZTE Corporation

Mr. Tong Xin is Senior Licensing Director of ZTE Corporation, a globally-leading provider of telecommunications equipment and network solutions. Mr. Tong leads ZTE’s patent licensing and IP monetization projects all over the world. His work covers license negotiation, IPR policy research, business strategy, industry cooperation and investment. His team is trying all efforts to explore approaches of IP management and utilization matching Chinese market environment.


1. Intellectual property (IP) in the smartphone industry is a highly contentious issue, as evidenced by the protracted legal tussle between Samsung and Apple. Given the strides China has taken towards implementing and improving IP enforcement and awareness, what impact do you foresee this having on China’s rising smartphone and high-tech industries?

IP在智能手机行业是一个非常有争议的问题,如三星和苹果之间旷日持久的法律纠纷。鉴于中国采取趋向实施和提高知识产权维权和意识,您认为这对中国的崛起的智能手机和高技术产业有什么样的影响?

HB: With respect to this issue, I believe that there is cause for optimism. Since 1985, the Chinese government has actively promulgated and raised awareness about IP and patent laws in China. Within the last two years, we have seen a fine-tuning of China’s IP regulations and policies, such that our market is starting to align itself with other mature IP markets such as in Europe and the United States.

In the early years, IP awareness within China’s domestic companies was fairly low. However, thanks to China’s economic reform and the effects of globalisation, the business environment in China and the rest of the world is now very different – the rules of the game have changed, and there is greater mutual integration and influence between China and the rest of the world.

Corporations today are realizing that there are no geographical boundaries for the protection and enforcement of IP rights. More so, China is realizing that only by respecting the IP of other countries, will there be reciprocal recognition of the IP of Chinese companies abroad. This is evidenced by the large number of patents being applied for by Chinese corporations, not just domestically but abroad as well. This also highlights the aspirations of Chinese companies to protect and respect IP rights. Furthermore, policy-makers are also facing increasing pressure from both domestic and foreign enterprises to make further improvements to the IP legislation and judicial system in China.

我对于这个问题持乐观态度。中国知识产权自1985年颁布实施专利法以来到近一两年的政策和制度建设已经趋于完善,与欧洲和美国等成熟市场相比,已经越来越趋一致。早期中国国内企业知识产权意识比较低,但得益于中国的改革开放以及经济的全球化,中国企业走出去,国外企业走进中国,已经不是新闻,游戏规则的相互融合和影响已经到了一个阶段性。尊重知识产权和保护知识产权已经是没有地域界限的共识,企业已经认识到尊重别人的知识产权,才有可能别人也尊重自己的知识产权。我们可以看到中国企业非常积极的申请专利,不仅在国内还包括国外,充分体现了中国企业希望保护自己知识产权的愿望。并且,政策层面也越来越感受到来自国内企业和国外企业的压力,从立法到司法的程序中更加积极推动改进。

HC: In recent years, the strength of IP protection and enforcement in China has greatly increased following China’s large scale reform to its IP regime. This has also increased the value attached to IP in China generally. In light of this, I believe that the smartphone and other high-tech industries will be affected in some of the following ways:

近年来,在中国不断强化知识产权保护的大形势下,知识产权保护力度加强,知识产权经济价值增加。在这样的大前提下,智能手机和其他高技术产业的发展重点和发展趋势肯定会受到影响,主要体现在以下几个方面:

i) Firstly, we will see an increase in patent cooperation and cross-licensing between companies. The smartphone and high-tech industries are all patent-intensive industries, with large patent portfolios. Given the large number of patents owned by these enterprises, competing companies may find that they own patents which rivals may want to utilise, and vice-versa. There is therefore an opportunity for “cross-distribution” of these patents.

Furthermore, the cost of enforcing a patent claim against a competitor through litigation can be very high. This is especially so in the smartphone and high-tech industries, where the state of technology develops very quickly, and would make little commercial sense to enforce an IP that quickly becomes obsolete. In these circumstances, it makes much more sense for the respective patent holders to enter into cross-licensing agreements, in order to create a win-win cooperation model. It is my belief that this will gradually become the norm in the industry.

