Alston & Bird recently expanded with a new office focusing on counselling Chinese companies on US intellectual property law. Yitai Hu explains what patent owners face when working across borders

Why did Alston & Bird open its new office in Beijing?

The firm has long represented Chinese clients in high-stake litigation and other transactional matters. With increased business dealings between China and the US, our clients are in need of real-time access to our attorneys and it also opens up opportunities for the firm to attract clients who are now navigating through the unfamiliar US legal landscape.

What issues will the office’s Chinese clients often face when dealing with US patent law?

They are now dealing with an entirely different legal landscape and the harsh reality of an unfair perception and unflattering stereotypes associated with a Chinese company.

What are the key differences between US and Chinese patent laws that they need to be aware of?

Chinese companies are often surprised that patent cases are tried before a jury and the amount of damages that may be awarded, not to mention the discovery obligations.

How challenging of a forum is the International Trade Commission for Chinese companies importing goods into the US?

Ironically, many Chinese companies are very aware of an International Trade Commission investigation and therefore are relatively prepared, at least psychologically. However, the reality of its speed, breadth of investigation and high legal expense still present tremendous challenges for companies.

What do you advise Chinese companies to do if they expect to infringe upon entering the US? How useful of an avenue is licensing?

Be proactive. Actively investigate if there are any patent issues with their products and design around them if possible.

They should explore possible licensing options, but understand that getting a licence from one patent owner does not mean their products are free and clear of all patent issues.

They should also be prepared to deal with ‘patent trolls’, like every other company doing business in the US.

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