Trading in asia with confidence by lighthouse ip october 2012


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China, Korea, Thailand and Vietnam are rapidly developing markets and inventions are being applied for, and patented, in these countries at unprecedented rates.

As their populations become wealthier so do the opportunities for Western companies to sell their products in Asia.

Manufacturing in China is still an attractive option for British companies who need to take advantage of the skills, capabilities and efficiencies available in the region. It has never been more important to protect your intellectual property (IP) in Asia whether you are selling or manufacturing there.

There are common challenges that inventors and businesses face when entering Asian markets, but by having experts to help guide the way and point out the potential pitfalls to around early enough opens up the door to so many possibilities.

This special event will talk more about these common challenges and the practical solutions:

Can your existing intellectual property, e.g. patents, be taken into the chosen new market?
How to overcome the language barrier and getting affordable translation help for key documents?
Do you know the difference between the UK and international laws and regulations to file new patents and IP?
It will include chance to ask your questions to experts from Lighthouse IP Group and take part in a networking session.

Lighthouse IP Group is a specialist in translating patents to and from Chinese and other Asian languages and also help inventors to file their patents in China. They can also help inventors and businesses to find a patent attorney specialising in Chinese IP.

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Trading in asia with confidence by lighthouse ip october 2012

  1. 1. Trading in Asia with confidence by Lighthouse IPJane List –Commercial & Content Director Will Hawkins – Sales Director EMEA
  2. 2. Lighthouse IP? Who?
  3. 3. Asia is an important market for all types of businesses
  4. 4. You want to know whether this is a market for you or not
  5. 5. Is Asia for meand my IP?
  6. 6. Do I market or manufacture my invention in Asia?
  7. 7. Find experts who can help you make theright decisions
  8. 8. Taking my invention into Asia with confidence
  9. 9. How is IP Treated in Asia?
  10. 10. Is my invention going to be stolen?
  11. 11. Is it worthprotecting my invention?
  12. 12. Who can help to protect my IP?
  13. 13. Choose the best IPR to protect an invention
  14. 14. Overview of IP Rights Type of work Type of rightType of IP protected granted Duration Obligation Product or disclosure ofPatent Method monopoly <20 years inventionUtility disclosure ofModel Product monopoly <10 years inventionRegistered disclosure ofDesign Product monopoly 5 - 25 years designs life of authorCopyright Creative work monopoly plus X years no obligation Identifier for 10 years product or unlimited must remain inTrademark service monopoly renewals. use No protection/ Breach ofSecrecy/ Know-How / IP Confidentiality Indefinitely/3-5 One-way / Two-NDA / Business years way
  15. 15. Patent, Utility Model & Design Rights in Asiacountry patent Utility model designChinaHong Kong Yes, via China.JapanKoreaSingaporeTaiwanThailandVietnam
  16. 16. 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
  17. 17. 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
  18. 18. 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
  19. 19. Filing a Patent in AsiaState of the art search Competitive intelligence Monitoring prior to market Prior art search entry and beyond Freedom to use / clearance You decide to  Your patent has  Be prepared to manufacture in favourable search defend your rights. Asia. report. You need to extend  But does your national filing. product infringe any existing products in your market?
  20. 20. The Paris Convention signed in Paris March 20th 1883 174 contracting member countries provides reciprocal rightsclaim convention priority for foreign applications madewithin 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
  21. 21. WIPO and the PatentCooperation Treaty
  22. 22. 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.Glossary of patent information terms:
  23. 23. Filing with the Patent Cooperation Treaty• 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
  24. 24. Entering the National Phase• 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 officesPCT Applicants Guide:
  25. 25. How to ensure translation quality?Some countries require certified translationsTranslators must undergo formalitiesTranslators must be expert in translating patentsTranslators usually specialise in a particular subjecte.g. biotechnology, pharmaceutical, electronic, mechanical
  26. 26. Obtaining patent translationsPatent translation requires an understanding of: the subject matter of the invention the source and target language how claims are interpretedTranslation errors may be amended during prosecution, (Art.33) in a foreign priority (PCT) filing claims will be narrowed
  27. 27. Lifetime Costs for maintaining a patent family Opposition proceedings
  28. 28. • 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
  29. 29. Lifetime of a patent: prosecution in Asia Patent Expiry CN KR JP
  30. 30. Who can help me if I decide to make or market in Asia?
  31. 31. National Patent LawsPost-grant offices take renewal fees and with courts -enforce patent rights system to claim damages interim injunctions competent administrative authorities prior art defenceResource for China IP Law:
  32. 32. Finding and Understanding Asian patent information
  33. 33. Where can I find out about existing inventions in my field in Asia?• Espacenet• Patentscope• The British Library• Japan•• SIPO
  34. 34. How do I filter the information down to what I need?35,000 SIPO weekly publications 201230,00025,00020,000 Applications Utilities15,000 Granted Patents10,000 5,000 0 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
  35. 35. Understanding patents in Asian languages –Machine or Human Translations?
  36. 36. Searching techniques and tips Portfolio monitoring Search keywords Report Check legal status Search IPC Check renewals Search applicants Analyse documents Check citationsSearch inventors Translate into English Search in English MTChinese Search in English / / Chinese Original Full text of 5.3 m patents – Chinese / English MT
  37. 37. Chinese Patent Alerts Weekly Complete Results Emailed Strategy Select Patents In Run From Results Spreadsheet Each Set To View With Week Complete BibliographicAutomatically Chinese PDF / Data And In English txt Abstract Chinese In English
  38. 38. Who can help me?
  39. 39. UK based Patent Attorneys with links in Asia
  40. 40. Some useful Resources on Asian IP Matters for SMEsIntellectual Property Protection Overseas Primers for Brazil, China, India, Korea, Vietnam, USABusiness Link, with the GB IPO and DTI have created to assist SMEs filing overseas.China IPR Help Desk for SMEs newsletter covers IPR protection issues in ChinaEPO Asian Patent Information Service desk and advice on searching patents, legal status, alerts, translations.WIPO on IPRs specific for SMEs, newsletter, training programmes
  41. 41. Lighthouse IP