Intellectual Property
If you can’t read a patent, how can you avoid infringing it?
The number of patent applications filed worldwide is growing. In 2004, the US Patent and Trademark Office received 357 000 applications, its European equivalent 124 000, and the Japanese organisation 423 000. In addition, 130 000 applications were filed in China, 139 000 in Korea and 66 000 in Taiwan.
Each country requires that granted patents and national filings are written in a local language. The Patent Cooperation Treaty (PCT) allows patents to be filed in a few specified languages such as English, Spanish, Russian, Japanese or Chinese. This means that companies wanting to release a new product or enter a new market face legal documents in many languages. In most cases they rely on translations to understand the content.
Most patent searches are done using databases. Translations between English and Chinese can be tricky, especially for names and technical expressions, making it difficult to define the right search terms. My colleague Jenny Zhan faced this issue when she wanted to search Chinese databases for Chinese patent applications by a specific inventor in a specific field, described in English. She first had first to track down a lot of non-patent-specific information in order to establish a sensible context and verify key elements, before she could do a more stringent search. She then found several patent applications that had not shown up in searches of the translated registers.
This experience shows that we need new strategies for searching patent databases. We cannot rely on searching translations alone, especially when the information was originally written in Chinese or Korean. The Japanese Patent Office is providing machine-translated copies of Japanese applications to patent offices in Europe and USA, but such translations are at best readable and understandable. They are probably insufficient when it comes to claim interpretation, especially in a dispute.
Many people think intellectual property (IP) in China is about the wholesale piracy of well known trademarks, but we shouldn’t forget China’s ambitions. The government is putting a lot of effort into developing Chinese innovation and has set national goals for the number of patent applications filed each year. Technical universities expect their professors to contribute with patent applications on inventions made in their laboratories. The professors receive a large stake in the invention and most of the costs are born by the universities. The result is a huge number of filings.
A physics institution with 60 or 70 researchers can easily file around 80 patent applications per year. At Tsinghua University the number of filings has become so large (around 1000 per year) that the Technology Office is starting to concentrate on quality instead of quantity. Most of these applications are only filed in China, and so will not enter the PCT system. The cost for a Chinese inventor to submit a patent application in China, including having it drafted by a patent attorney and the filing fees, is around 1000 Yuan (€110), compared with the €2000 a foreign applicant has to pay for entering China in the national phase of PCT. Most Chinese applications are not filed outside China, due to the high cost of filing in the USA, Japan and Europe.
China is trying to increase national awareness of IP, particularly in high technology, even using TV commercials to spread the message. The Chinese patent office is struggling to educate around 1000 examiners every year, and then to keep them once they have some experience. Chinese judges are being educated abroad to increase their understanding of IP law. We cannot take the widespread criticism of China’s implementation of IP laws as an excuse for not making thorough searches of Chinese patent databases when introducing products to the Chinese market or starting R&D projects. It’s also clear that we should prepare for China to begin protecting its IP as vigorously as the West protects its own.
Katarina Lundblad Pinnekamp
Principal
AdviceIPR
katarina@adviceipr.com
www.adviceipr.com
doi:eiq-2006-007-0004
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