Intellectual Property Protection in China
Many FIEs in China have graduated from a manufacturing focus to a model where their real business value is now bound up in their intellectual property. Unfortunately, intellectual property rights (IPR) violations continue to pose a problem in the country, including via the infringement of copyrights, trademarks, patents, and designs.
These types of IPR must be registered with the appropriate Chinese agencies and authorities to be enforceable in China. To protect their IPR, most FIEs adopt measures to proactively search the internet for violations, in addition to sending staff to corporate functions and trade fairs. Companies can also apply to Chinese customs to have them monitor their trademarks and contact them if any violation is discovered.
Trademark Registration in China
China has a first-to-file system for trademarks, meaning that the first party to file for the registration of a particular trademark will be granted the rights. However, the 2019 amendments to the Trademark Law stipulates that “Applications for the registration of trademarks in bad faith that are not intended to be used should be rejected”. Companies should register their brands’ English and Chinese names, as well as any marks and/or logos with the Trademark Office. Careful attention should be paid to the product categories and sub-categories selected for filing (separate registration is required for each category under which protection is sought), and to check whether similar trademarks have already been filed.
How to register
Application to register a trademark should be made with the Trademark Office in Beijing, its branch offices in other cities, or through the trademark online registration system. Foreign companies are required to entrust a trademark agency to handle the registration unless they have a local presence in China. A list of trademark agencies can be found at the trademark online registration system.
- Check whether the trademark is already registered and the category of the trademark;
- Submit an application form and other relevant documents to the TMO;
- TMO accepts the application;
- TMO conducts preliminary and substantive examination (within nine to twelve months of the filing date);
- TMO publishes a notification (followed by a three-month period to consider any objections); and
- TMO issues a trademark registration certificate.
- The procedure generally takes about 14 to 18 months. Within three months from the date of publication, any person can file an opposition against the trademark.
A trademark in China is valid for 10 years and renewal of registration must be filed within 12 months before the date of expiration
Law: PRC Trademark Law, 1982; amended in 1993, 2001, 2014, and 2019
Relevant ministry: Trademark Office (TMO) of the National Intellectual Property Administration (CNIPA).
Copyright Protection in China
Strictly speaking, copyrighted works do not require registration for protection. Nonetheless, companies should consider registering their works with the National Copyright Administration, since this provides evidence of ownership that may be needed in the event of legal action. Moreover, China amended its Copyright Law in November 2020, which enhanced the legal protection to copyrights by reforming the damage calculation methods and introducing punitive damages, among others. The new Copyright Law will take effect from June 1, 2021.
Patent registration in China
Law: PRC Patent Law, 1984; amended in 1992, 2000, and 2008
Relevant ministry: CNIPA
Patents are territorial rights, meaning that a patent in another country has no effect in China. Companies should file applications for both their core and fringe technologies and make sure that their patents are properly translated into Chinese. China follows a first-to-file system for patents, which means patents are granted to whoever files first, even if they are not the original inventors. A foreign patent application filed by a person or firm without a commercial office in China must be conducted through an authorized patent agent. Patents are filed with the National Intellectual Property Administration in Beijing or its local agencies in more than 30 cities.
China revised its Patent Law in October 2020, which increased the protection to patents by ensuring law enforcement and increasing the penalties triggered due to IPR infringements. The new Patent Law will take effect from June 1, 2021.
A patent application:
- can be submitted in electronic or written form.
- requires three to five years on average for invention patents, while the duration for utility model and design patents is one year.
Foreign businesses without a regular residence or business site in China are obligated to appoint a patent agency to act as its agent.
A patent granted for inventions is valid for 20 years while the term for utility models or designs is 10 years.
Patent registration procedure for inventions
- File the patent application, submit relevant documents, and pay the filing costs (RMB 900 or US$128);
- CNIPA accepts the application and conducts a preliminary examination (within 18 months from the filing date);
- CNIPA conducts substantive examination (on the applicant’s request); and
- CNIPA registers the designated patent and grants a standard patent for the invention.
Patent registration procedure for utility models or designs
- File the patent application, submit relevant documents, and pay the filing costs (RMB 500 or US$71);
- CNIPA accepts the application and conducts a preliminary examination; and
- CNIPA register the designated patent and grant a standard patent for the utility models or designs.