Bei & Ocean has the capacity to draft patent applications either in Chinese or in English. We are particularly capable of drafting patent applications for multinational companies having R&D centers in China. With our extensive overseas practice experiences, we interface effectively between the company's patent counsel at home and their research personnel in China. Actually, we are like an extension of their home patent counsel.
During the drafting process we are not just passively receiving information from the inventors. Using their native language, we actively probe the inventors on various aspects of the invention to ensure we understand the invention accurately so that we can derive an optimal protection scheme for the invention.
PCT NATIONAL PHASE
At Bei & Ocean, we believe a PCT application entering China requires more than a good translator. A translator frequently has to make a choice of among several seemingly suitable words. It requires an experienced patent practitioner to choose the right one for a particular application. In fact, even an experienced patent practitioner may not properly translate a patent application if he or she does not spend enough time to adequately understand the invention. That is why at Bei & Ocean we do not start translation before we understand the invention.
Although translation has become the most profitable service for many other patent firms, we do not cut corners. We take time to understand the invention in each PCT application and convert the application using the same due care as we do with original drafting. While the quality of handling PCT applications may not be very obvious to the clients for years, we think in the long run both clients and ourselves will benefit from our effort.
FILING & PROCECUSION
We are fully licensed to represent overseas clients, and we file and prosecute patent applications directly in China. We also directly file and prosecute patent applications in the U.S. and in Hong Kong.
As legal principles governing patent litigation in China have become more and more compatible with those in the U.S. and Europe, quality of handling patent prosecution becomes ever more critical for subsequent patent enforcement. For example, with the abolish of the so called "Unnecessary Limitation" doctrine (by which the court could disregard an element specifically recited in the claims), there is no more leniency towards patent owners whose patent claims were poorly drafted or amended during prosecution. Furthermore, because the court in China has adopted the doctrine of prosecution history estoppel, statements not carefully made during prosecution can and will be used against the patents owner in subsequently litigation.
Bei & Ocean provides quality work in prosecution because our perspective goes beyond prosecution itself but draw our experiences in original drafting and patent litigation.
Over the years, Bei & Ocean has accumulated experiences in representing clients in various administrative proceedings. The administrative proceeding is of two types: re-examination and review. They are, respectively, for resolving substantive and procedural issues during patent prosecution.
RE-EXAMINATION, brought before a re-examination committee set up within the patent office, is mainly sought to overturn rejections made by Examiners or to invalidate an issued patent to a third party.
REVIEW, on the other hand, is brought before the legal affair department of the patent office and primarily sought to overturn procedural rulings made by the patent office.
Increasingly, litigation has become an important means for resolving patent disputes in China. We can represent clients to bring or to defend against a civil action. The types of civil action that can be brought are: infringement action, declaratory judgment of non-infringement, injunction and preliminary injunction. A civil action can also be brought to resolve disputes on ownership of patent rights, patent license agreements, inventorship, etc. In addition, an action can also be brought to review the outcome of any administrative proceedings.
However, in a way different from some other jurisdictions, patent validity cannot be initially adjudicated in the court but must go through administrative proceedings. The outcome of the administrative proceeding nonetheless can be reviewed by the court.
ADVOCACY IN CHINA
Various legal principles and rules governing patent litigation have been gradually established in China and become ever more compatible with those in other countries. Patent litigation has set a good stage for advocacy in China. This puts a great demand on patent practitioners, who now must possess a right mentality and necessary skill to be an advocate, something not native to our culture.
Bei & Ocean has practitioners coming from various backgrounds. When it comes to advocacy, we have the right attitude, experience, and skill. Whether it is in prosecution or litigation, we have a mentality of an advocate and are capable of advancing the client's interest to the fullest extent possible.
LICENSE & ASSIGNMENT
Bei & Ocean provides services for facilitating negotiation in IP-related transactions involving local and overseas parties. Because of our in-depth understanding of different cultures and legal systems, we can ensure minds meet among contracting parties and avoid misunderstandings due to language and cultural barriers, which may affect validity of contractual terms and/or cause disputes over their meanings.
We provide due diligence evaluation on any intellectual properties involved in IP transfers, compnay merger and acquisition.
As we understand that litigation is not always the best way to resolve disputes, we also provides mediation services to help parties resolve IP related disputes in an amicable way.
Drawing from our experiences in patent prosecution and litigation, we provide quality work in rendering various opinions:
Patentability: advice on patentability of an invention.
Invalidity: advice on validity of the claims of a patent.
Infringement/non-infringement: advice on whether a particular product or process infringes any claims in a patent.
Freedom to operate: advice on whether a particular product or process is free from any valid patent claims in a particular jurisdiction.
Design around: advice on whether a particular modification would render an otherwise infringing product/method free from the patent claim.
PRIOR ART SEARCH
As many opinion works depend on good search on prior and/or present arts, Bei & Ocean has trained search specialists in various art fields and gained access to one of the largest technical literature search facilities in China, located in Tianjin University which is in the neighborhood of Bei & Ocean’s Tianjin Office. Thus, we are uniquely equipped to provide high quality and cost-effective search services of various kinds, either the search alone or in connection with our opinion works on patentability, invalidity, due diligence, designing around.
More importantly, with the facility's comprehensive collection of Chinese language publications, we may obtain relevant prior art references that were published only Chinese and thus may greatly help the client's cause to invalidate particular patent claims.