Ma Tieliang, a patent agent for the past 10 years, now has a new legal brief: registering trademarks.

The expansion into another intellectual property field came after a maker of wooden flooring contracted Ma's firm Deheng Law Offices to file patent applications in the United States and then asked if he could also help register trademarks in the US and the European Union.

After the flooring company became a defendant in a US Section 337 investigation it realized the importance of intellectual properties (IPs) and filing its own patents and registering its trademarks.

The request posed a challenge for Ma, a veteran lawyer, because patent agents traditionally only deal with patents and not trademark or copyright applications.

But he realized it was also an opportunity to provide comprehensive professional services to customers, so his firm formed another team of lawyers and began to help the flooring company register trademarks overseas.

The change in Ma's attitude reflects the evolving IP agency profession itself, which now faces increasing demands and a need to break down barriers to integrate services for different types of IP work.

One development that reflects changes underway was the founding in Beijing last month of the first IP agency industry association in the country.

On October 1,956 agencies announced they joined the Beijing IP Agency Industry Association and elected Ma Tieliang as the first chairman.

Although the number of members is still small compared with 148 patent and almost 500 trademark agencies in Beijing, the association is the first to have members from all three major IP fields - patents, trademarks and copyrights.

"The IP agency business is undergoing a major transition with China's focus on innovation the revision of patent, trademark and copyright laws," says Ma.

Liu Zhengang, director of the IP Administration of Beijing (IPAB) and a key sponsor of the organization, says "with the birth of an organization of your own, it shows you are no longer just aware of yourself, but also of a collective conscious and you do not only pursue the benefits of one agency, but the whole industry."

And IP agencies are facing explosive demand for their services.

Last year, more than 573,000 patent applications were filed, 20 percent higher than 2005, but there were only some 4,000 patent agents, which meant one agent on average handled more than 1,600 applications.

At the same time, enthusiasm from enterprises and individuals is unprecedented. Wuhan Iron and Steel Corp, the fifth-largest steel maker in China, last year filed 105 patents, more than three times the 34 applications it filed in 2005. The company had already filed 149 patent applications in the first eight months of this year.

In many parts of the country, governments encourage IP agencies to go to companies or research organizations to teach them how to file patent applications, or simply take charge of the application work.

In August Beijing began a bridging campaign to bring more than 100 IP agencies to over 600 companies in the Zhongguancun Science Park, where almost 20,000 high and new technology companies are located.

The agencies showed how to apply for patents, search for patents of others, build a patent alert system and adopt corporate IP strategies.

The Sunlight Law Firm alone helped a computer company in Beijing file over 30 patents in the past year.

"As our customers' awareness is higher and they become more knowledgeable in IP work, we must work to improve the quality of our services too," says Ma.

Yet as regions and cities now provide financial incentives for patent applications, such as refunding application and retention fees on invention patents or giving prizes to companies for foreign patents, some IP agents began to make fake materials for their clients.

The State Intellectual Property Office said in an administrative measure that took effect on October 1 that local governments should not give rewards on fake applications.

It also warned that IP agencies will be punished if they assist in filing such applications.

Liu with IPAB also says IP agencies must be ethical in providing services and should not cheat clients or IP authorities.

Ma says that revisions of the patent, trademark and copyright laws will enable barriers to be lowed so that a patent firm can also handle trademark issues, which means higher requirements for IP agencies.

At the same time many companies have begun to formulate their own corporate IP strategies and bundle their IP issues rather than separating patents, trademarks and copyrights.

In the State-owned food giant COFCO, trademark and patent issues are under management of the same department, so it also asks agencies to have the same capability.

(China Daily 11/05/2007 page9)

2013-07-17