Slides from our webinar on protecting intellectual property while conducting business in China. For a full recording of the webinar, please get in touch: https://rroyselaw.com/contact-us/

1. Protecting Intellectual
Property in China
SEPTEMBER 2018

2. Territorial Nature of Intellectual Property
Registration
Registrations of patents, trademarks, and copyrights only provide rights in the country for
which they are registered.
Stopfakes.gov
◦ “Intellectual property rights are private rights. The owner of a patent, trademark, or copyright who finds
it being infringed or illegally copied must commence action to stop it. The U.S. Government cannot do
this for you.”
◦ “The U.S. Government cannot serve as a rights-holder’s attorney. Individuals and businesses should
protect their rights using the services of COMBINED advice from qualified US AND local INTELLECTUAL
PROPERTY counsel.”

3. Benefits of Registering in China
Prevents goods manufactured in China from being seized for infringement.
Provides opportunity to request the removal of infringing listings from Chinese e-commerce
websites.
Protects an entity’s ability to license to Chinese distributors.
Protects an entity’s ability to sell goods in China.
Allows Chinese customs to seize counterfeit goods.
Allows an entity to take legal against Chinese counterfeiters in China.
Protect future expansion.
Provides value.

4. Trademarks
China uses a first-to-file registration process.
◦ Applications may also be filed and registered without evidence of use of the applied-
for trademark.
Broadly register trademarks.
◦ Register in both the United States and China.
◦ English name, Chinese character name, and Chinese pinyin name.
Filing a Trademark.
◦ File in the United States with international trademark registration via Madrid Protocol
◦ China Trademark Office

5. Michael Jordan and Qiaodan Sports
Shanghai court hears lawsuit brought by
Michael Jordan in 2013.
Qiaodan is translated as “Jordan” and has
been used by Qiaodan Sports since 2000.
In 2016 the Supreme People's Court rules that
the Chinese company must stop using the
Chinese characters for “Qiaodan” but the
company may continue to use “Qiaodan” in
Roman Characters.
In 2018, Qiaodan sues Nike for trademark
infringement demanding a public apology and
compensation.

6. Filing a Patent
Patent Cooperation Treaty
◦ PCT route may be preferred since the text of the original PCT specification is accepted as the authentic
text of a national Chinese patent application upon entry into the “national phase.”
Paris Convention
◦ File a patent in the United States and then file a second application in China within 12 months (6
months for design patents) while still claiming the priority fate of the first United States application.
State Intellectual Property Office of the People's Republic of China (SIPO)
◦ A Chinese patent attorney registered with SIPO must prosecute a SIPO patent application.

7. Trade Secrets
Employee Contracts
◦ Staff turnover
Internal Systems to Protect Trade Secrets
Non Disclosure Agreements
◦ The real risk is not exposure of your confidential information to the public, but the appropriation and
misuse of your confidential information to create similar products to compete against you.
Non-Disclosure, Non-Use and Non-Circumvention agreement (NNN)
◦ includes the normal protections of a NDA including non-disclosure and non-use provisions but in
addition to those, also non-circumvention protection.

8. Copyrights
Copyright arises automatically for any work created inside or outside of China, without requiring
registration for protection.
Register copyright works with the Copyright Protection Center of China (CPCC).
◦ Maintaining evidence of copyright ownership (such as registration), provides a public record and can be
useful in copyright disputes.

9. Think Strategically
Conduct due diligence of potential foreign partners.
Strictly limit availability of information at trade shows.
Compartmentalize critical steps in the design and production processes for IP-intensive
products—and the equipment used to manufacture these products—to limit the likelihood that
any one employee has access to all the information needed to copy IP.

10. Additional Steps After Registration
US Customs and Border Protection e-Recordation website for recording registered trademarks
and copyrights. https://iprr.cbp.gov/
IP may be registered with the General Administration of Customs of the People's Republic of
China (GACC).
◦ All types of IP can be registered with GACC, including trademarks, patents and copyrights.

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