IP PROTECTION IN HONG KONG AND MAINLAND CHINA CHINA PATENT & TRADEMARK AGENT (U.S.A.) Ltd. (A subsidiary of China Patent Agent (HK) Ltd. ) April 25, 2017 Crystal Gao

Overview HONG KONG MAINLAND CHINA Populations About 8 millions, but visitors about 10s millions each year, majority from mainland China Over 1.4 billions Law Common Law Civil law IP protection Very sophisticated Gradually sophisticated Market Features A main gateway to mainland China. Plays important part in “The belt and road initiatives” A huge market behind HK; a great support to HK The center of “The belt and road initiatives”

WHY HONG KONG FIRST Robust IP Protection Sound legal framework Sound financial regime Good IP support service One of the most honest, upright and incorruptible governments

WHY HONG KONG FIRST (continued) One of the most advanced and important financial centers of SE Asia Very friendly business environment, low tax HK government is one of the richest governments in the world HK Functions as a control group for all new products entering Chinese market

China - a market cannot be missed A very stable political and economic development environment Strong economic growth rate: used to be more than 10%, now still 7% Biggest IP market worldwide Gradually sophisticated legal system and legal protection Government’s great effort in stopping corruptions. Results are significant Great investment opportunity especially in environment protection

WHY IP Trade-secret protects know-how which won’t be released to or known through reverse engineering by other people but needs to take a great effort to keep it secret patent protects new technology or design needs to be disclosed to the public and to have an exclusive right to its owner Trademark registration can protect the image of the products/services of the manufacturers Copyright and software protection: works or software created by the enterprise but unable or hard to be protected by the above measures

Why IP in HK and China simultaneously Two different legal systems, independent legal protection Two of the most important economic areas in the world Great civilian business activities. Any business launches in one area will affect the other immediately

Patent Protections HONG KONG CHINA Patent types Regular patent, short term patent (4 years) and design patents Inventions, utility models and design patents Filing Direct filing for short term patent and design patents only. Regular patent - extension request to HK by recordation of the Chinese, European or British filing after the publication. Register the corresponding patent after it granted. Direct filing, convention filing: 12 months from a priority filing PCT national phase: 30 months + 2 months grace period Disclosure period No disclosure available. Patent published after it is registered or granted. 18 months from the filing or priority date. Early publication is available upon request.

Patent Protections (continued) HONG KONG CHINA Substantive Examination Regular patent applications: No Short term: Formality examination and conducting brief search by one of the major Patent Offices like SIPO, USPTO Inventions: yes Utility models: no Design patents: no Protection Period Inventions: same term as the mother patent Short term patent: 4 years, and can be extended 4 more years Design patents filed locally: 5 years and can be extended 4 times Inventions: 20 years Utility models: 10 years Design patents: 10 years

Patent Protections (continued) HONG KONG CHINA Enforcement Two-ways of enforcement: Criminal：Custom Office Civil: Court Two ways of enforcement: 1. Judicial track: IP court 2. Administrative track: Patent administrative office Enforcement result Very effective Party loses case bear all the expense and liable to pay for compensation Gradually effective Claiming compensation is possible Filing statistics 2016: 14,092 (regular) 762 (short term) 2016: 3,464,824 (more than North America + Japan + Europe) Approval rate 2016: 5,698 (regular) 485 (short term) 2016: 1,753,763

Trademark Protections HONG KONG CHINA Protection basis first-to-file and first-to-use First-to-file Filing recommendation Strongly yes, heavy burden of proving use for enforcement based on use only Strongly yes. Protection mostly based on registrations Choose a mark English marks mostly fine, but according Chinese mark is recommended English marks are fine, but according Chinese mark is strongly recommended Specification of goods/services Flexible, can discuss with the examiner to determine the terms Very strict. Mostly need to strictly follow the specifications provided by Nice Agreement

Trademark Protections (continued) HONG KONG CHINA Office action period 6 months Can be extended 3 months and multiple 3 months subject to the discretion of the examiner 30 days, no extension available Appeal Period After office actions, if the TM Registry still maintain the rejection decision, applicant may request hearing. After hearing, can further appeal to the court. Period: 28 days from the receipt of the decision 15 days only, to Trademark Review and Adjudication Board. No extension available (if a brief appeal is filed within the 15-days period, further 3-month is available for submitting supporting arguments and documents) Publication for opposition 3 months

Trademark Protections (continued) HONG KONG CHINA Cancellations 5 years period from registration 3 years period from registration Opposition and Cancellations grounds Prior use and prior registration Unfair competition Common terminology used in a specific field of business Prior registration Having business relationship with the opponent Some prior use The mark being challenged is a famous mark Enforcement Custom Office Two-ways of enforcement: County-Level Offices of the State Of Administrative for Industry and Commerce IP court

Trademark Protections (continued) HONG KONG CHINA License Agreement By agreement. Recordation with the TM Registry is not mandatory but recommended By agreement. But the license must be recorded with CTMO Use of the mark Not required for renewal. But could be canceled upon the requests from anyone raises cancellation on the grounds of non-use for 3 consecutive years if use evidence cannot be provided

Trademark Protections (continued) HONG KONG CHINA Recordation with Custom Office Not necessary to record with the Custom Office. But Custom Office will check the records of the TM registrations and will take actions initially Strongly recommended Very effective Custom Offices of all ports can take action to stop import/export initially 2016 Filing Statistics Application: 36,181 Approved: 35,504 Application: 3,526,827 Approved: 2,119,032

Copyright & Trade-Secret HONG KONG CHINA Copyright No recordation available. When infringement happens, claimant can file claims to Custom Office for criminal proceeding or to court for civil proceeding Not necessary to record with the Copyright Office . But recordation is highly recommended because enforcement needs recordation. Trade-secret Protection mostly from signed contract Contract Law protection Article 10 of Anti-unfair competition Law

THANK YOU CRYSTAL GAO