At Managing IP’s Global IP & Innovation Summit in Shanghai on Wednesday, Holt discussed how to integrate HP’s China patent filing with its global IP strategy.
Where do you go first?
For a global company that operates in many different markets, one of the first considerations is which jurisdiction to file in first. This has a unique wrinkle if the technology was actually invented in China.
“If the technology is invented in China, you have to file for a secrecy examination before filing a patent in another jurisdiction,” Holt explained. The secrecy examination stems from article 20 of the patent law requiring such an examination from SIPO before filing a patent application in a foreign country when the invention was substantially created in China.
Holt said that companies seeking to file abroad first will have a delayed priority date due to the secrecy examination. Filing in China is also an option, especially for those companies with a strong in-house team in China. Another option is the PCT which multinational companies may prefer since SIPO accepts PCT filings in Chinese or English.
Drafting for multiple jurisdictions are also complicated by differing requirements in various countries.
Holt said that there are a number of things to avoid when drafting a patent due to problems that may arise in US court proceedings: “Avoid discussing prior art in detail. Also avoid using the word ‘invention’ in the description, and stating the advantages of the invention or problem solved too explicitly. These practices are common in Europe and required by SIPO, but these can be used against you in US litigation.”
Language issues can also be a problem. Holt said that he believed that translations often work best when the translator is producing work product in her mother tongue. The problem, he noted, is that in China, native Chinese speakers are usually the ones translating Chinese patents into English. When going this route, he recommends that a native speaker review the translated patent.
Bad translation can also obviously affect the substantive quality of the patent. The company needs to be careful of not only mistranslation of key claims terms, but also just generally confusing or weak translations. Holt notes that one common problem he sees is that Chinese as a language tends toward longer sentences, while English is clearest using short sentences. A poor translation may not take this into account.
“If you have a patent that has an unclear description, it can be very hard for a trial jury to understand it,” he said. “This can also affect licensing discussions. If a patent is confusing, the other side may have trouble understanding its importance.”
For computer-implemented inventions, Holt warned of certain common mistakes to avoid. One is the use of means-plus-function claims, which are often narrowly interpreted in the US. Furthermore, module plus function claims may be rejected by the USPTO if there not enough supporting examples. He also noted that diagrams that resemble the hardware and descriptions that contain references to parts such as the memory and processor should be used, rather than abstract modules and more general language terms such as “modules”.
Who should you go to?
Holt said that there are pros and cons to the various drafting approaches. Using Chinese drafters and then translating to English is an option and often good for large Chinese companies, but there may be concerns about the quality of the translation.
Another alternative is using a US firm to draft the patent. However, though he pointed out that US firms are often quite experienced, there can be issues communicating with Chinese inventors.
One alternative that he sometimes employs is to use bilingual patent attorneys, such as overseas Chinese or Chinese nationals who have spent a long time abroad, even if they have relatively less experience. Countries such as Australia or the US with large Chinese populations are good places to find such attorneys, as well places like Singapore and Hong Kong. Furthermore, not only are less experienced attorneys less expensive, but Holt notes that they tend to be more flexible and enthusiastic.
In the end, though there are multiple approaches to developing a strong patent strategy, Holt stressed the need to focus on the quality of your patents. Given the proliferation of patent litigation around the world, this may be increasingly important.
“Before litigation, you need high quality patents,” he warned.
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