I’m going to try and avoid getting involved in the perennial favorite discussion of “Can I Protect My IP in China?” Been a lot written about that already, from myself and others, so no need to go there. However, yet another of Dan’s posts at China Law Blog forces me to go against my lazy nature, drag myself to the keyboard, and write about this topic. (If a blog can motivate even me, it must be good.)

In this latest installment of the IP show, we find ourselves talking about patent protection in China, particularly some stuff written in the Wall Street Journal. I don’t happen to read that on a regular basis (oops), preferring instead the FT, but the excerpts in Dan’s post are sufficient for discussion purposes.

One area covered is the strategy of defensive filing. This is essentially the idea of filing IP, not because you expect to use that protection offensively against infringers, but because you want to block a third party from registering the IP in their name and then turning around and initiating an infringement action against you.

Now, I don’t have a problem with defensive filing strategies. Sometimes this is a very important tool, particularly when it comes to design patents and domain names, by the way. However, I did get annoyed with the implication from the WSJ that defensive filing may sometimes be the only justification for the cost of filing a patent in China.

Again, I’m not going to start the whole “China’s IP system is getting better and filing a patent is worth it and can be protected . . .” type of argument. Call me, and I’ll be happy to sound forth on that subject for a couple hours, but I’m not writing about it today. No, what really bothers me is this knee-jerk aggregation of the “China market” that encompasses all types of patents, all types of products, all kinds of technologies, all locations, all manufacturing processes - you get the point.

Look, your chances of protecting your patent in China varies significantly according to a number of factors. Given positive factors, the system here can work extremely well for IP owners. Given a poor set of factors, you can be screwed with no practical options. Talking about whether filing a patent in worth it or not begs the question as to what technology we are dealing with, what industry sector, a whole host of issues.

I know that it’s tough to deal with complex issues on TV or in a newspaper Q&A column. It’s much easier to show a photo of a fake Rolex and talk about the scourge of piracy, but in the end, this does not help real companies with real risk management calculations to make. Not to unjustly smack around the Wall Street Journal (heaven forbid), but there you have it.

FYI, Dan suggests in his post that patent filing fees can be manageable if US corporate counsel works directly with PRC patent counsel instead of having a US patent counsel in the loop. Agreed. Most of the time when you are talking about filing a foreign patent over here, we would be dealing with a Patent Cooperation Treaty (PCT) filing, meaning the international filing system. When the application process gets to China (the “National Phase”), most of the work is translation. Unless there are substantive issues to resolve, you may not need to have your home country patent counsel as an active participant. Send the docs over here to a good IP agency, have ‘em translated, and you are good to go.

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