5 Things Need to Know Regarding IPR Protection in China

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1. IPR is territorial.

The most important thing people need to be aware of is: trademark and patent registration only provide the IPR owner protection in the jurisdiction where the IPR is granted. It means, for anyone, if they are seeking protection for their IPRs in Mainland of China, they need to register their IPRs in Mainlnad of China.  The fact that they get their IPRs elsewhere (including in Hong Kong, Macao and Taiwan) doesn’t provide them effective protection in Mainland of China.

2. For trademark registration, China adopts first-to-file policy.

For trademark registration, the most important thing is that the first one applying for it will get it.  It doesn’t matter if you actually use it or not, or if you have got it in your home country or any other country, the point is you need to be the first one to apply for it.  

Of course, according to the current trademark law, if the owner of any trademark is found not using the trademark in three years consecutively, anyone could apply to the trademark office in Beijing to cancel it.

3. Register your IPR before it’s too late.

1) Trademark registration.

From paragraph #1 and #2, we now understand that we need to register our IPRs in China and need to do it ASAP.  There are two situations here.  One is for people who is selling products or services into China, or plan to do so in the future.  Whatever the plan is, it’s better to register your trademark soon, if you don’t, and someone saw your brand in some trade show probably will do.  

Another situation is for people who are just buying from China without any plan to sell in China in the future, they still need to register a trademark, as trademark are a mark used not only in selling, but also in manufacturing. If they don’t do it, their suppliers probably will do it. Whatever the situation is, the owners might find themselves “buying” their trademark back-at a pretty much high price than the cost to register it in the beginning.

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2) Patent registration.

The prerequisite for patent registration, is its novelty, meaning the patent need to be something not known by the public.  So, if the patent owner expects to acquire protection over his/her patent, the owner needs to register the patent right after they do it in their home country or any other country, since submitting the patent application means the patent is being open to the public.  For invention/utility patents, the time is no more than 12 months; for design patent, no more than 6 months and the 12/6 months is the priority term for patent application.

For more detailed information regarding patent registration, you may check our previous articles here:

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4. Signing an NDA is still a must.

Needless to say, registering your trademark and patent is very important. But it’s not enough.  There is still something you can’t register, which is as important as the trademark and patents, such as sketch of the product, prototype, technical process, etc. That’s why signing an NDA is very important with your business partner.

It takes time to find a suitable partner and make the deal eventually.  However, it’s too late to wait until the negotiation is finished to sign the NDA. You may wish to consider signing an NDA with the potential business partner before you show them the product so they can’t take your ideas and replicate it. Another thing is to make sure the NDA is enforceable in China, so it’s highly recommended to hire an English-speaking PRC lawyer to prepare the NDA for you.

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5. Our takeaway message.

Last, but not less important: China has set up a comprehensive legal system for IPR protection since its opening-up to the world, and the enforce of the law is not as bad as some people think, especially in first tier cities/developed regions.  It’s time to consider your IPR protection strategy seriously before it’s too late!