企业之间专利合作、交叉授权的增多。智能手机产业和其他高技术产业都是专利密集型产业,在这种产业中的企业大都拥有数量众多的专利,由于专利基数很大,各竞争对手手中可能都会握有一些对方想获得但又无法绕开的专利,这些专利可能呈现“交叉分布”的状态。有时,针对竞争对手的专利进行诉讼既费时又花费巨大,且这些高技术产业、特别是智能手机领域技术发展十分迅猛,技术更新速度快,专利诉讼带来的巨大时间成本是不可承受的。在这种情况下,对各自持有的专利订立交叉实施许可合同,互相之间创造合作共赢的模式相信将会在这些产业之中逐渐成为主流。

ii) Secondly, there will be an increased sense of urgency for innovation in China. On the one hand, a judicial environment that is increasingly recognising the importance of IP rights will help to reassure innovative companies that the fruits of their labour are being protected. Increasing the effectiveness of IP protection, curbing patent infringement – these measures will help to accelerate the transformation of Chinese goods from being “Made in China”, to being “Created in China”.

The flipside however is that companies that are less innovative will find it harder to gain a foothold in the marketplace. They must then learn to increase their innovative capacity, or risk being eliminated from the marketplace. For example, there is a race today by some of the country’s leading smartphone manufacturers for the development on 5G telecommunication patents, which is reflective of the urgency for innovation that Chinese enterprises now face.

企业创新的紧迫感增强。一方面,知识产权司法环境的日益好转将减少那些真正具有创新实力的企业的后顾之忧,切实保护创新成果,遏止专利侵权,才能加速‘中国制造’向‘中国创造’的转变;另一方面,对于创新能力不足的企业来说,要想继续在智能手机等高技术产业站稳脚跟,必须进行创新,否则市场占有就会流失,企业就会逐渐被市场所淘汰。比如,国内某些智能手机的领先企业已经开始5G标准专利的布局,可以直接反映中国企业已经开始注重创新这一发展趋势。

iii) Lastly, companies will start to increase their efforts to protect their IP rights. I would highlight that in recent years, the Chinese courts have consistently seen rapid double-digit growth in the number of IP cases being heard. In 2014, the total number of new IP cases heard in Chinese courts was 133,863, a 19.52% increase from 2013. While these numbers do not directly reflect the number of cases that stem from the smart phone and high-tech industries per se, it is still instructive given the fact that both the smart phone and high-tech industries require large amounts of R&D and capital investment, and are very likely to be involved in patent disputes.

Given the increasing IP and patent case load, coupled with the increased crackdown on IPR violations, the amount of compensation that has been paid out under infringement cases has also started to gradually increase. It is therefore inevitable that great importance has been attached to the monitoring and strengthening of IP rights for such companies.

企业将会加强知识产权维权力度。这里首先提供一个数据作为参考:近几年,中国法院受理知识产权案件始终保持两位数的增长迅速,2014年全国法院共新收各类知识产权案件133863件,比2013年上升19.52%。虽然这一数据未能直接体现智能手机和高新技术产业的情况,但鉴于智能手机和高技术产业的知识产权都需要巨额研发投入,同时司法机关、行政机关对知识产权侵权行为的打击力度不断加大且赔偿金额逐步提高。因此,对于这些依靠高投入而获得的研发成果,企业必然会高度重视,对侵权行为也会采取较为强势的态度。

TX: As you have rightly pointed out, China is indeed taking measures to improve IPR protection, as well as to enhance its national level of IP awareness. In order to stimulate economic growth, innovations must be afforded adequate protection to incentivize inventors and investors. We believe that this is a key component of China’s National IP Strategy, and is also a key step to upgrade China’s industrial status from the “Made in China” image, to one that is “Created in China”. As a company that invests heavily in building a robust patent portfolio, ZTE fully welcomes and supports these changes.

