ProtectingIntellectual Property (IP) is one of the most important concerns for a foreigninvestor who is going to do business in China. How to make an IP protectionstrategy in China? This article is trying to bring you some IP protectionmessages.
SinceIP rights are territorial, meaning an IP registered overseas only receivesprotection in the place it is registered. In order to protect IP rights, youneed to register or take other measures in China.
Thebasic types of IP rights are Patent, Copyright, Trademark and TradeSecret.
Patent
1. Definition and Legal Requirement
Thereare three types of patents: invention patents, utility model patents, anddesign patents.
Tobe registered as invention patent, it must be novel, inventive and practicallyapplicable.
Theutility model is used to protect physical products, instead of processes orchemical compounds.
Designpatent protects the visual appearance of a product.
2. Protection Term
Theprotection term of invention patent is 20 years, while the protection term ofutility model and design patents is 10 years.
3. Registration Authority
Inventionpatent applications can be filed directly to China National IntellectualProperty Administration (CNIPA) but are most commonly filed through the PatentCooperation Treaty (PCT), the international system that makes it easier to filepatents in multiple territories around the world. Hong Kong and Macau are notPCT members. Therefore, you should file application separately in Hong Kong andMacau for IP protection in these regions.
4. Grace Period
Graceperiod is a limited period in which disclosing an invention or design will notdestroy its novelty if you file a patent or design application soon after.China provides a 6-month grace period for patents and designs disclosed undercertain circumstances, namely (1) disclosed at international exhibitionssponsored or to be recognized by government, (2) disclosed at certainacademic conferences, or (3) disclosed by another person without the consent ofthe applicant.
Trademark
1. Definition and Legal Requirement
Atrademark is a sign that distinguishes your goods or services from others. ThisIP right protects your brand. The Trademark Law defines a trademark as being amark, including any or a combination of text, graphic, letter, number,three-dimensional symbol, combination of colors, sound.
Tobe registered as a trademark, a sign must have distinctive, easily-recognizedfeatures and not conflict with another person's prior and existing legalrights.
2. Protection Term
Trademarksare continuously protected, subject to renewal every ten years.
3. Registration Authority
Applicationsfor trademark registration must be filed to Trademark Office of the StateAdministration for Industry and Commerce (SAIC).
Inaddition to submit a direct application to the Trademark Office, trademark alsocould be applied through a Madrid Protocol international registrationdesignated by China.
Atpresent, Hong Kong and Macau are notmembers of the Madrid system. As such, if you want trade mark protection inthese areas, you need to apply for trade mark registration in these regionsdirectly.
4. First to File
Chinahas a 'first to file' trademark system. This means whoever first applies for atrademark will generally then own the trademark, regardless of who first usedor developed it.
Also,if you have previously filed a trademark application in another country, youmay be able to claim an earlier priority date based on that earlier filing asthe filling date in China.
Forinstance, Australia and China are both members of the Paris Convention, whichallows you to claim an earlier priority date on your international applicationproviding your subsequent trade mark application is filed within six months ofthe date on which the earlier trade mark was first filed. The trade mark mustbe the same trade mark, and only the goods and services in the originalapplication can claim the earlier priority date.
5. Goods and Services Classification
Chinadivides trademarks goods and services into 45 classes and then divides these 45classes into numerous subclasses. A registration in one subclass will usuallynot prevent someone else from registering in a different subclass.
6. Maintaining Trademark Registrations
Ifa Chinese trade mark is not used for three years since registration, a thirdparty can apply for its cancellation or non-use. The trade mark owner then hasto provide evidence of use of the trade mark in China.
7. Certificate of Registration
Acertificate of registration provides evidence of your Chinese trade markregistration. This is often required in order to enforce your trade mark inChina.
Copyright
1. Definition and Legal Requirement
Copyrightprotects literary, dramatic, musical and artistic works, sound recordings,films, television and sound broadcasts. It also protects photographs andimages, software source code, and written materials such user manuals.Copyright provides the owner with exclusive rights to copy, publish, anddeliver material to the public.
2. Protection Term
Copyrightprotection lasts for the life of the author plus 50 years, for copyrights ownedby a natural person and 50 years from first publication, or from creation ifunpublished, for copyrights owned by a legal entity.
3. Optional Copyright Registration
Chinaoperates an optional copyright registration system as many other countries.Copyright does not need to be registered in order to be granted. The creator ofa work is automatically granted copyright protection. The general purpose ofcopyright registration systems is to provide a record of the ownership, dateand content of a copyright work.
4. Registration Authority
TheNational Copyright Administration of China administers the Copyright ProtectionCenter of China. This is the official government body responsible for allcopyright registration.
5. Software Copyright
Chinaoperates a specific software copyright registration system. Like othercopyright registrations, the software copyright registration is optional, andthe main benefit is to facilitate enforcement against any infringement. Theregistration provides evidence of copyright ownership in a manner familiar to Chineseauthorities.
6. Design Copyright
InChina, copyright applies to mass-produced works, as long as they meet thestandard copyright requirement of originality. This can help design ownersenforce their rights in China, particularly if they do not have a design patentin China.
However,securing a Chinese design patent will provide additional protection to thecopyright.
Trade Secret
1. Definition and Legal Requirement
Atrade secret can be any confidential information of value. Unlike other IPrights, trade secrets are protected by keeping them a secret, and are notregistered with IP offices.
2. Protection Term
Theprotection of a trade secret will last until the information is made public.
3. The Protection Measures
China’sAnti-Unfair Competition Law protects commercial secrets (trade secrets), whichare defined as commercial information that is not known to the public, hascommercial value, and for which the owner has taken measures to ensure itsconfidentiality.
Ideally, you could identify any trade secrets you hold and limitphysical and electronic access to the confidential information, put in placeconfidentiality agreements with employees, contractors and commercial partners.Departing employees are the most common source of trade secret leakage. Breachof trade secrets can be enforced in the courts, but it is often more difficultto establish than infringement of registered IP rights.
TheIP protection can be complex, especially in overseas markets, you would betterconsult with expert to form a smart IP protection strategy for your brand,technology and your company.
文/刘奕杉律师
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