We have many years of patent and design practice experience in Hong Kong providing freedom-to-operate clearance searches and opinions on behalf of large well-known international companies as well as Hong Kong based manufacturing companies. Such opinions are based upon the principles of Hong Kong patent practice and requires consideration of extra-territorial aspects as well as issues of transitory and contributory infringement.
China has three distinct patent and design properties, these being “Invention Patents”, “Utility Model Patents” and “Design Patents”, each having particular requirements and scope of available protection. Our patent attorneys Dr Timothy Letters and Mr Laurence Thoo have each prosecuted hundreds of Chinese patent and design applications in respect of a wide variety of technologies pertaining to specialised electronics and engineering, as well as biotechnology and pharmaceuticals.
Our patent attorneys draw upon their familiarity and substantial experience in the practical aspects and nuances of Chinese law and practice in conducting and managing freedom-to-operate type searches and opinions in China (PRC) in relation to a wide array of technologies.
International companies face much uncertainty in assessing freedom-to-operate in relation to commercial activities, particularly involving complex non-traditional pharmaceutical and agrochemical technologies, in South-East Asian countries such as Vietnam, Philippines, Thailand and Indonesia.
Navigating a multi-jurisdictional pre-commercialisation patent clearance review across South-East Asian countries is a daunting task for those not familiar with uncertainties in local patent practice, law, rules of interpretation, judicial experience and political considerations.
Our patent attorneys have substantial experience in this area, and in consultation with their network of South-East Asian associate firms, are able to provide clear and practical guidance in relation to freedom-to-operate issues covering the following matters:
- Likely claim scope to be afforded by Patent Offices in such jurisdictions and patentable subject matter and scope thereof, in the absence of well-established local patent examining divisions
- Principles of infringement in the absence of codified provisions and judicial guidance
- Absence of codified provisions for contributory infringement, inducement, incidental non-intent, extra-territorial considerations
- Proprietor liability for inadvertent third party infringement by non-compliance with manufacturer instructions and specifications
- Complex aspects of patent law and practice pertaining to agrochemicals and pharmaceuticals, such as transient and dynamic chemical activity including metabolism, metabolites, intermediate usage and residuals thereof, off-shore/on-shore manufacture, polymorph protection and usage
For assistance in performing pre-commercialisation regional patent clearance in Hong Kong, China, South East Asia, or internationally, please contact us.