"For Chinese companies active in the U.S. market, participating in patent protection is an important tool to maintain technological advantages and enhance market competitiveness. John Motoli, managing partner of da Vinci Law Firm, said that the United States is the jurisdiction with the lowest per capita cost of patent protection in the world. For offshore enterprises, they can apply for submarine patents in the United States and protect patents and trade secrets at the same time.
According to John Motoli, a submarine patent is a patent that suddenly becomes effective after a company files a patent application and then remains dormant in a non-public state for decades. Before the formation of the market, submarine patents were unknown to the world, and after the formation of the market, patent owners suddenly began to demand licensing fees from users. In this way, enterprises can effectively obtain patent rights and trade secret rights. In addition, the U.S. Patent Act allows applicants to retain the right to file a patent for a period of one year after the invention was first disclosed. If a company has brought an invention to the market but has not yet applied for a patent, it can file an application in the United States within 1 year. This is an advantage that neither China nor Europe has.
John Motoli cites the fact that Flip SA had invented a simple sporting goods product, the Flipper, and filed a U.S. utility patent application that included a key view of the product design, but did not file a non-release request. After repeated applications and negotiations with the U.S. Patent Office, Flip Sa still did not obtain a utility patent. But during this period, Flipper technology spread rapidly, and nearly 500 companies put competing products on Amazon, eBay and Alibaba, resulting in the loss of Flip SA's bottom line. If the company adopts the submarine patent application method, the trade secret can be protected regardless of whether the patent application is successful or not. In addition, even if the submarine patent application in the United States is unsuccessful, Flip SA can file a patent application in Europe or elsewhere in the world without any time limit, as long as the technology is a trade secret.
Before the submarine patent is published, how can the enterprise present the patent to the partner? John Motoli said that companies can apply for a sealed certification filing document and sign a confidentiality agreement with the partner under which the patent content is disclosed, so as to ensure the smooth progress of the cooperation.
After applying for a submarine patent, companies need to keep an eye on the relevant situation. "The company's own development and the development of other competitors in this field need to be constantly monitored to determine when the patent will be disclosed. John Motoli said that if a company wants to disclose a submarine patent and obtain international patent protection, it can notify the country of the applicable patent within 45 days in order to cooperate with the publication of the US patent office.
*: China ** News Author: Mu Qingfeng.