By examining other jurisdictions with more robust and mature IP protection and enforcement measures, it is plain to see that there is a greater amount of patent and IP related disputes in the smartphone and other high-tech industries, as they utilise a considerable number of integrated technologies, IP, and inventions. The resulting compensation in tort or patent licensing fees arising out of these disputes have also been correspondingly high.

This observation is especially alarming for the industry chain, and related enterprises in the smartphone industry in China. Given the developments and improvements in IP regulation in China, a company that fails to respect innovation, and does not improve its IP knowledge and awareness, will not have the necessary tools and strategies to cope with the increased risk of IP infringement and enforcement actions.

As a result, we believe that the smart phone and high-tech industries in China may face short-term “labour pains” before they mature. However, we believe that these “labour pains” are beneficial in the long run to help increase the awareness and respect of IP in china, as well as help Chinese enterprises to turn their attention towards research and innovation. This will improve China’s competitiveness in the global marketplace in the long run as well.

如您所述,中国确实正采取措施提高知识产权维权的力度并强化知识产权维权的意识,其根本目标显然在于促进科技创新和经济发展,因为只有通过大量研发产生的知识产权获得充分保护,发明人才有现实的动力和能力持续投入。我们认为这是国家整体知识产权战略的一个必然组成部分,也是实现由“中国制造”向“中国智造”产业升级的必经环节。作为每年均在自主研发投入巨额资金并产生了大量专利和技术突破的公司,中兴对此种变化和调整表示欢迎和支持。

考察目前在知识产权保护领域做的比较成熟和全面的国家和地区,不难发现由于智能手机和高科技产品本身集成了相当多的技术、发明和标准,因此相关的知识产权纠纷,或者说专利纠纷,在数量上确实是比较惊人的,相应的侵权赔偿额或专利许可费,也可以说是天文数字。

这一事实为中国相关企业以及整个产业链敲响了警钟,随着尊重知识产权的理念越发深入人心以及相配套的法律法规制度的完善,如果一个企业不重视独立自主研发和创新,没有相应的知识产权储备,那么在未来遭遇“知识产权维权”的风险将大大提高,并且其在应对“知识产权维权”时可供选择的应对策略和手段也将是极其有限的。

因此,我们认为在短期内中国智能手机和高科技产业界可能会遭遇一定的知识产权维权行为,并会遭受短暂的“阵痛”,但是我们更相信在长远和根本上,这一“阵痛”有助于尊重知识产权理念的落实,有助于中国企业更关注于研发与创新,提高参与国际市场的竞争能力,最终实现产业升级转型。

2. It has been 8 years since the National IP Strategy was announced. In this time, have there been noticeable changes on the ground in terms of IP and innovation in China? Apart from the amazing increase in quantity of filings, have you also witnessed a corresponding increase the quality of these filings?

自从国家知识产权战略宣布以来,已经8年了。在知识产权和创新方面,中国有明显的变化吗?除了惊人的申请数量增加之外,专利质量是否也有相应的增加?

HB: This is a question that is best addressed by the national patent offices. However, from a business’ perspective, I personally feel that there has been a significant improvement in the quality of patent filings in China.

Apart from the increase in quantity of patent filings, the recent growth of patents in China has also witnessed a significant improvement in the quality as well. Initially, while the quantity of filings in China saw a significant increase, most of these filings were concentrated in the larger and more IP-savvy enterprises within China. This was also the result of increased government funding directed at stimulating the quantity of patent filings in China. In recent years however, we observe that government funding in this area has dropped, but patent applications have continued to increase.

One reason is because many of these firms now understand that it is in their best interest to apply for patent protection, either because they have previously encountered patent-related problems in the past, or because they expect to do so in the future. Another reason is that there are now a large group of innovative SMEs in the technology sector, with very strong IP awareness, who understand the importance of patent protection.

However, the question of patent quality is a very complex issue, and is difficult to define. Enterprises that have invested a large amount of energy and resources into filing a patent, may still be deemed by others to have a low-quality patent. One thing you can be certain of however, is that ever since government funding for patent filings have been reduced, most of the companies that are making patent applications these days have requirements for very high quality patents for their business purposes.

