Tech Transfer Central
Industry-Sponsored Research Management

International Patenting Hot Spot: Focus on China

Format: On-Demand Video, DVD, or PDF Transcript
Originally presented: June 07, 2011

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The patent landscape in China has been heating up for years and is close to reaching the boiling point. In fact, estimates show Chinese companies have increased patent filings by over 50% in recent years. Yet, only a miniscule fraction of patent applications by foreign holders are submitted by non-Chinese universities. And with China’s concerted effort to become a world leader in IP, the opportunities are endless.

While there are many benefits to filing patents in China, the process is not without its challenges. Language barriers, cultural differences and a lack of understanding of the Chinese patent filing process are just a few of the obstacles university TTOs and foreign companies face.

Addressing and overcoming these challenges represents a massive opportunity. That’s why we’ve scheduled this timely and highly informative distance learning event:

International Patenting Hot Spot:
Focus on China

Led by Albert Wai-Kit Chan, PhD, JD, one of the most prominent and experienced patent attorneys  working extensively with US and international companies filing patents in China, this 90-minute program will give you clear and concise guidance to successfully navigate the challenges of China’s burgeoning IP marketplace. Here’s a brief look at the agenda:

  • Tech Transfer issues related to:
    • Setting up a Wholly Owned Foreign Enterprise (WOFE)
    • JV
    • Licensing
  • IP issues including:
    • Protection of Core Technology vs “links and dots”
    • Patent Procurement
      • Utility:
        • Sufficiency of disclosure: 26.3 rejections
          • Strict requirement and therefore not willing to grant broad scope of claims
          • In the biotech field functional broad language not welcome
          • Cannot have diagnostic and treatment claims per se.
        • Narrow claims: “ what you see is what you get”
      • Utility Model: Called “Small Invention” in China
        • Any new technical solution relating to the shape, the structure, or their combination, of a product, which is fit for practical use. Utility model patents protect products, but not methods
    • Enforcement and infringement risk
      • Big (We) vs Small
      • Small (We) vs Big
  • People and cultural divides:
    • Talent Pool
      • iMentality – loyalties – customs and the new generation
    • Relationship-building

Your Expert Presenter:

Albert Wai-Kit Chan, PhD, JD is the Managing Partner of the Law Offices of Albert Wai-Kit Chan, PLLC. He is a former research scientist who forged his legal career by combining his training as a molecular biologist with the emerging legal needs of the biotechnology industry in the late 1980s. Dr. Chan handles all areas of intellectual property law (including patents, trademarks, copyrights, and trade secrets), and his specialty is biotechnology patents. He is well-versed in all aspects of prosecution and litigation and is experienced in licensing, technology transfer and the evaluation of intellectual property portfolios in preparation for initial public offerings. Dr. Chan works extensively with both U.S. and international companies. His clients include prestigious research institutes as well as individual inventors. Since 1996, Dr. Chan has taught as an adjunct professor of law at The City University of New York School of Law. His classes include intellectual property law, patent law, technology transfer, Internet and the law, food and drug law, and international business law. Active in a number of legal organizations, Dr. Chan is past president of the United States-China Lawyers Society, which aims to promote the free exchange of legal ideas between professionals in the United States and China. He is founder of the United States-China Intellectual Property Institute, a non-profit organization designed to encourage understanding and technology exchange between the United States and China. USCIPI serves as a bridge between the U.S., an established intellectual property-respecting country, and China, which is just starting to recognize the benefits of protecting intellectual property.

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