China-Britain Business Council - Industry Initiatives

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News bulletins
China IPR Guidelines
Executive Summary
Obtaining the full CBBC Intellectual Property Rights Guidelines

Chongqing British Consul General Nick Whittingham's Speech on World Intellectual Day, 26th, April, 2009

Chongqing British Consul General Nick Whittingham made a speech on World Intellectual Property Day at Chongqing City Hall in unison with the Chongqing Municipal Government's announcement that they will from now robustly enforce IPR laws and to develop an innovative IPR Proctection System within five years.

Click here to read Nick Whittingham's speech.

Chinese Government Guaranteed to Protect International IPR , 26th, April, 2009

Sunday 26th April 2009 is World IP Day. In China, the Chongqing Municipal Government backed by Noble House, is taking the opportunity to announce that it will robustly protect international IPR right throughout China for those companies which decide to locate in the city.This enactment contains three main targets of improving IPR Protection System in China.

In addition, an IPR conference will be held annually in Chongqing from October emphasising the importance that China is attaching to providing protection for international companies that wish to trade with it.

Click here to learn more about the announcement and the conference.

CBBC's 2009 Spring Engineering Newsletter, 28th, April, 2009

CBBC's 2009 Spring Engineering Newsletter has several informative and interesting contributions on IPR Section in China. Steven McIlroy of Murgitroyd & Company has produced a short review, 'IP Balance Shifts East', regarding the current IPR situation in China and the opportunities for UK companies. For detailed information about the article, please click here.

For CBBC's 2009 Engineering Newsletter, please click here.

EU-CHINA Project on the Protection of Intellectual Property Rights (IPR2), 1st, May, 2009

IPR2 undertook 5 areas of activity in high-level fora, training programmes, study visits, expert exchanges, workshops and stakeholder briefings - covering IP strategy, IP protection at trade fairs, unfair competition, design registration and patent enforcement.

Click here to learn more about IPR2.

CBBC CHINA IPR GUIDLINES

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):

Company Ownership: (UK Owned, Non UK owned or Non UK owned bringing prosperity to the UK market?)

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).