Corporate confidence is growing in
the Chinese patent system, particularly since the introduction
of new offerings such as two dedicated IP courts and the hiring
of more trained IP examiners into its patent office.
According to in-house sources, there are still challenges
when it comes to registering, validating and litigating
patents, but considerable improvements have been made that have
smoothed the path to easier patent portfolio management in the
"The patenting system in China has become collectively
robust," says the patent lead at a Swiss confectionery company.
"There was a time when most patent applications would have been
challenged or questioned, but today most of our patents are
Many companies are still finding it difficult to determine
whether they have freedom to operate in China, but overall its
IP developments are helping it shed its anti-IP and
protectionist reputation and beginning to cement it as a region
for top-tier patent protection.
Non-Chinese businesses do continue to experience problems
when it comes to registering patents in the
country’s National IP Administration (CNIPA),
according to in-house sources. A big complaint is that
China’s fast-growing economy has set off to a
patent boom that its IP office is struggling to keep up
Tom Duke, the UK Intellectual Property Office’s
attaché to China and Hong Kong, explains that this
growth has occurred partly because of increased foreign
investment in the region but, more importantly, because
domestic Chinese businesses are embracing IP.
He says that global patent applications from domestic
Chinese businesses now significantly outnumber those from
non-Chinese businesses in most major jurisdictions, including
in China itself.
"Over the past year, the way patents are considered in
China has evolved and it has become much easier to get
a patent granted or validated"
"These Chinese applications used to be dominated by a few
companies in the IT sector and now you are seeing the long tail
of Chinese businesses applying for patents overseas and
monetising their portfolios. It is a much more diverse
conversation than five years ago."
The head of IP at a Netherlands-based factory tech
manufacturer says that the downside for filers is that the
CNIPA has found it difficult to recruit and train examiners
quickly enough to meet the new demand.
"Examiners do not always understand our field particularly
well and that can be a challenge for us," he says. "We have
sometimes had problems with examinations and subsequent appeals
to get a patent granted because of the way that he or she
reviews the patents using hindsight to decide that something is
But sources say that while the Chinese patent-boom comes
with its challenges, it is also indicative of growing
confidence in the Chinese patent granting and validation system
that has come about as China aims to buttress the quality of
"Over the past year, the way patents are considered in China
has evolved and it has become much easier to get a patent
granted or validated," says the patent lead at a Swiss
The IPR manager for a tools and abrasives manufacturer and
the head of IP transactions at a global telecoms firm agree,
and adds that they now find little difficulty in getting a
patent granted at the CNIPA.
Another traditionally uncertain part of having patents in
China was the capability of the country’s courts
– and non-Chinese businesses still exercise caution in
the region when it comes to litigation.
"We follow up on infringements or potential infringements in
China but have so far chosen not to take actions very far," the
tools and abrasives IPR manager tells Managing IP. "We are
watching what happens and may progress actions in the future,
but at the moment our sales are sufficient and it is too
difficult to tell what the outcome of litigation might be."
The head of IP transactions at a global telecoms firm adds
that litigation is still a challenge because domestic companies
are often still protected.
"You might still find it tricky to litigate in the west
of China and there is still a certain amount of
protectionism over local companies there, but the IP
system is going a good way"
But China has taken enormous strides in this area as well,
according to in house sources. The telecoms head of IP
transactions says the recent introduction of IP courts in
Beijing and Shanghai is a good sign that country is improving
its IP litigation resource.
"Those courts have a very good knowledge of intellectual
property. You might still find it tricky to litigate in the
west of China and there is still a certain amount of
protectionism over local companies there, but the IP system is
going a good way."
The senior IP counsel of a Netherlands-based automotive
company says that China is showing a lot of ambition in its IP
offering, particularly in the CNIPA’s efforts to
attend international roadshows and demonstrate its new court
"It may take them a few years to get to the same level as
some more established IP courts, but they will get there," he
says. He adds, however, that his company is still planning to
approach litigation in China was caution because its IP courts
are so new and relatively untried and untested.
The head of IP at a Netherlands-based factory tech
manufacturer says that his one experience of litigation in
China was very positive. He explains that his firm sued a
Japanese company for infringing its patent and the company
filed invalidation proceedings. The Japanese firm won at first
instance but lost at appeal.
"I was extremely impressed by the decision because they
found in our favour for the right reasons and their arguments
were legally sound – it was not just a matter of
finding for us because of a dislike for Japanese companies.
"The reasoning in the judgment looked as though it could
have come from the European Patent Office."
Freedom to operate
Ensuring freedom to operate (FTO) in China is where
non-Chinese businesses still tend to get stuck. The telecoms
head of IP transactions says the recent wave of patent
applications, particularly from local companies filing utility
models after the company has established the product in China,
makes ensuring FTO challenging.
"Those applications make it difficult to prove that the
company is the owner of a technology before the priority date
of the utility model or to invalidate that utility model," he
He adds that his company has responded by implementing
sophisticated processes for monitoring newly granted patents
and product clearing.
But as the tools and abrasives IPR manager points out, a
company that is perhaps not well-established in China and does
not know the complexities of the system can still have trouble
ensuring FTO. He says that his biggest problems are that the
patent offices in China are not as accessible and the language
barrier prevents an effective analysis of the patent
The Swiss confectionery patent lead agrees, and adds that
developing a sound knowledge of the Chinese patent system is
top of his firm’s agenda to ensure it has FTO.
"Local patents are in Mandarin or Cantonese and that hinders
direct access to the significance of the patent. That creates a
foggy landscape where we do not know what is valid and what is
But even here, the country is making efforts to improve the
openness and transparency of its patent offices. UKIPO China
attaché Duke says he has been working with Chinese
authorities and UK-based businesses to help them better
understand the system and ensure FTO.
While China still has some way to go in developing its
patent system, its progress is impressive. The introduction of
dedicated IP courts and better trained IP examiners into the
CNIPA is translating into smoother portfolio management for
non-Chinese businesses in the region and slowly eroding its
reputation for protectionism.
A big job for Chinese IP authorities now is to better
educate businesses on the various complexities of its system
– which it has already started to do.