这个问题应该从国家专利局层面说明。单就企业方面来看,我个人看到的是有非常明显的积极变化。包括申请数量的大幅增加,这些年的增加跟之前几年的大幅增加性质不一样。之前的申请数量增加,比较集中在一些专利意识比较强及已经走出去的大型企业和行业,加上各地方政府对于申请专利的各种资助政策,刺激了申请量的增加。近些年,政府资助大大降低,申请量依旧大幅增加,一方面是这些企业是出自自身发展需要申请专利,因为他们已经遇到或者认为未来会遇到专利问题,另一方面之前没有专利意识的企业,有很大一部分,尤其是科技行业的创新中小企业,他们的知识产权意识非常强。专利质量是一个非常复杂的问题,很难去界定,企业有可能投入了很多精力和资源去做出来的专利也会被认为是质量不高的专利,但有一点可以肯定,现在政府资助力度降低的情况下,没企业申请专利大多数是源自自身对高质量专利的需求。

HC: Since its introduction, the National IP Strategy has resulted in an increase patent applications. As a reflection of China’s constantly improving innovation capability, there have also been a concordant changes to the process for patent applications as well.

“知识产权战略”实施以来,除了申请数量上升以外,中国专利申请结构也在不断变化,这些知识产权的指标能够反映中国创新能力正在不断提升的事实。

i) For example, we have seen a large increase in the number of patent applications. IP registration in China can be roughly categorised as patent, utility models and registered designs, with the latter two not requiring a substantive examination for registration. When the National IP Strategy was first introduced, utility models and registered designs formed the majority of applications. In the last 2 years however, this situation has begun to change.

Based on statistics from the China State Intellectual Property Office (SIPO), between 2014 and 2013, the number of registered IP applications received did not change much (with a difference of just 0.7%), but the proportion of patent applications accepted maintained a steady growth rate of 12.5%, while the numbers of utility models and registered designs fell by 2.7% and 14.4% respectively.

专利申请数量增加。中国专利分为发明、实用新型和外观设计三种,发明专利需要实质审查,后两种无需实质审查。“知识产权战略”开始实施的前几年,不需要进行实质审查的实用新型专利和外观设计专利占了非常大的比重。而这一现象在近两年已经开始有所改变。根据来自中国国家知识产权局(SIPO)的统计数据,2014年与2013年相比,专利申请受理总量基本持平(同比下降0.7%),但发明专利申请受理量保持了12.5%的增速,而实用新型和外观设计专利均较2013年下降2.7%和14.4%。

ii) There has also been an increase in the proportion of patents being registered with SIPO. This can be seen in the changes to the patent application process. In 2013, the number of applications for patents, utility models and registered designs, were 34.7%, 37.5% and 27.8% respectively; in 2014, this proportion was 39.3%, 36.8% and 23.9% – with patent applications surpassing utility models for the first time.

Furthermore, in 2014, a Chinese company was able to break into Thomson Reuters’ “Top 100 Global Innovators” index for the first time. The 4 main criteria in the formulation of the index are: patent application volume, patent application success rate, global patent applications, and patent influence, with the index being an authoritative measure of corporate creativity. This is an indication that the quality of patents being filed by Chinese companies are indeed increasing.

发明专利的比例提高。从专利申请的结构变化上也可以看出这一趋势,2014年受理的专利申请中,发明、实用新型和外观设计占比分别为39.3%、36.8%和23.9%,而2013年这一比重为34.7%、37.5%和27.8%,2014年发明申请占比超过实用新型,也在一定程度上说明在总体专利申请数量基本不变的前提下,中国专利的含金量也在逐步提升。汤森路透发布的“全球创新力企业排名”是衡量企业创造力的一项比较权威的指标,该体系确定排名的重要指标就是专利因素,主要通过专利申请成功率、专利申请的全球性、专利影响力、创新专利数等四项指标进行评价。2014年,首次有中国内地企业登上该“全球创新力企业排名”榜单,,在一定程度上印证了中国企业拥有的专利质量正在不断提高的事实。

Of course, improving the quality of patents has not been smooth sailing, and China still has a long way to go in its IP journey. For example, China is still lagging in terms of PCT international applications. Most patent applications are also still concentrated in companies from the IT and telecommunications sector, while other technical areas such as optics, and transportation are still lagging behind. Part of the reason for this imbalance is due to the characteristics of each technical field, but to a certain extent it also reflects the need for technological and innovation capacity to be increased in other sectors in China.

