Sound advice to Chinese companies on navigating overseas environments


Author:China Daily


The 10th China Intellectual Property Annual Conference has given Chinese enterprises insighs on potential IP risks in target markets and countermeasures to protect their IP overseas.Song Beibei from the IP protection department of the National Intellectual Property Administration said during the recent event that IP protection in China has improved in many aspects in recent years.However,three challenges remain for Chinese enterprises that are expanding globally:a lack of understanding the rules in target markets,a lack of experts to give advice and a lackof money for litigation costs,Song said.“An overseas IP information platform was launched in 2015.Since 2017,its WeChat service channel has offered 1,400 IP policies in more than 200 countries and regions,and reports on more than 20 main target markets,said Zhang Zhicheng,director general of the IP protection department at NIPA.Available from Monday,users can talk to 350 institutions and 40 IP experts online for advice via the WeChat mini program“In July,a dispute response guidance center started operation.It will spend five to 20 working days to give advice.If the case is complex,the center will organize a panel of top experts to offer opinions,Song said. She added that research on overseas IP insurance,funds and tax reductions is on its way too. Chen Guihua,chief of the trade remedy bureau of the Ministry of Commerce,said those in the United States had to stand up to pressure from Section 337 investigations conducted by the US International Trade Commission.It is a means that the US claims to prevent unfair methods of importation.The investigations are initiated,specifically against the suspected infringement of a US registered patent,

trademark,copyright and trade secret.With China’s rise on the global innovation landscape,more of the investigations targeted Chinese companies seeking to explore inthe US market,observers said.Of 1,175 Section 337 investigations launched since 1986,267 were on Chinese products,according to Chen. In 2016,22 cases involving Chinese enterprises were investigated, accounting for 41 percent of thetotal filed in US. In 2017,the number of Chinese enterprises investigated hit a record high.In 2018 the number was 19.By the first half of this year,it was 15.“Chinese enterprises are seeing a growing number of Section 337 investigations.Most of them are tech firms who will face painfully large bills.That’s why we should be well prepared,”Chen said.He cited an example of this year’s Section 337 investigation on taurine produced by Chinese enterprises, which is a type of amino acid used in healthcare.“After careful research and preparations for legal defense,our domestic companies involved managed to request the ITC to start the 100day proceeding. In just 32 days,the US applicants withdrew the lawsuit,”Chen said.He added that there are more success stories to tell.According to IP industry insiders from firms worldwide, a nuanced understanding of the case and the target market’s IP policies will have a direct bearing on the outcome.“To prevail in a litigation,the first task is to sit down,analyze and assess what your position is and how it is important for you to participate in that market,come up with a winning strategy and then deal with the cost,”said Gary Hnath,senior partner of US based Mayer Brown.“There are many paths to success.For example,you can settle the case with patent owners,”Hnath said.Raphael Fleurance,a partner at European IP firm Cabinet Plasseraud,said when a company is involved in a“Saisei Contrefacon  in France   or investigative infringement seizure 

operation,evidencecollection is important.Song said:“Chinese enterprises   may not want to deal with overseas IP disputes but they must not be afraid to cope with them.”