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What Chinese applicants look for
in their European patent
attorneys?Mr. Dajian_WU, YUHONG IP Law Firm
September 29, 2014
http://www.acpaa.cn [email protected]
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.
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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.
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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.
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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.
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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.
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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.
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7. Avoiding interest conflicts effectively
Selecting patent agencies without any conflicts
of interests with themselves.
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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.
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9. The technological background and work
experience of patent attorneys
Practical experience in drafting patent
documents.
Perceptibility.
Professional knowledge and legal awareness.
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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.
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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.
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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.
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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.
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• 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: [email protected]
• Web: www.yuhongip.com