Pekama Insight – Yan Gong Talks IP in China

In the 6th of our Pekama Supplier Interviews we talk to Yan Gong of China Pat

Hi Yan, how many IP professionals work in your firm?
We have now 219 employees, 109 patent attorneys, 13 trademark attorneys and 9 attorneys-at-law. We are not the biggest firm in China, but we are relatively big.

How long have you been practicing IP?
13 years, I have worked as an IP lawyer since 2004.

What is the focus of your practice?
We have a large team for patent prosecution and a comparatively small team for trademark and then the litigation team. We do both prosecution and enforcement work in Greater China.

Tell us a bit more about yourself. What do you like to do in your spare time?
Body building. I go to the gym three times a week. I have very strong muscles.

What do you see as the biggest challenges to the IP industry?
I think the whole structure will change gradually owing to the uneven development of regional economies in different areas in the world. For example, I see more and more Chinese companies seek opportunities to expand business in other countries, which was not true in the past because Chinese companies used to focus on Mainland China in view of the large population and consumption power. They have already made very good profits in Mainland China. We have been working prominently for clients from Europe, the US and other Asian countries. Now that Chinese companies start operating abroad, we have been requested to help them get appropriate assistance in other countries. I see the trend of changing.

Plus, today foreign companies are increasingly interested in IP enforcement in China, which means they are no longer satisfied with merely prosecution. With the IP rights already granted in China, foreign clients are curious about the enforceability of IP rights in China. As a matter of fact, along with the prosperity, China’s legal system has been significantly improved during the last few years, new laws implemented and judge’s attitude changed. This is equally a challenge and an opportunity for us. In order to better our services in regard to enforcement, we formed our litigation team to handle contentious IP matters.

If you don’t mind sharing what’s your firms most competitive advantage?
Long story short, our firm was established in 2003 and has been growing rapidly. We do not rely on relationships with authorities, which means our fast growth was achieved through our continuous efforts in satisfying our clients with professional services on the basis of our knowledge and experience. Compare with those who make use of relationships with authorities, we tend to challenge the authorities within legal limits.

Further, unlike most other firms who only do translation instead of drafting, we draft patent documents on our own, for both Chinese clients and overseas clients.

What are the biggest changes you have seen within the IP Industry?
In China a remarkable change is attitude of the Courts. Three IP Courts were established in Beijing, Shanghai and Shenzhen since the end of 2014. The well trained judges in these IP Courts are equipped with adequate technological knowledge and experience. This will undoubtedly result in fair trial and reasonable judgement in future.

How do you see yourself making a difference to the IP Industry?
Compared with many western firms, Chinese local firms are much younger. The average level of the quality of services provided by local firms are to be improved. I worked with international firms for years and learnt from all aspects how to better the professional services. I now ask all my colleagues in China PAT, a local firm, to follow the same high standard at work. In other words, I make it possible for clients to receive higher quality work but with competitive charges.

Turning to your services now, we want to assemble some useful information for our community members and make them more aware of the different ways IP is handled in different jurisdictions, so I would like to ask you some questions about IP protection in one of the jurisdictions where you practice. What is the jurisdiction that you would like to talk about?
China

Starting with patents – Is China member of the Paris convention and PCT?
Yes

What is the typical time from filing to grant in your jurisdiction?
2.5 Years

Is China a member of any PPH agreements?
Yes. Detailed information is available on SIPO’s website.

Is there a green track for environmentally-friendly inventions?
Yes

Are there other acceleration processes?
No

Can you elaborate on opposition processes – how do they work, what do they typical cost and how long do they take?
There is opposition proceeding for trademark, but not for patent in China. For patent, instead of opposition, there is invalidation proceeding. A third party may file a request to invalidate a patent before the Patent Reexamination Board. There is an official fee of RMB 3,000 for filing an invalidation action of an invention patent, while RMB 1,500 for a utility model or a design patent. Our charges are calculated on the basis of the complexity of the matter and the actual time spent. It usually takes the Patent Reexamination Board 6-8 months to process an invalidation action.

Are there any waivers from examinations and if yes, in which terms?
No

What’s the approach of your jurisdiction to software / business method patents?
This is a complex question. Briefly, a patent can be granted to software/business method as long as technical features are included in the solutions. And, as of 1st April 2017, storage medium claims are acceptable in China.

Are there limitations to protection of healthcare-related inventions?
Yes, excluding methods for diagnosis or treatments of diseases.

Do you have utility models / innovation patents?
Yes, we have utility model patents in China.

If yes – is there substantive examination?
Yes, there is substantive examination, but the requirements on novelty and inventiveness of a utility model patent are quite low. It is much easier to obtain a utility model patent. Please note that the subject matter of a utility model cannot be any method.

How do you see your future involvement in the Pekama community?
I’ve reviewed Pekama web site and trust that we will benefit from this platform in the future.

What can Pekama do to help you and your business grow?
Pekama provides the opportunity for IP right holders to get connected with us when they need assistance in China. And we can also reach out to business partners in other territories through Pekama.

What are the leading economic sectors which you service in your country?
Electronics and telecommunications. We represent ZTE and TENCENT, which occupy a certain proportion of our business. Of course we also have very strong mechanical and pharmaceutical teams.

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