当然,专利质量的提高不是一蹴而就的,中国在知识产权和创新方面要走的路还很长,PCT国际申请占专利申请的比重于发达国家相比尚有不小的差距;发明专利主要集中在信息技术等领域,在诸如光学、运输等技术领域的专利布局任重道远;发明专利在各技术领域内分布的不平衡一方面是个技术领域本身的特点决定的,但另一方面也体现出我国在某些技术领域内技术和创新能力还有待加强。

TX: Personally, I feel that I am not in the best position to answer this question. However, I am willing to share my own experience in this respect. We believe that in the last 5 years, China’s creation, protection and use of IP in various fields have improved and experienced steady growth, as evidenced by the various global indices. This is also evidenced in the following aspects:

这个问题其实我来回答不是很合适,但是我愿意分享下我掌握的公开信息:
我们认为中国这5年来在知识产权创造、运用、保护和环境等各领域都有了进一步改善,各项指数基本呈现平稳增长。这可以从以下几个方面展开:

i) The related IP laws and regulations, such as in the area of trade marks, have been amended and improved;

有关知识产权的法律法规得以修订施行,如商标法及其实施条例;

ii) There has been a rapid increase in the scope and quantity of IP in China. For example, in 2014, the total number of patents, utility models, and registered design applications received by SIPO was 2,361,000 (with 928,000 of those being patent applications).By application volume, SIPO has ranked as the top ranking IP office in the world for 4 consecutive years. In 2014, SIPO also received 26,000 PCT applications.

知识产权的数量高速增长,例如2014年一年,中国国家知识产权局共受理发明专利、实用新型和外观设计申请236.1万件,其中发明专利92.8万件,同比增长12.5%,申请量连续4年居世界第,PCT国际专利申请2.6万件;

iii) Judicial protection efforts are being increased, as evidenced by the establishment of the specialised IP Courts in Beijing, Guangzhou and Shanghai.

司法保护的力度在加大,标志性事件是在北京,广州和上海三地设立了专门的知识产权法院;

iv) I have no direct data or statistics that relates to the quality of patents filed, but I believe the following statistics provide anecdotal evidence to demonstrate the increase in quality of patents filed: between 2009 – 2013, China’s patent intensive industries grew on average 11% annually; the effective patent industrialization rate was 33.8%, and in 2014, patent pledge financing amounted to some 48.9 billion yuan.

至于专利质量有无增加或提升,我没有直接的数据来说明,但是我认为以下几点数据可以从侧面反映了专利质量的提升,2009-2013年,我国专利密集型产业增加值年均增长11%,有效发明专利产业化率达到33.8%,2014年,专利权质押融资金额达489亿元;

v) On the other hand, using ZTE as an example, it can be said that the quality of patents filed in China have had a significant increase. ZTE has already intentionally integrated IP into our customer service, product development, marketing, and supply chain and business process management. We have done so in order to align ourselves with market demand, as well as to maintain our forward looking philosophy, which is our competitive edge in the technology industry. As a result of this philosophy, ZTE has become one of the major patent holders in the global telecommunications industry. Our patent portfolios include numerous patents that comply with international standards in the telecommunications industry (aka “standard-essential patents” or SEP). ZTE also accounts for 13% of the total required patents in the 4G LTE industry.

另一方面,如果以中兴通讯为例的话,我相信也可以说明中国的专利质量有了明显的提升,中兴通讯已经有意识的将知识产权布局融入到客户需求定制,新品研发,市场推广乃至供应链管理的完整经营流程,追求符合市场实际需求,公司竞争需要乃至引领前瞻技术的高价值专利;这一思路的最显著成就即是中兴通讯成为全球通讯产业主要专利持有者之一,所持有专利包括众多覆盖国际通讯技术标准的基本专利(或“标准必要专利”,即SEP),在LTE领域,占据了全球13%的基本专利。

3. One of the objectives of the Strategy involves stepping up enforcement efforts and further judicial protection. In light of this, what strategies and advice can businesses venturing into China adopt, in order to avoid costly IP litigation?

