Navigating the Chinese Patent System: What U.S. Patent Counsel Need to Know

Protecting IP Rights in China, Leveraging New Amendments, Understanding Current Litigation Trends and More

Recording of a 90-minute CLE webinar with Q&A


Conducted on Thursday, May 18, 2017
Recorded event now available


This CLE webinar will provide guidance to U.S. patent counsel and companies on Chinese patent law and what they need to know about the Chinese system. The panel will address changes to the Guidelines for Examination, current litigation trends, and the Anti-Unfair Competition Law (AUCL). The panel will offer U.S. companies and counsel best practices for increasing IP protection under the Chinese system.

Description

Protecting IP in China is an essential element in any global company’s overall strategy. By obtaining Chinese patents, U.S. companies are able to directly pursue alleged infringers in China. China may be favored for patent infringement litigation because the average time from filing to verdict at Beijing’s IP court is four months vs. the U.S. courts’ two-plus years. U.S. companies and their counsel must understand the Chinese system to leverage its advantages.

Recently the State Intellectual Property Office of China (SIPO) amended its Guidelines for Examination. The amendments address expanded patentable subject matter for business methods, enhanced claiming options for software-related inventions, use of post-filing submission of supplementary data for chemical inventions, and availability of prosecution documents of Chinese patents and applications. The amendments are effective Apr. 1, 2017.

In addition to the IP laws, companies which want to protect the intellectual property in China should also consider the AUCL. While mostly used by Chinese companies to resolve claims which should, but cannot, be addressed by IP laws as they currently stand, in recent years, Chinese authorities have increased their enforcement of the AUCL, resulting in extremely large fines for companies.

Listen as our authoritative panel of patent attorneys provides guidance on Chinese patent law and the Chinese system. The panel will discuss the new amendments to the Guidelines for Examination and current litigation trends. The panel will also discuss the AUCL and offer best practices for U.S. companies and counsel to operate in the Chinese system and increase IP protection.

Outline

  1. Chinese patent law and what U.S. patent counsel and companies need to know
  2. Guidelines for examination amendments
  3. Current litigation trends
    1. Success of foreign companies
    2. Beijing IP court’s decision in Watchdata System Co. v. Hengbao Co.
  4. Anti-Unfair Competition Law
  5. Best practices for operating in the Chinese system to increase IP protection

Benefits

The panel will review these and other key issues:

  • How the amendments to the Guidelines for Examination change patentability in China
  • The role of the AUCL in IP enforcement in China
  • Litigation trends in China and advantages of using the Chinese system

Faculty

Elizabeth Chien-Hale, Counsel
Brinks Gilson & Lione, Washington, D.C.

Ms. Chien-Hale brings an entrepreneurial, client-side perspective to the services of protecting intellectual property rights across borders, especially in the U.S. and China. She has seen the protection process from cradle to grave, from prosecution to litigation. She draws on her in-house experiences, having worked for both U.S. and Asian companies on cross-border intellectual property issues, and understands the needs of a client from both the technology and the business sides. 

E. Robert Yoches, Partner
Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C. and Taiwan

Mr. Yoches has extensive experience in patent infringement litigation, especially in the N.D. California, E.D. Texas, and the U.S. International Trade Commission (ITC). He also has a great deal of experience representing clients from Asia, particularly, Taiwan, China, and Japan, often in complex cases involving electronic and computer technologies. He counsels clients in intellectual property matters including portfolio management, licensing, trade secret protection, and copyright protection of software.


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Customer Reviews

Strafford provided an enthusiastic presentation that focused on patent practice, not theory.

David H. Vance

Vance Intellectual Property

I liked the practical insights, particularly when tied to cases the presenters had worked on.

Michael Gray

Kohler

I appreciated that the materials and presentations were well organized.

Lisa Cipriano

Eimer Stahl Klevorn & Solberg

I thought the speakers were very well versed.

Richard A. Graham

White & Case

I found it interesting to hear the differences in jurisdictions' treatment of conflicts issues.

Michelle Blakemore

County of San Bernardino

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Patent Law Advisory Board

Charles S. Baker

Partner

Fulbright & Jaworski

David S. Bloch

Partner

Winston & Strawn

Irah H. Donner

Partner

Stroock & Stroock & Lavan

Ian N. Feinberg

Partner

Feinberg Day Alberti & Thompson

Anthony J. Fitzpatrick

Partner

Duane Morris

David Segal

Senior IP Counsel

Intel

Astrid R. Spain

Partner

Jones Day

Mark P. Wine

Partner

Orrick

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