China’s National Intellectual Property Administration Approves Establishment of First 3 Foreign Patent Agencies in China

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On May 20, 2022, China’s National Intellectual Property Administration (CNIPA) released the “Notice of the State Intellectual Property Office on Approving the Establishment of Permanent Representative Offices in China by 3 Foreign Patent Agencies including Levy Intellectual Property Company of France” (国家知识产权局关于批准法国利维知识产权公司等3家外国专利代理机构在中国境内设立常驻代表机构的通知).  CNIPA authorized 2 French firms and 1 American firm per the Administrative Measures for the Establishment of Resident Representative Offices in China by Foreign Patent Agencies and other relevant rules.

The three firms, as translated by Google Translate (no English names were provided by CNIPA), are: French Levy Intellectual Property Company (法国利维知识产权公司), French Novartis Technology Co., Ltd. (法国诺华技术股份有限公司), and American North Vision Patent Agency Co., Ltd. (美国北维专利代理有限责任公司).  The two French firms will open in Guangzhou in southern China. The American firm will open in Suzhou, nearby Shanghai.

Note that permitted activities of these representative offices will be limited and they will not be able to prosecute Chinese patent applications.

Once established, a representative office may engage in the following activities per Article 14 of the Administrative Measures for the Establishment of Resident Representative Offices in China by Foreign Patent Agencies (外国专利代理机构在华设立常驻代表机构管理办法):

(1) To provide the parties with patent affairs consultation in the country or region where the foreign patent agency has been approved to engage in patent agency business;

(2) Accepting the entrustment of the parties or the Chinese patent agency to handle patent affairs in the country or region where the foreign patent agency has been approved to engage in patent agency business;

(3) Accepting the entrustment of the parties or Chinese patent agencies to provide professional consulting services for Chinese enterprises’ overseas investment, overseas early warning, overseas rights protection and other patent-related matters;

(4) Representing foreign parties and entrusting Chinese patent agencies to handle Chinese patent affairs.

Chinese patent prosecution is specifically excluded:

The representative office shall carry out business activities in accordance with the law, and shall not engage in Chinese patent affairs such as agency patent applications and invalidation of patent rights, as well as Chinese legal affairs.

Further, the representative office will not be able to hire Chinese patent attorneys per Article 16 of the Measures.  Chinese patent attorneys will presumably need to deregister their licenses in order to work for a representative office.

 

Author: Aaron Wininger

Aaron Wininger is a Senior Attorney and Director of China Intellectual Property at Schwegman Lundberg & Woessner.

Author: Aaron Wininger

Aaron Wininger is a Senior Attorney and Director of China Intellectual Property at Schwegman Lundberg & Woessner.