Recently, ChangTsi IP Commercial & Corporate Team delivered comprehensive, one-stop legal services for an internationally renowned fashion brand involved in a cross-border patent dispute. Our engagement encompassed negotiations for cross-border intellectual property and commercial dispute resolution, global patent transfers and licensing, technology export, foreign filing license, and additional related services. Collaborating closely with our Patent Team, we successfully filed a PCT international application with extreme urgency, effectively safeguarding the client’s commercial interests and patent rights in China and around the world. This commitment not only underscores Chang Tsi’s robust capability in managing complex cross-border legal matters but also highlights our dedication to providing tailored, comprehensive protection for international brands.

In this case, the technology jointly developed by the client and its Chinese supplier hit a major roadblock when the supplier filed a patent application in China ahead of schedule. The client was intent on safeguarding its proprietary interests while preserving a long-term partnership. ChangTsi IP Commercial & Corporate Team swiftly identified the case’s key issues by focusing on the breach of the non-disclosing agreement. After several rounds of in-depth discussions that provided us with a thorough understanding of the project background and collaboration nuances, our team assisted the client in weighing the pros and cons of various patent rights allocation options and negotiation strategies, ultimately devising a targeted and pragmatic negotiation plan. After ten months of negotiations and strategic deliberations, the team successfully restored the client’s patent rights in China and globally. Additionally, they ensured the stability of the long-term partnership between the client and its manufacturer, resulting in a win-win outcome.

In response to the strict deadline stipulated in the Patent Examination Guidelines 2023 coming into force in early 2024 —which requires any changes to inventors due to errors or omissions to be submitted within one month of receiving the Notice of Acceptance of Patent Application—the team swiftly adjusted the strategy to pursue a patent assignment plan when this window was missed. Based on a thorough understanding of the cooperation background, dispute and negotiation details, and the legal framework of both China and the United States, ChangTsi IP Commercial & Corporate Team worked closely with US partner attorneys to draft patent transfer and licensing agreements. This approach guaranteed a seamless patent transfer process and preserved the enduring partnership with the manufacturer, thus maximally safeguarding the client’s patent and commercial interests.

Subsequently, ChangTsi IP Commercial & Corporate Team, in coordination with our US partner attorneys, developed a comprehensive strategy addressing technology export regulations, foreign filing license, and the PCT international application process, This approach was carefully tailored to align with the client’s international patent deployment plan, the foreign filing license requirements in both China and the United States, and critical milestones such as priority dates. Through meticulous planning, the team successfully guided the client in promptly filing the PCT international application. This achievement not only solidified the client’s global patent portfolio and technological innovation assets, but also positioned them to maximize benefits in cross-border commercial collaborations and effectively navigate the complexities of an ever-changing international market.

Key Points on Patent Risk Prevention and Dispute Response in Cross-Border Cooperation

Strengthen Contract and Confidentiality Management: It is advised to clearly outline the confidentiality obligations and intellectual property ownership arrangements for all parties involved at the beginning of the collaboration. Ensure that the contractual clauses are comprehensive and rigorous. As the partnership advances, regularly reassess and update confidentiality agreements and intellectual property-related clauses to accommodate the evolving needs of the collaboration.

Establish an Intellectual Property Alert and Monitor Mechanism: Periodically monitor patent information and track the dynamics of patent applications in pertinent technological fields. Proactively stay informed about the patent endeavors of partners to provide early alerts about potential risks.

Formulate Flexible Strategies for Complex and Changing Situations: Develop alternative plans for crucial procedural milestones in patent-related matters to ensure that strategies can be quickly adjusted when necessary.

Emphasize Cross-Jurisdictional Communication and Cooperation: In cross-border collaborations, establish efficient communication mechanisms to manage patent issues across various jurisdictions. Maintain close cooperation with legal experts from both Chinese and abroad to ensure compliance and smooth project advancement through comprehensive, professional analysis.