Helping your practice succeed in the face of intellectual property practice globalization

Globalization is driving several trends in intellectual property (IP) practice. International patent filings are soaring to record heights, and patent litigation brought by U.S. patent owners against infringers in foreign jurisdictions is also increasing. With global clients and a growing number of companies commercializing internationally, legal professionals must stay abreast of developments overseas and become more attuned to changes in foreign markets and law.

In your role as an information professional, you stand to benefit by staying on top of the latest developments and sharing timely, authoritative sources with IP practitioners.

First, let’s take a deeper look at a few emerging issues and themes in the international IP landscape. Further below, you’ll see research recommendations.

Emerging issues

2017 marked the eighth consecutive year of growth for international filings of patents, trademarks and industrial designs. The increases of the past year were driven in large part by filings by Chinese companies, moving China into second place after the United States as the largest source of international patent applications filed via the World Intellectual Property Organization (WIPO). China, Japan and the Republic of Korea are three of the five biggest users of WIPO’s filing system, generating nearly half of all international patent applications and reflecting a shift toward East Asia as a global center of innovation.

Direct patent filings with foreign patent authorities, as documented in WIPO statistics and reported by legal news sources like Law360® news, further illustrate the growing importance of filing abroad and the rising position of China as a patent hub.

• In 2016, a total of 3.1 million patent applications were filed globally with 1.3 million applications in China. This is the highest number of applications ever filed in a single year with any patent authority and is greater than the number of filings in the United States, Japan, South Korea and Europe combined.
• Approximately 10 percent of filings in China in 2016 were by non-residents, with 35,895 filings originating from the U.S., representing more than a quarter of non-resident filings.
• U.S. applicants filed more applications abroad than applicants from any other country with 215,918 foreign applications worldwide. U.S. residents are filing around 75 percent as many applications abroad as they do in the U.S.
• The USPTO received 605,571 applications in 2016: 295,327 from residents and 310,244 from non-residents.

The high number of filings abroad reflects the significance of international markets and the desire of patent owners to commercialize broadly. 

Filings also mirror changing dynamics of legal protection for intellectual property within a jurisdiction. While China has significantly strengthened its patent system, the United States has been seen as decreasing the value of its patent rights. China’s IP regime has evolved rapidly since passing its first IP laws in the early 1980s. The country has invested heavily in IP infrastructure in recent years, creating specialized IP courts and bolstering IP enforcement. Revised patent regulations and guidelines have also streamlined examination processes and allowed for more software and business method patents. Meanwhile, in the U.S., court precedents have chipped away at patentability, and proceedings at the Patent Trial and Appeal Board have invalidated patents at a high rate.

As the costs and benefits of pursuing infringement actions abroad have shifted, companies are now taking a more global view toward patent enforcement, increasingly going after infringers in foreign jurisdictions. Patent litigation in China is faster and less expensive than in most other countries, and injunctions prohibiting the export of goods made in the country are automatically granted in most cases upon a finding of infringement.

Data shows that foreign plaintiffs fare surprisingly well in Chinese courts, winning more frequently and receiving higher damages awards than Chinese counterparts, ameliorating concerns of bias in favor of local business owners. Suits in China by high-profile U.S.-based and other foreign companies such as New Balance, Qualcomm, WiLan and Samsung exemplify the trend toward foreign actions and global enforcement of patent rights.

While China has become an “IP Superpower,” the country has long been criticized for certain IP policies and is a frequent subject of investigation by the U.S. Trade Representative under Section 301 of the Trade Act of 1974. The latest probe has focused on the country’s technology transfer practices and uncovering cases in which U.S. companies were forced to transfer technology to Chinese entities as a price for entering the market. The result of the investigation will be sanctions to the tune of at least $50 billion via the imposition of annual tariffs and other penalties.

Below are some ways to keep track of these trends and stay ahead of breaking news in this area. Additionally, you will find ways to learn more about international and foreign IP laws and connect attorneys with these increasingly needed resources as the world of IP law continues to globalize.

Search the Lexis Advance® service for breaking coverage

  •  Enter terms in the Red Search Box on the Lexis Advance home page to search across our comprehensive news collection from 26,000+ sources, as well as superior IP news sources such as Law360 and ALM® publications

  •  For example, search china /p “intellectual property” or patent and then use filters on the left to surface the most current, relevant results

To access news sources, select news or legal news from the filters in the left-hand pane.

To sort or filter to the most recent materials, use the “Sort by” pull-down menu on the right to select “Date (newest to oldest)” …

… or filter using the Timeline feature in the left-hand pane.

Timeline post search filter:

You may also view the list of source publications and filter to a particular source such as Law360 using filters in the left-hand pane.

Easily find international materials

To explore the LexisNexis® collection of international materials, including cases, statutes & legislation, secondary materials, news, legal news and company & financial, go to the Explore Content pod on the Lexis Advance home page and select the International tab, and then click a country link.

You can also access international IP sources. The rich LexisNexis collection of treatise materials includes secondary sources such as Baxter World Patent Law, World Trademark Law and Practice and Getting the Deal Through publications, accessible via our Practice Centers for Patent, Trademark and Copyright. From the Lexis Advance home page, just click the Browse pull-down menu toward the top left and select Practice Centers > By Practice Area or Industry. Then select Copyright, Patent or Trademark.

From one of the Practice Centers, you can access treatises from the Top Sources pod and expand secondary materials to see international sources.

International secondary patent sources:

International secondary trademark sources:

International secondary copyright sources:

See filings and graphical analysis from around the world

Finally, to access patent filings from around the world, you can go to LexisNexis TotalPatent One® via the Patent Registrations pod on the Patent Practice Center. TotalPatent One® has the world’s largest collection of patent publications sourced from 107 patent authorities. Lexis Advance users who have access to patent content can view publications from five patent authorities (U.S., UK, EU, WIPO and Japan) without a TotalPatent One subscription.

Tips:

• TotalPatent One® uses an asterisk (*) wildcard.
• To bring up all patent publications in the collection, simply enter an asterisk in the search box and click the show results button. The platform returns more than 119 million results in under a second.
• Once on your results page, you can click the show filters button to access graphical filters, including the top 10 patent authorities, top 10 standardized assignees and top 10 inventors, among other informative statistics—reflecting IP practice globalization trends.

Click the graphical filters icon to expand filters.

Find out more
For more details on LexisNexis resources for IP practitioners, please contact your LexisNexis account representative.

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