这一战略的一个目标包括加强维权工作,进一步加强司法保护。鉴于此,进军中国的企业建议应该采取什么样策略,以避免代价高昂的知识产权诉讼?

HB: First of all, I believe that the cost of IP litigation in China, as compared to Europe and the United States is still relatively very low. My advice to companies seeking to enter into the Chinese market is not to look to litigation in China as a means to seek compensation for your losses, or as a means to achieve all your desired commercial outcomes, but merely as a tool of last resort – this is the situation in Europe and America as well. For example, Nokia recently brought patent infringement proceedings against Shanghai Huaqin in 2010 for infringement of 8 of its telecommunication patents. However, the Court had recently found for Huaqin’s counterclaim that 1 of Nokia’s patents were invalid.

In my opinion, it is far better to exhaust all other available remedies to protect the value of your IP, including open negotiation and other means of cooperation. Rights holders should not expect to issue a demand latter, and wait at home to collect their compensation. Rights holders will be pleased to note that these days, parties are far more willing to enter into licensing agreements than they were before. The traditional means for protecting IP rights are undergoing a sea change.

首先我认为目前横向来看,在中国的知识产权诉讼成本相对于欧美来说还是很低的。进军中国的企业,我的建议诉讼应当作为最后的选项,而且不应当有太高的期待。我的意思是说暂时不要期待通过诉讼去挽回所有的损失或者达到所期望的全部商业目的,这个情况在欧美的诉讼中也能体现得到。比如最近的一个案例,Nokia从2010年起尝试性使用8件专利起诉华勤,最近一件专利无效案被法院认定无效。我认为应当善于利用诉前的一切可能方式体现知识产权价值,对话以及探讨各种可能的合作方式。权利人不要想着发个函,然后坐在家里等收钱,不然就起诉。潜在被授权方或者侵权人,也不再是说就不愿意对专利进行对价。传统的维权和保护的思维,是时候做一些改变了。

HC: Judicial protection for IP in China has been implemented in a number of ways: one is to increase the penalties for IP infringement, and to increase the compensation for rights holders; second is to reduce and simplify the protection measures, while increasing the scope of rights. These are all measures that are directed at improving the IP litigation process. However, while some IP litigation is unavoidable, it remains in the commercial interest of business-minded entities to avoid litigation entirely. I would like to discuss this issue from 2 perspectives:

加强司法保护至少包括方面:其一是加大对知识产权侵权的惩罚力度,提高赔偿金额;其二是缩短维权时间,简化维权程序,增加维权途径。这些都是针对知识产权诉讼而言的。虽然有些知识产权诉讼是十分必要甚至不可避免的,但作为以商业经营为核心的企业而言,诉讼还是应当尽量避免的。我想从两个方面谈谈对这个问题的想法:

i) Corporations should seek to establish and improve their IP monitoring mechanisms. For example, the monitoring department should actively track the status of approved patent applications, and assess whether the grants have been made in strict accordance with the legislation. This will ensure that the corporation may effectively use the granted patent. Regular internal IP audits should also be carried out on the company’s patent portfolio, in order to assess the importance of its various grants, and better leverage on them, as well as to avoid unnecessary litigation. The team should assess which patents are being held for strategic reasons, and which are being held for production and operational needs; which patents are mature, and which areas of its portfolio require further strengthening.  IP monitoring can help a company to ensure that it does not inadvertently infringe a third party’s IP, help the company to understand how to better frame its claim specifications, or assess if it should even seek to register its IP. IP monitoring can also aid in the early detection of infringement of your company’s IP by third parties, which is helpful in assessing the appropriate dispute resolution strategy against potential infringers.

