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Talal Sharaiha
Founder and CEO at Aspisafe Solutions
February 2018
Medical Device IP
< 1 min reading time

Hello my fellow colleagues. I had a question in regards to international Intellectual property filing. From a strategic stand point, would it be worth filing in China? Are patents enforceable over there? I filed in US, Europe 5 and Japan. Any thoughts would be much appreciated.

source: https://www.linkedin.com/groups/78665/78665-6371399799723302913

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Posted by Talal Sharaiha
Asked on February 19, 2018 12:00 am
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Dave Gaisser Talal, if you had asked this 5-10 years ago, I would have said a Chinese patent is irrelevant since there was little attempt at enforcement; technology was simply "borrowed" (copied) with little risk of consequences. More recently, however, China has opened several new courts specialized in handling IP infringement cases and the number of patent cases filed has increased tremendously. Since the courts are taking a more serious look at IP conflicts, it might be beneficial to file for Chinese patent protection to at least give yourself the best opportunity.
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Talal Sharaiha Thanks Dave. That's very helpful.
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Muhammed Hamdan Hello Talal, I agree with Dave. I'm currently going through a patenting process in the US, and China was the very first country that my mentors suggested me to file in after here. In fact, from what I read, it seems like it is a higher protection if you consider filing in China than if you were to do so in Europe, due to the "copying" strategy mentioned previously. Best of luck to you!
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Talal Sharaiha Thanks Muhammed Hamdan. It seems like it maybe worth the money. I’ll have to do more research into this
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China is definitely worth a close look if you have or could have commercial interests there. I agree with Dave's comment that China has taken steps to address the enforcement issues from 5-10 years ago.
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Talal Sharaiha Seems like all fairly new news but I appreciate all the feedback. Maybe worth filing a patent over there
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John McGettrick Talal this is my 30th year as an engineering consultant helping medical and consumer product companies with their plastics problems. As such I deal with a lot more companies than most engineers, what they are telling you is correct to a point. It is better than it was years ago, years ago there was no patent protection. Now they have to worry a bit more but they are smart and will rip off your product in a second if they feel they can make money on it for a few years while you fight them in court the problem is you stop their company from making your product and they send their molds and your IP to their uncles shop and he is up and running and you have to start all over again. I can buy knockoffs of Apple's products all over the internet and if they can't stop it what make you think you have a chance? If there are parts of your product that cannot be easily reverse engineered and you can keep that IP from the Chinese and do final assembly in the USA then you can slow them down a bit.
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No comments on that but I'm seeking venture capital if you're interested in a patent pending highly absorbent urostomy patch. Prevents breakdown of skin surrounding the opening, skin is the 1st line of defense and in the elderly can ultimately be a life saver.
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G M Butcher Talal Sharaiha - This contributor and experienced 'old hand' echos the comments of John McGettrick as up to date information. Also if you are in a device development phase, looking for production rather than sales, also look at the several Taiwanese subs. PM if you can't find any. (the invitation is only for Talal).
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Peter Travers Hello Talal. We are patent pending in 36 countries. When it came time to decide on China we heard much the same information you are getting in this discussion. In the process we sought the opinion of a 25 year veteran at one of the largest medical device companies in the world (80,OOO employees hint). He said that company considered China a major market for expansion. With the improving legal trends and major players getting involved in China we felt it worth the risk and are patent pending there. if you can afford it, I recommend you do the same. We could not see writing off a billion person market, even with problems.
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Yes. At our firm we regularly assist Fortune sized and mid sized companies file in CN now. There has been steady trend in that direction for 15 years.
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Andy Pal I agree with Dave Gaisser, if I roll the clock back 20 years we filed IP in primarily US/Canada/EU/Japan. the rest were irrelevant. One company I was at, we filed patent #4 in Liberia (I think it was Liberia), imagine how anyone cared about that? China was not even a consideration.

Now? With China's goal of global leadership they are taking IP much more seriously as that is part of that mantle.

If it is a significant patent, it is not much more cost to do so, and may well be worth the cost. Plus if your end game includes selling / licensing the patent portfolio, it may work to your benefit in there.

Good luck and I hope it goes well!
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Talal Sharaiha All great advice and it seems trending towards the same conclusion. Thank you all
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Talal Sharaiha Thank you all. Seems like there is a general consensus towards a recent value in filing in China. Since I am dealing with catheters it will hopefully also prevent manufacturing of the same over there, which is also a big concern. For the cost of filing, it seems worth it. I appreciate the value of this medical device group Joe Hage
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Talal - I may be stating the obvious here, but the costs of pursuing patent protection in China must be balanced with your sales intentions there. For example, are your projected sales there worth pursuing protection?

Further, you can stop entry of Chinese goods into the US with a US patent. I believe the same is true in Europe (with respect to a European patent)

I would also suggest timing is an issue. Since you’ve presumably already filed in the US, EU, & Japan time may be limited, or even too late - for filing the same disclosure there.
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Please take patent in canada,australia,japan,Usa,europe,this country is enough for protection
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I believe that China operates a fast-track regulatory clearance for medical devices that are patented in China.
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