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.

1. Trading in Asia with confidence
by Lighthouse IP
Jane List –Commercial & Content Director
Will Hawkins – Sales Director EMEA

2. Lighthouse IP? Who?

3. Asia is an important market for all
types of businesses

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

5. Is Asia for me
and my IP?

6. Do I market or manufacture my
invention in Asia?

7. Find experts
who can help
you make the
right decisions

8. Taking my invention into Asia with
confidence

9. How is IP Treated in Asia?

10. Is my invention going to be stolen?

11. Is it worth
protecting my
invention?

12. Who can help to protect my IP?

13. Choose the best IPR to
protect an invention

14. Overview of IP Rights
Type of work Type of right
Type of IP protected granted Duration Obligation
Product or disclosure of
Patent Method monopoly <20 years invention
Utility disclosure of
Model Product monopoly <10 years invention
Registered disclosure of
Design Product monopoly 5 - 25 years designs
life of author
Copyright Creative work monopoly plus X years no obligation
Identifier for 10 years
product or unlimited must remain in
Trademark service monopoly renewals. use
No protection/
Breach of
Secrecy/ Know-How / IP Confidentiality Indefinitely/3-5 One-way / Two-
NDA / Business years way

15. Patent, Utility Model & Design Rights
in Asia
country patent Utility model design
China
Hong Kong Yes, via China.
Japan
Korea
Singapore
Taiwan
Thailand
Vietnam

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. 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. 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. Filing a Patent in Asia
State 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. The Paris Convention
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

21. WIPO and the Patent
Cooperation Treaty

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:
http://www.wipo.int/export/sites/www/standards/en/pdf/08-01-01.pdf

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

25. 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

26. 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

27. Lifetime Costs for maintaining a patent
family
Opposition proceedings

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. Lifetime of a patent: prosecution in Asia
Patent
Expiry
CN
KR
JP

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

31. 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/

32. Finding and Understanding Asian
patent information

33. 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/

34. How do I filter the information down
to what I need?
35,000
SIPO weekly publications 2012
30,000
25,000
20,000
Applications
Utilities
15,000 Granted Patents
10,000
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. Understanding patents in Asian
languages –
Machine or Human Translations?

36. Searching techniques and tips
Portfolio monitoring
Search keywords
Report Check legal status
Search IPC
Check renewals
Search applicants Analyse documents
Check citations
Search inventors Translate into English
Search in English MTChinese
Search in English / / Chinese Original
Full text of 5.3 m patents – Chinese / English MT

37. Chinese Patent Alerts Weekly
Complete Results
Emailed
Strategy Select Patents
In
Run From Results
Spreadsheet
Each Set To View
With
Week Complete
Bibliographic
Automatically Chinese PDF /
Data And
In English txt
Abstract
Chinese
In
English

38. Who can help me?

39. UK based Patent Attorneys with links in
Asia

40. 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

41. Lighthouse IP