Patents Trade Marks Designs

Record Damages in Chinese Patent Infringement Case

June 27, 2017

In December 2016 the Beijing Intellectual Property Court awarded damages against Hengbo Company Ltd, of RMB 49,000,000, about £5 million, along with attorney fees of RMB 1 million. This is the highest damages award by the Beijing IP Court, and the first time that they have made an award of costs in relation to attorney fees.

The patent in question related to smart password key products, which Hengbo sold to dozens of Chinese Banks. Hengbo sought to defend the infringement proceedings on the basis that they had their own patents and could not therefore infringe the patent in question. Having a patent does not necessarily mean that an earlier patent cannot be infringed, and apparently, this is a common misunderstanding by Chinese companies, as well as perhaps elsewhere in the world.

Accordingly, patents in China can hold up, and significant damages and sometimes attorney’s costs can also be awarded against an infringer. Accordingly, it may be worth seeking patent protection in China, and particularly bearing in mind that any patent may last for up to 20 years, and the commercial position may change significantly over 20 years. A Chinese patent may be very useful if at any time manufacture of a product may be carried out in China.

It is also worth bearing in mind other potential IP rights in China. For instance, utility model and design protection can provide significant advantages. Also for trade marks there is a tendency for Chinese parties to register the marks of European companies, and it is therefore advisable to obtain protection of your marks in China as soon as is possible to avoid a Chinese party pre-empting you by registering your mark in China themselves.

For further information please get in touch with your usual contact at Swindell & Pearson or [email protected].

Swindell & Pearson is a UK based intellectual property firm that has been helping businesses and individuals protect and defend their ideas, innovations and brands for over 130 years. With its head office in Derby, the firm also has offices in Stoke, Wolverhampton, Stafford, Sheffield and Burton upon Trent. To find out how Swindell & Pearson can help you and your business with any patent, trade mark or design right matters please get in touch via [email protected] or by telephone on 01332 367 051.