Belgian SME BEA manufactures sensors for automatic doors. Before they were active in China they had the foresight to file for an international patent that included the PRC as a designated state. Christian Nowak, Science & Technology advisor at BEA, shares the company’s experiences with patent infringement, and how enforcement can be successful if you have your documents and protection in place.
BEA (short for Bureau d’Electronique Appliqué) was founded in Belgium in 1965 and currently has five offices worldwide. Christian Nowak says: “We set up a representative office in China in 1996 to analyse the market and to find potential future customers. We were quite sure that the market was appealing for us, [and] the risk of getting copied was not strong enough for us to give up the potential”.
The company then prepared well by including China in the designated states for patent protection, even though they were not active in the country yet. Christian says: “We applied from Belgium for patents in the United States and included China as well. We have design patents, invention patents and a trade mark registered in China. It’s a very simple design patent which helped us during our case in 2002.”
Christian continues to explain the case: “We received two sensors in the after sales service that were not manufactured by BEA. One of our customers noticed that there were copies on the market and could tell us who was behind it.” BEA then sought advice from a Chinese patent attorney and chose to take administrative action via the State Administration for Industry and Commerce (SAIC). “I prepared a file with all details, pictures of the original products and the copies, and all our patent registration certificates”, Christian adds.
They went to the SAIC in the city where the infringement took place and the manager in charge dispatched two officers to raid the premises of the infringing company. Christian says: “After searching for 45 minutes at the warehouse I could find one sample of a fake product. We had the company sign a statement of their wrongdoing after which the case was closed.”
Christian recommends other SMEs to act early: “Because we were quite early on this case it couldn’t spread throughout China. As SMEs are not always aware of IP issues, it is good to have a support service like the Helpdesk to give them all information”.
- Get ahead of potential infringers and register your IP in China, preferably before entering the market.
- Keep your IP registration documents and proof of infringement at hand so you can immediately prove your case if needed.
- Don’t be afraid to enforce your rights, China’s IP legislative system is developed and the authorities can assist you.
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