Trading in Asia with confidence by Lighthouse IP

Jane List –Commercial & Content Director

Will Hawkins – Sales Director EMEA

Lighthouse IP? Who?

Asia is an important market for all types of businesses

You want to know whether this is a market for you or not

Is Asia for me and my IP?

Do I market or manufacture my invention in Asia?

Find experts who can help you make the right decisions

Taking my invention into Asia with confidence

How is IP Treated in Asia?

Is my invention going to be stolen?

Is it worth protecting my

invention?

Who can help to protect my IP?

Choose the best IPR to protect an invention

Overview of IP Rights

Type of IP Type of work protected

Type of right granted Duration Obligation

Patent Product or Method monopoly <20 years

disclosure of invention

Utility Model Product monopoly <10 years

disclosure of invention

Registered Design Product monopoly 5 - 25 years

disclosure of designs

Copyright Creative work monopoly life of author plus X years no obligation

Trademark

Identifier for product or service monopoly

10 years unlimited renewals.

must remain in use

Secrecy/ NDA

Know-How / IP / Business

No protection/ Breach of

Confidentiality

Indefinitely/3-5 years

One-way / Two-way

Patent, Utility Model & Design Rights in Asia

country patent Utility model design

China

Hong Kong Yes, via China.

Japan

Korea

Singapore

Taiwan

Thailand

Vietnam

What is a Patent?

• 3 criteria to obtain a patent for an invention

Absolute novelty, inventive step, usefulness

• The priority date and prior-art

• Protects an invention in nation or region

patent families (equivalents)

• Types of patent

process, product

• The Patent Specification

abstract, filing info. drawings, claims, description

What is a Utility Model?

• protects small technology advances in products

• may be converted to a full patent

• may be obtained through PCT

• fast to obtain (6-9 months to grant)

• formalities examination only

• Used widely in fast moving markets such as

consumer electronics

What is an Industrial Design?

• Protects the ornamental or aesthetic aspect of a product

• May be 3D (shape) or 2D (pattern)

• Design must be non-functional

• Must be new or original

• Hague Agreement

• WIPO administered treaty

for filing International designs

• May also be protected

under copyright in some countries

Filing a Patent in Asia

Prior art search

State of the art search

Freedom to use / clearance

Competitive intelligence Monitoring prior to market entry and beyond

You decide to manufacture in Asia.

You need to extend national filing.

Your patent has favourable search report.

But does your product infringe any existing products in your market?

Be prepared to defend your rights.

signed in Paris March 20th 1883

174 contracting member countries

provides reciprocal rights

claim convention priority for foreign applications made

within one year of (Priority) Filing Date (INID Code 30)

foreign filings need not be identical to priority filing

Patent Law Treaty (2000) allows filings within 14 months of first filing

The Paris Convention

WIPO and the Patent

Cooperation Treaty

• Started in 1978

• Treaty signed in Washington DC in 1970

• Provides a single application which may proceed in 146 authorities

• Does not grant patents

• An initial search is carried out at a PCT designated office

• Defers cost of translations

• Defers decision on where to file

• Can choose early preliminary examination

• Patents granted at national designated office.

WIPO and the Patent

Cooperation Treaty

Glossary of patent information terms: http://www.wipo.int/export/sites/www/standards/en/pdf/08-01-01.pdf

• Receiving offices:

most national offices ,International Bureau

• Official languages:

Arabic, Chinese, English, French, German, Japanese, Korean,

Portuguese, Russian and Spanish

• International search authorities:

Austria, Australia, Brazil, Canada, China, EPO, Finland, Israel,

Japan, Korea, Russia, Spain, Sweden, USA.

UK companies can file PCT application in

English at IB, EPO or GB

Filing with the Patent

Cooperation Treaty

• When? 30 months from Filing • How? On payment of fees Submission of ISR and IPER Translation of the application into the official language • What next? Each authority carries out it’s own examination Publishes a granted national patent Fees paid to national offices

Entering the National Phase

PCT Applicants Guide: http://www.wipo.int/pct/en/appguide/index.jsp

How to ensure translation quality?

Some countries require certified translations

Translators must undergo formalities

Translators must be expert in translating patents

Translators usually specialise in a particular subject

e.g. biotechnology, pharmaceutical, electronic, mechanical

Obtaining patent translations

Patent translation requires an understanding of:

the subject matter of the invention

the source and target language

how claims are interpreted

Translation errors may be amended

during prosecution, (Art.33)

in a foreign priority (PCT) filing

claims will be narrowed

Lifetime Costs for maintaining a patent family

Opposition proceedings

• Summary

Advantages of using the PCT • Streamline, simplify,

• cost effective and defers cost • Provides more time for R&D, Partnering,

Technology Transfer and Licensing

Disadvantages of using the PCT • Single application may not be best way to

get protection in all countries • Increases uncertainty

Lifetime of a patent: prosecution in Asia

CN

KR

JP

Patent Expiry

Who can help me if I decide to make or market in Asia?

National Patent Laws

Post-grant offices take renewal fees and with courts -

enforce patent rights

system to claim damages

interim injunctions

competent administrative authorities

prior art defence

Resource for China IP Law: http://www.ipr2.org/

Finding and Understanding Asian patent information

Where can I find out about existing inventions in my field in Asia?

• Espacenet www.epo.org

• Patentscope www.wipo.org

• The British Library

• Japan

• http://www.ipdl.inpit.go.jp/homepg_e.ipdl

• SIPO http://english.sipo.gov.cn/

How do I filter the information down to what I need?

0

5,000

10,000

15,000

20,000

25,000

30,000

35,000

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 32 33 34 35 36 37 38 39

Applications

Utilities

Granted Patents

SIPO weekly publications 2012

Understanding patents in Asian languages –

Machine or Human Translations?

Searching techniques and tips

Search in English / Chinese

Full text of 5.3 m patents – Chinese / English MT

Search in English MT / Chinese Original

Translate into English

Analyse documents

Report Search IPC

Search inventors

Check legal status

Portfolio monitoring

Search applicants Check renewals

Check citations

Search keywords

Chinese Patent Alerts Weekly

Strategy Run Each Week

Automatically In

Chinese

Complete Results Emailed

In Spreadsheet

With Bibliographic

Data And Abstract

In English

Select Patents From Results Set To View Complete

Chinese PDF / English txt

Who can help me?

UK based Patent Attorneys with links in Asia

Some useful Resources on Asian IP Matters for SMEs

Intellectual Property Protection Overseas http://www.businesslink.gov.uk IP Primers for Brazil, China, India, Korea, Vietnam, USA Business Link, with the GB IPO and DTI have created to assist SMEs filing overseas. China IPR Help Desk for SMEs http://www.china-iprhelpdesk.eu/ Quarterly newsletter covers IPR protection issues in China EPO Asian Patent Information Service http://www.epo.org/searching/asian.html Help desk and advice on searching patents, legal status, alerts, translations. WIPO http://www.wipo.int/sme/en/ Information on IPRs specific for SMEs, newsletter, training programmes

Lighthouse IP