建立并完善企业内部的知识产权预警机制。以专利为例,企业内部的知识产权预警机制应当包括对已授权专利的跟踪,例如,这些已授权专利是否严格按照专利法的规定,为维持其有效采取了必要的措施;对于已授权专利的评估,企业内部对其已授权专利进行评估是必要的,这种评估能够使企业从其拥有的众多专利中对这些专利的作用和重要性进行判断,以更好地进行专利布局,避免无谓的诉讼。如哪些专利在现阶段仅是为了进行战略性保护而持有的,哪些专利是为生产经营而需要实施的,哪些还不成熟,需要继续进行研发;对于本领域内其他企业或个人的专利申请进行跟踪,及早发现可能对本企业的利益造成影响的专利申请,并及时应对,以避免后知后觉导致的专利诉讼;对于他人潜在的或已经发生的专利侵权行为,及时制止,以避免针对此类行为的无谓的诉讼。

ii) Companies should also seek to obtain external legal advice and risk assessment. Prior to entering the Chinese market, the proposed venture should be appraised of the IP risks involved in production and operation in China. This can be achieved by engaging an experienced external IP lawyer to carry out the necessary risk assessment and to provide professional legal advice on the potential pitfalls. Based on the external legal advice, the company can then assess whether it should, for example, bring invalidation proceedings against a party, or enter into negotiations for the exploitation of a licence. Furthermore, engaging external counsel to carry out a risk assessment is an effective way to avoid costly litigation down the road.

建立并完善企业外部的知识产权律师风险评估机制。在进军中国市场之前,对企业拟在中国境内实施的生产、经营的侵权风险,可以委托企业外部经验丰富的知识产权律师进行风险评估,由专业的律师出具法律意见书,以防患于未然。基于外部律师的法律意见书,以专利为例,企业可以针对有侵权风险的专利根据情况提出无效请求,或与该专利的权利人协商,获得该专利的实施许可。此外,聘请外部专利律师进行专利侵权检索也是避免专利诉讼的有效手段之一。

TX: As highlighted in Question 1, China is determined to implement its National IP Strategy in order to establish itself as an international “Intellectual Property Powerhouse”. Stepping up enforcement efforts and judicial protection is one means to do so. I believe that the considerations for any company seeking to enter into the Chinese market are consistent with the considerations that they must assess when entering into any other country that holds IP in great regard. These considerations should be nothing less than the following:

如问1所述,中国正立志于实施国际知识产权战略,构建“知识产权强国”,那么强化司法保护也是题中应有之意。我相信,对于计划进军中国的企业所应采取的知识产权策略与进入任何一个重视知识产权保护的国家应当是一致的,其无外乎以下几点:

i) Understand and comply with the laws and regulations regarding IPR protection in China;

了解并遵守中国有关知识产权保护的法律及法规;

ii) Before entering the market, conduct the necessary due diligence and research on the Chinese market and distribution, including the areas of patents, registered trademarks, domain names, trade names, product packaging, advertising, IP investment restrictions and the like;

在正式进入市场之前,对中国市场进行知识产权调研与布局,包括专利,注册商标,域名,商号,产品包装,广告推广,知识产权投资限制等等;

iii) Conduct an IP risk analysis on your own products. Where necessary, seek the necessary permissions or licences from existing rights holders in China, or where appropriate, enter into cross-licensing and collaborative agreements in order to avoid potential litigation risks;

对自己的产品进行知识产权风险评估,寻求有关中国知识产权权利人的许可或授权,或在知识产权领域开展合作,避免潜在诉讼风险;

iv) Establish a risk assessment and IP monitoring system. Avoid unnecessary IP disputes and litigation by entering into good faith negotiations.

建立风险评估和预警体系,在知识产权风险发生前及时通过谈判或其他手段规避;

v) Build up an effective IP and patent portfolio, and enter into the appropriate agreements with Chinese partners to leverage on each party’s IP.

构建有效的知识产权组合,利用合同对中国的合作伙伴进行知识产权管控等。


Interview conducted by Mark Cheng of The IPA Beacon Editorial Team