CBBC China IPR Guidelines

The China-Britain Business Council (CBBC) China Intellectual Property Rights Guidelines Second Edition 2008, have been produced by a selection of intellectual
property lawyers, companies and individuals with first-hand experience of IPR issues in China.

Please find below the executive summary of the CBBC China IPR Guidelines 2008 edition. The full Guidelines contain detailed information on all the important issues relating to intellectual property rights protection in China, including in-depth coverage of all the points outlined in the executive summary below. Details of how to obtain the full Guidelines can be found at the bottom of the page.

Executive Summary

Identify and clarify what your IP and trade secrets are (Section 1.2/ Section 2). What are you going to transfer? Is it patent, copyright, trade mark, or trade secrets?

Conduct a risk assessment (Section 3.5).  Investigate whether any potentially infringing products are already registered or in existence and the chances of your having to take court action.

Consider what form of vehicle you need in China (Section 4.3).  Research which entrance strategy is best for you: Joint Venture (JV) or Wholly Foreign-Owned Enterprise (WFOE), this decision will have a bearing on choices concerning IP protection.

Carefully consider who your business partners should be (Section 4.1). Getting this right can make or break an operation.  Research thoroughly the options to find the most suitable partner, whether manufacturer, supplier or distributor. Due diligence (Section 3.5/ Section 4.1) is vital. 

Registration (Section 3.2/ Section 4.2/ Section 5.1/ Appendix G)

Make sure that you register all relevant IPR before introducing branded goods or services. 

For patents, trade marks and domain names China follows the ‘first to file’ system.

Failing to register may make it difficult, if not impossible to seek administrative or judicial assistance should problems occur.

Include Chinese varieties of the brand (Appendix E).

Patents (Section 2.1/ Appendix G)

Patents must be registered if you want to have protection. 

Registration must be through an authorised Chinese patent agency appointed by SIPO (State Intellectual Property Office).   It takes about one year to register utility model and design patents.  It takes up to three years to register ‘innovations’.

Registration is possible for multiple countries including China through the Patent Cooperation Treaty (PCT).

Trade marks (Section 2.2/ Section 2.3/ Appendix G)

Trade marks must be registered on your behalf by a Chinese trade mark agency. 

Registration can take up to three years.

Registration is possible for multiple countries including China through the Madrid Agreement.

Copyright (Section 2.4/ Appendix G)

There is a voluntary registration process for copyright.  Registration offers benefits (enforceability) but potential disadvantages (loss of confidentiality).

It takes 30 days to register copyright, through the National Copyright Protection Center.

Safeguarding IPR
Get the contracts right (Section 3.3/ Section 4.4).  Use contracts with partners and employees (Section 4.5), and licence agreements with OEMs (Section 5.1) to protect IP, ownership, use, access of IP and rights in IP. Build in confidentiality and non-disclosure clauses. Have an English contract with a Chinese translation to avoid confusion.

Vet employees, and monitor activities throughout the course of business (Section 4.5)

Carry out regular audits and reviews both of procedures and personnel (Section 3.4/ Section 4.4/ Section 4.8).

Pay particular attention to trade secrets (Section 2.7). Once a secret is leaked to the public or industry, protection is lost, although there is some scope for seeking redress.

Where possible design protection into your technology/ process (Section 4.10).

Create a ‘virtual team’, comprising suppliers, distributors, agents, local sales team, representative office and managers (both in the UK, China and elsewhere) even customers to guard against theft or abuse of IPR (Section 4.6). 

Build up good personal relations with trading partners, commercial counterparts, and relevant authorities at local, provincial and national level (Section 3.4).

Obtaining Redress
For problems with business partners, mediation, settlement and arbitration offer the best options for resolving issues without putting business relationships at risk (Section 4.1).

There are administrative, civil and criminal proceedings’ options (Sections 2.8/ Section 5.2/ Appendix A/ Appendix G). The most appropriate will depend on the extent of the abuse and the remedies sought.

Beware of sending warning notices to infringers, since these are often ignored and merely allow infringers to prepare for possible raid actions (Section 5.1).

Evidence gathering (Section 5.3) may require a Chinese notary to be present. Notarisation and legalisation of evidence from outside of China is essential for civil and criminal actions, but generally not for administrative action.

Documents must be translated into Chinese by court-approved translation companies.

Make sure you carry out detailed investigation of infringers, and all aspects of the business (sale, manufacture, logistics and storage). (Section 2.8/ Section 4.7/ Section 5.3/ Danfoss Case Study/ Trademark Infringement Case Study)
 
It usually takes between 12 months and 18 months to get a judgement in court (and patent cases take longer still). 

Criminal proceedings can cost between £7,000 and £35,000. Administrative raids cost £1,000–£5,000, more if police are involved (Section 5.2/ Appendix G)

Lawyers (Section 5.4)
It is often a legal requirement to hire a Chinese lawyer or qualified agent. International law firms can coordinate activities.

Obtaining the full China-Britain Business Council China Intellectual Property Rights Guidelines Second Edition 2008

The full version of the guidelines is available for free for all UK companies. If you would like to receive an electronic copy, please send the following information to ipr@cbbc.org

Full Company Name:
Full Company Address (Please indicate if this is a branch/head office and include postal town and postcode):
Switchboard and Fax Numbers:
Company Email Address:
Website:
Brief Description of Products or Services:
Approximate Turnover:
Approximate Number of Employees:
Your Name and Job Title:
Your Direct or Mobile Phone Number:
Your Work Email Address:
Are You a CBBC member?
Reason for Requesting the CBBC China IPR Guidelines:

 

 

 

 

 

 

 

 

Your company information will not be made available to third parties, other than our partner organisation UK Trade & Investment (UKTI).