How can we protect our Intellectual Property Rights (IPR) effectively in China?
Q&A with Sophie: An English Speaking Lawyer in China
One of my clients asked me a question today that I believe is a common concern, so I thought I should blog about it.
The following are are the key points from my response:
1. First of all, register your IPR in China, ASAP.
All IP laws & regulations in China are based on the protection for legitimate registered IPR. From a Chinese perspective, "legitimate" means registered in China! Furthermore, for IP registration, China operates a “first-to-file” system, which means, whoever first applies for IPR will be granted ownership. That means if you want to protect your IP in China, you should register it in China.
2. Sign an NDA or similar contract with your partner.
Whether you want to sell, buy, or manufacture in China, make sure you sign a Non-Disclosure Agreement (NDA) or a contract with NDA clauses with your partners, who are probably your distributors, suppliers or local staff. In the NDA, you may specify that a penalty will be payable once either party breaches it, no matter if any actual damage has be made.
Word of advice, it is vital to find a good partner, worst NDA +best partner is better than best NDA + worst NDA. Due diligence or IP audit is necessary when you choose your partner.
3. Register your IP with China customs.
Though an NDA may work with a partner, it is difficult to monitor all the suppliers in the marketplace. According to Regulations of the People's Republic of China on the Customs Protection of Intellectual Property Rights, you may register your IP with customs (port authority) to stop the infringed upon goods being shipped out of China.
Tip: Don't be afraid to "fight for your right"
Finally, but not less importantly, you may resort to the following procedure to stop infringement:
- civil litigation
- criminal prosecuti
- administrative action.
Different procedure has different effect; you had better consult your local lawyer before you do any of them.