Types of Intellectual Property Protection in China

As patent and trade mark attorneys we are often asked about the benefits and pitfalls of seeking registered protection for intellectual property (IP) in China, where infringement and counterfeiting are perceived to be a serious problem. In this article, we consider options for protecting your intellectual property in China, and related developments which may help UK businesses to protect their IP rights in China. We will shortly publish a second article focusing on options for enforcing intellectual property rights in China.

Why protect IP in China?

China is becoming an increasingly important economic partner to the UK. In particular, exports from the UK to China have doubled since 2009, reaching £1bn per month by July 2014. With IP registration in China, you can have monopolies in this vast and growing market. No matter whether you wish to enter this market yourself or to license your technology or trade marks to others operating there, it is essential to first have your IP registered. Without IP protection in China, this huge and profitable market is at risk of being surrendered to competitors and counterfeiters.

Types of IP protection in China

(i) Patents

There are several different options for protecting inventions in China. These include “invention patents”, “utility models” and “design patents”. Invention patents are similar to UK patents. They are intended to cover significant advances in technical products and processes for a period of 20 years from the earliest filing date. Invention patents protect against the manufacture, use, offer to sell, sale or importation of patented products without authorisation from the patent owner. They also protect against the use of a patented process, or the use, offer to sell, sale or importation of products developed directly through the use of the process, without authorisation from the patent owner. Utility models differ from invention patents in that they protect improvements to the shape and structure of products, but cannot be used to cover processes. Utility models require a lower standard of inventiveness in order to be registered and so may be used to protect minor improvements. Utility models only last for a period of 10 years from the earliest filing date. Utility models provide the same protection against unauthorised activities as invention patents, but may be cheaper to obtain. Although the UK does not currently have a utility model system, it is possible for UK applicants to utilise utility model protection in China. Design patents protect new shapes and/or patterns of products, or the combination of colour with shape and pattern. This can include designs such as graphical user interfaces. Design patents last for 10 years from the earliest filing date Designs patented in China prevent the manufacture, offer to sell, sale or importation of products made to the designs, without authorisation from the patent owner. On 1 July 2014 the UK and Chinese patent offices launched a reciprocal agreement to accelerate the processing of pending patent applications when the application is successful in the other one of the offices. This agreement is part of the ‘Patent Prosecution Highway’, which may allow for the grant of Chinese patents to be accelerated when another patent has been examined to grant. This agreement is intended to make obtaining patent protection in China cheaper and quicker than before for UK businesses.

(ii) Trade Marks

In China, registered trade marks can last indefinitely. They can be used to prevent the use and registration of identical or similar marks, for identical or similar goods or services to those that are registered. There have been recent significant changes in trade mark law in China. China operates a ‘first to file’ system with regard to trade marks. This is different from the UK where earlier use may prevent a trade mark being registered. The new trade mark law in China attempts to address problems with the ‘first to file’ system. The ‘first to file’ system means that some Chinese companies opportunistically register a foreign organisation’s mark in China. This is termed ‘trade mark squatting’. If a squatter registers your trade mark in China prior to you taking such action, you could be at risk of infringing your own trade mark. The new Chinese Trade Mark Law, which came into effect in May 2014, introduced a ’good faith’ principle when filing trade mark applications. This is intended to improve the current situation surrounding trade mark squatting. It is good practice to apply to register a trade mark in China prior to entering the market.

Conclusion

There are a wide range of options available for protecting IP in China, suitable for all size companies and budgets.

Our intellectual property services extend to China and the rest of the world. Therefore, if you have any questions concerning this article, please get in touch with your usual contact at Swindell & Pearson Ltd or Tim Gilbert at [email protected].