New Relationships Abroad and at Home

Partners’ trip to China strengthens overseas presence

In addition to TKHR’s new presence in Taiwan, partners David Risley and Paul Qualey made the rounds in China this summer to forge relationships with key companies and universities. The goal was two-fold: educate Chinese businesses, attorneys, and universities on what they need to know about patent law in the States; and generate relationships that will continue to expand the firm’s presence and client base in Asia.

Accompanying the Chairman of the Guangzhou Association of Social Sciences Societies, Dave and Paul were able to work hand-in-hand with this government agency to educate and network. It was a productive and enlightening trip on all sides.

Beginning with the Sino-American Exchange Conference for Patent Law, Risley, Qualey and the accompanying Chinese officials made the rounds to several seminars and one-on-one meetings throughout the country.

“Our seminars and discussions focused on the importance of securing IP rights both in China and in the United States, and how the U.S. IP processes and regulations differ from those of the Chinese system,” said Dave. “Awareness of IP rights (IPRs) has increased dramatically in China due to recent IPR enforcement efforts being made by the Central Government. These companies are being hit hard by foreign IP owners and the associated royalties, so they’re beginning to appreciate the need to secure their own IP rights moving forward.”

Since joining the World Trade Organization (WTO) in 2001, China has amended its IP laws to comply with International IP treaties. As a result, Chinese patent law has been changed to more closely align with the patent laws of other countries. Despite those changes, there still are some significant differences. A few key examples of the differences between U.S. and Chinese patent law practices include:

• U.S. patent law provides a one-year grace period from the date of public disclosure of an invention to the filing of a patent application for the invention; in China, there is no grace period except in certain limited circumstances. Therefore, if a company does not realize this and goes public with its product/technology, it has forfeited the right to apply for a patent in China.
• The subject matter that is patentable also varies between the U.S. and China. In the United States, business methods, software, and biotechnology (such as genetically modified animals) may patentable, but may not be in China.

The Chinese government is excited about prospects for future intellectual property opportunities in its country. Leaders are encouraging innovation and a build-up of IP rights born in Chinese businesses and universities, rather than focusing on manufacturing. The government’s support is so strong, in fact, that it subsidizes the costs for universities to file for patent rights in certain instances.

As TKHR continues to provide knowledge and services to Chinese entities, the firm will provide ongoing updates to the increasingly international flavor of IP law.

New associates join TKHR

Two new associates have recently joined the ranks at TKHR, expanding the firm’s patent prosecution arsenal.

Tony Bonner specializes in patents for the electrical, mechanical and computer industries. He earned his law degree from the University of Kentucky, as well as two bachelor’s degrees from the University of Kentucky and Transylvania University. His previous engineering experience provides in-depth knowledge of his clients’ businesses and technologies as they relate to intellectual property.

Dennis Jones practices patent prosecution, trademark and design law for clients in the electrical and computer industries. He received his law degree from Georgia State University, a bachelor’s degree in electrical engineering from the University of Tennessee and a master’s degree from Auburn University. In addition to his academic prowess, Dennis brings 20 years of experience as an engineer.