At present, theinternet companies in China are developing vigorously. Among the three giants (BAT), both Tencent and Alibabahave a market capitalization of more than $400 billion and Baidu more than $80 billion, and they are among the top 10 internet companies in the world.Many other enterprises, such as JD.com, YY, Momo, Jumei andTuniu allhave beenlisted in the US.
The internet companies in China are using the huge population base and a profound understanding of the Chinese culture to make their businesses prosperous. However, when they decide to go abroad, they have to weigh carefully.The strictintellectual property rules of the countries, especially the developed countries usually haveinsurmountable thresholds for theChinese enterprises.Taking patents as an example, the Chinese internet companies lack ofoversea patents, especiallyin the United States--the main battlefield of patents,the number of patentsthey have obtained is rathersmall, under such a circumstance, how to prevent risks and deal with potential patent lawsuits has become the top priority of the intellectual property departments of the enterprises. Different enterprises have different solutions, but the only way for most of themis to “rapidly” increase their patent prosecutionexperience and “rapidly” obtain as many granted patent as possible.
Under the two goals of "being rapid", the oversea patent prosecutionstrategies of the internet companies mainly include the following four aspects:
1. Adopting PCT application
It is difficult for theinternet companies to identify which country their products have entered, even for those that don’t havemany users, for the products solely in Chinese versions, their users are likely to spread all over the world.Once encountering patent infringement disputes, it is difficult for the enterprisesto escape fromtaking onresponsibilities. In order to better protect themselves and counterchargecompetitors, theinternet companies needa wider and more extensive patent layout.
The PCT application has many advantages over the Paris Conventionapplication. It is simpler and more convenient to operate, and can help enterprises to enter many countries more economically.More importantly, compared to the 12-month priority for the Paris Conventionapplication, there is a 30-month consideration period for PCT application which is very important for the internet companies.On the one hand, the products of the internet companies are updated more quickly, and perhaps within 30 months, the products have phased out; on the other hand, some of the inventors'ideas are so advanced that they can't see business prospects at the current stage and are not sure to entry into a foreign country, but after a while, maybe the ideas are able tobe put into practice and inserted withinnew and excellent products. The 30-month consideration period allows the applicant to take enough time to make decisionsonwhether to enter some certain countriesbased on the market conditions and its business strategy. Therefore, as for the oversea patent prosecutionstrategy, PCT application is a better choice.
2. Drafting PCT application using English
Most Chinese enterprises prepare the documents in Chinese when applying for PCT as it is the most convenient way for them. However,if it is certain that the application will enter into United States, it is necessary to draft applications using English and basing on US patent prosecution guidelines.With budgetis sufficient, enterprises can retain American lawyerswho have rich technical and legal experience, their in-depth experienceinenrichingembodiments, fulfilling the requirement of clarity and completeness, enlarging the scope of claims can undoubtlyimprove the quality of the PCT application and help to get favorable PCT search report , which is conducive to speeding up the prosecution processinviaPCT-PPH programat the subsequent nationalstage.With the highquality of the PCT application,the number of replies to Office Actions can be reducedwhenenteringnational stage, so that the prosecution processcan be accelerated and the grant rate increased.
3. Rapid entry into key countries after PCT
When the PCT application number is issued,the enterprises can quickly initiate the procedure in designated states so as to accelerate the application process.
For the enterprises that have drafted PCT application in English at theearlier stage, this strategy would bemore effectiveand thefollow-up processing can be expedited.
4. Using PCT-PPH to speed up prosecution process
PCT‐PPH refers to the situation that whenreceiving the favorablewritten opinionor preliminaryinternationalsearchreports (WO/IPER) from the specific International SearchAuthorityor International Preliminary Examining Authority (ISA/IPEA)stating that at least one claim in the PCT application is patentable, the applicant may request the patent office to accelerate the examination of corresponding national applications. At present, the ChinaNational Intellectual Property Administrationhas signed the PPH pilot agreement with the patent offices of 20 countries/regions, including key counties and regions, such as the United States, Europe, Japan, and South Korea. These countries are basically the main target market of Chinese internet companies.
Typically, the favorablewritten opinioncan be very useful to formPCT-PPHrequestinkey countries.
For PCT applications that were draftedin English and quickly entering the national stage, if PCT-PPHrequest is approved, then the expected grant date would be 30 months earlier than conventional application.
The internetcompaniescanselectively adopt these principles according to their own situation.With the suggested strategy,I believe they can quickly obtain a large amount of patents with a wide scope within a relatively short period.In practice, it was found that some applications were grantedin 3 months or earlier after the PCT-PPH request was submitted.The following is an example of speeding up prosecution process through PCT-PPH.Itwas first prosecutedin China; the English PCT applicationwas filedafter 10 months since the priority date; it entered the United States after 12 month; the PCT-PPH request was filedafter 15 months and the application was granted after 18 months since the priority date.
