Patent Litigation Practice in China
This book provides an up-to-date overview of patent litigation in China by introducing the cause of action, jurisdiction, litigant participants, evidence and infringement determination, which are the basis for gaining a comprehensive understanding of the procedures involved in patent litigation. Over the past years, China has been continuously enhancing its protection in intellectual property and has witnessed an annual increase in intellectual property cases. Patent litigation is regarded as the most specialized type of intellectual property litigation, which involves expertise from various fields such as technology, law and economics. In addition, it takes a deep dive into the Chinese Patent Law and decided cases to provide litigation strategies from the perspective of both the plaintiff and the defendant. This book focuses on several typical cases the author himself participated in as a patent lawyer, discussing central issues regarding the defense strategies, cases involving large-scale machinery, biological medicine, software and standard-essential patent, which could offer useful clues for legal practice. It illustrates specific approaches on conducting technology analysis in the infringement of patent and standard-essential patent and proposes a calculation formula for standard-essential patent license fee. This book also provides advice for foreign patent right holders who are currently operating or planning to operate in China, alerting them for the risks and consequences for not applying for patent right as well as providing insights into their goalsetting in their intellectual property in China. Based on law and regulations as well as the author’s expertise, this book offers a valuable asset for legal staff in foreign companies, foreign patent lawyers and patent agents.
Jacky Yingqiang Tan, born in 1981 in Heshan, Guangdong Province, China, currently resides in Guangzhou. He is the Deputy General Manager of Jiaquan IP Law. He holds a Bachelor of Engineering in Electronic Science and Technology (Microelectronics) from the School of Science, South China University of Technology, and a Master of Laws in Intellectual Property from the School of Law at the same university. He is a senior patent attorney, certified senior intellectual property professional, associate research fellow in patents, arbitrator, judicial expert, and engineer.
Mr. Tan is Executive Council Member of the All-China Patent Attorneys Association, Vice President of the Guangdong Patent Attorneys Association, Vice President of the Guangdong Intellectual Property Protection Association, Vice President of the Guangdong High-Tech Enterprises Association, Executive Council Member of the Guangdong Intellectual Property Research Association, Supervisor of the Guangdong Enterprises Confederation, Vice President of the Guangzhou Enterprises Confederation, and Technical Investigation Officer for Administrative IP Protection at the Guangdong Administration for Market Regulation.
Mr. Tan also serves as an arbitrator for the Guangzhou Arbitration Commission, a mentor at South China University of Technology, and an adjunct professor at Wuyi University. He is listed as an expert in the databases of both the Guangdong Intellectual Property Administration and the Guangdong Administration for Market Regulation and has been recognized as a leading talent in innovation and entrepreneurship services in Guangzhou. In addition, he acts as Special Legal and Intellectual Property Advisor to the International Economic Strategy Institute of the American Chamber of Commerce in South China, serves as an expert consultant on major administrative decision-making for the City of Guangzhou, and is a judging expert for the Guangdong-Hong Kong-Macao Greater Bay Area High-Value Patent Portfolio Competition. His professional honors include being named one of the “Top Ten Emerging Patent Attorneys in Guangdong” and one of China’s “Top 50 IP Lawyers Under 50,” as well as recognition as a recommended litigation attorney by IAM Patent 1000 and inclusion among AsiaIP’s “Top 100 IP Experts in China.”
With over a decade of experience in patent prosecution, he has handled more than 600 patent applications and nearly 300 patent litigation and invalidation matters. He has represented leading domestic and international companies, including Tencent, Midea, China Telecom, Procter & Gamble, Gillette, and Hitachi, in a wide range of intellectual property matters. His experience includes invalidation and litigation of standard-essential patents (SEPs) in the telecommunications sector. Several of his cases have been selected as Top Ten IP Cases of the Year by courts such as the Shandong High People’s Court, Jinan Intermediate People’s Court, Guangzhou IP Court, and Jiangmen Intermediate People’s Court. Five of his successful cases have been recognized among the Top Ten IP Cases of the Year by the Guangdong IP Protection Association.
Mr. Tan specializes in patent prosecution, invalidation, and litigation in electrical and mechanical technologies, covering areas such as computer software, internet technology, artificial intelligence, electronic information, circuit design, microelectronics, embedded systems, industrial controllers, and communication protocols, as well as design patents. He has handled more than 50 judicial appraisal cases related to intellectual property and over ten IP enforcement cases during the Canton Fair, offering extensive hands-on experience in IP practice.