Lucas Mill, an Australian manufacturer based in Beechworth Victoria, has won a patent case in China against a Chinese manufacturer.

Lucas’ flagship product

The product being copied was a portable sawmill, Lucas’ flagship product. The sawmill allows logs to be gradually cut into milled timber on site. This has tremendous savings in not having to transport the whole felled tree to the mill. To date, over 15,000 machines have been sold in over 100 countries around the world.

Freehills Patent Attorneys had assisted Lucas Mill in filing and prosecuting patents on the sawmill in their key markets and also potential manufacturing countries, including China.

How it happened

Lucas maintains a weekly vigil on the internet for copies of its products. Through this process, Lucas discovered a Youtube clip from a Chinese manufacturer offering to sell the product for “ten thousand US dollars with bulk discount”. There were no reports of the products reaching the market, so the product had to be cut off at the source – in China. Moving from the Youtube clip to more solid evidence proved difficult at first, but a crucial step in this was the seizure of one of the Chinese manufacturer’s sawmills by Chinese customs as it was being exported. This provided a springboard to launch the court proceedings.

Outcome

The case was heard in May this year and judgement was handed down last week in Lucas’ favour. Lucas was successful in obtaining damages of RMB 2,000,000 (approx. A$435,000) which is double the usual maximum in this scenario because the evidence convinced the court of the serious infringing behaviour of the Chinese manufacturer. In terms of time, the case took approximately 16 months from detection to decision.

The result demonstrates that enforcing patents in China is possible, and is also within reach of Australian manufacturers where a flagship product or company reputation is at stake.

Take aways

  • Registration of IP in China is a prerequisite to enforcement.
  • Maintain an online vigil to detect infringements.
  • Skilled Chinese representation and good communications channels with them is a must.