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What Chinese applicants look for in their European patent attorneys? Mr. Dajian_WU, YUHONG IP Law Firm September 29,

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Presentation on theme: "What Chinese applicants look for in their European patent attorneys? Mr. Dajian_WU, YUHONG IP Law Firm September 29,"— Presentation transcript:

1 What Chinese applicants look for in their European patent attorneys? Mr. Dajian_WU, YUHONG IP Law Firm September 29, 2014

2 1. Service quality of European IP law firm The service quality of an European IP law firm can be roughly determined by looking into the clients represented by the firm and the outcome obtained, as well as some classic or typical cases represented by the firm. The service quality mainly depends on the granting rate of patent for invention.

3 2. Reputation of European IP law firms in the industry The scale and degree of stability of the agency. The development of the agency since its inception. An agency having long historical standing and enjoying certain reputation in the industry deserves priority.

4 3. Primary technical fields of a law firm Whether there are enough expert engineers in each technical field in European IP law firms. What technical field is of particular importance in each firm. Based on the specific technical field of a case, an IP law firm that specializes in this field should be delegated.

5 4. The workload of European patent attorneys The work quality of patent attorneys will be badly affected if their workload is too heavy. Therefore, it is important to choose patent attorneys with proper workload.

6 5. A relative low turnover of patent attorneys It can take rather a long time from filing of an application to grant of the patent right. Too high a turnover of patent attorneys at an IP law firm might cause too frequent transfer of cases from one attorney to another. As a result, errors and mistakes would easily arise during the prosecution of the case, thus harming rights and interests of the client.

7 6. Reliable procedural management & quality control systems Reliable and effective procedural management and quality control systems can ensure accurate filing and keeping in order of all files. This is especially important today when too many documents are transferred and docketed electronically.

8 7. Avoiding interest conflicts effectively Selecting patent agencies without any conflicts of interests with themselves.

9 8. Reasonable expenses Charges of some reputable IP law firms with great service quality is sometimes beyond the consenting or acceptibility of even big companies or beyond the affordability of some middle and small sized enterprises in China, thus the reasonable cost should also be deliberated. In a word, the most Chinese companies are quite sensitive to the cost although they may make quite a lot of profit a year.

10 9. The technological background and work experience of patent attorneys Practical experience in drafting patent documents. Perceptibility. Professional knowledge and legal awareness.

11 10. Capability of various ways of communications To communicate on any cases, emails, faxes, telephones, videos, instant messaging are often used between attorneys. In this regard, fluent foreign language abilities are certainly essential.

12 11. Prompt responsiveness Prompt responsiveness in communicating with each other on any IP matters are significantly important. Some European IP law firms may spend a little bit longer time to report an Office Action and thus leave a relatively short time for the client to prepare an appropriate response to the Office Action, which might harm the firm’s reputation. Prompt responsiveness therefore deserve considerations.

13 12. The capability of handling other intellectual property affairs Whether or not attorneys or firms have enough experience and capabilities in handling various kinds of after-grant or difficult cases.

14 13. Seeking possible opportunities of mutually beneficial cooperation, case exchanging for example Case exchanging serves a desirable cooperation direction between two patent agencies. Case exchanging situation is an important reference in selecting appropriate European patent agencies.

15 YUHONG IP Law Firm Address : West Wing, Suite 713, One Junefield Plaza, 6 Xuanwumenwai Street, Xicheng District, Beijing 100052, P.R. China Tel.: 86-10-6641 6668 Fax: 86-10-6641 2482 Email: Web:

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