October 22, 2014

A Global Approach to Serving Clients

One of our US-based clients is a consumer products company with affiliates in China; the Chinese affiliates produce goods for sale in the US and Chinese markets. Protecting intellectual property originating in China for an international market is challenging and expensive due to differences in culture and languages. Working closely with our client, we’ve crafted a global approach that improves costs, efficiency, and the quality of the client’s patent applications.

For inventions conceived in China, the client files Chinese utility model applications which are inexpensive, rather informal and always result in a Chinese patent since they are not examined for novelty. For inventions deemed important enough to protect internationally, the client files PCT applications which are later extended into a number of jurisdictions, including the US. In the past, the PCT applications were essentially no more than a translated version of the Chinese utility model often having little disclosure in the form of written detail and drawings to provide support for claimed subject matter. In addition, the translations into English were also being prepared by non-technical personnel and errors were common. As a result, US and European applications were often rejected and any allowable subject matter could only be narrowly claimed.

To help the client improve the quality of these non-Chinese applications, we provide a combined translation and revision service prior to international filing. Our English-Chinese bilingual associates translate the original Chinese application to English and at the same time revise and enlarge the application adding additional subject matter and embodiments of the invention based upon discussions with their Chinese- speaking counterparts at the client’s facilities in Shanghai. The result is a high quality application that includes everything from the original Chinese utility model plus any other developments that have taken place during the priority year. The client pays a single, flat fee for the service that includes the translation. Furthermore, at prosecution stage, the same bilingual associate directly communicates with the Chinese inventors in Chinese for prosecution strategies, thereby saving the client costly translation fees for the office actions and English language communications.

Related Team:

W. Bruce Patterson

Partner, Practice Head

Jessie D. Herrera, Jr.