Asia/China IP Introduction For Esquire CLE, Ohio, USA Michael Lin Partner, Marks&Clerk, Hong Kong Thursday, 23 March, 2017

Asia includes: Singapore Philippines South Korea China Malaysia Vietnam Taiwan Japan India Thailand Indonesia Hong Kong Sri Lanka Cambodia Australia New Zealand

Total: ~ 3.9 Billion Asia Population: (2016 estimates) China: 1.37 Billion India: 1.27 Billion (US 324 Million) Indonesia: 258 Million Pakistan: 201 Million Bangladesh: 156 Million Japan: 126 Million Philippines: 102 Million Vietnam: 95 Million Thailand: 68 Million S. Korea: 51 Million Malaysia: 31 Million Taiwan: 23 Million …etc. Total: ~ 3.9 Billion

Agenda Who is this Guy? IP Toolkit Asia IP Introduction Asian IP Suggestions Anti-counterfeiting Tips China

ABC (American Born Chinese) Who is this guy? ABC (American Born Chinese) University of California at Berkeley - Biochemistry Really, really terrible scientist PhD in Genetics Boston University Law School P&G Patent Attorney, Japan (10 y) P&G Patent Attorney, China (3.5 y) Marks&Clerk Hong Kong (6 y) Not a Chinese Patent Attorney!

IP Toolkit © ™, ® 1. Patent / Utility Model (Must be New) 2. Design 3. TMs / Trade Dress (Must be Distinctive) 4. Copyright (Must be Original) 5. Trade Secrets (Must be Secret) Protects: Technical & Functional Inventions Package or Product Appearance Identify Origin Original Artistic Works Secret information Can Cover: Means to achieve a function Packages Implements, devices Formulas Processes Uses, methods Combinations of the above Includes Utility Models Product and Container shapes Product get-up and labeling 3D outer shape Brand names. Logos, colors, sounds, smells…? Product / Container shapes Product get-up and labeling 3D TMs ™, ® Product labels Print, TV, radio, internet copy, pictures Arrangements © Any info. which is not known to the public Technical information Business information Contracts Max. Duration: 20-21 years 10 years (CN) 20 years (JP) 15 years (KR) Unlimited if continuously used Life of Author + 50 or 75 years Unlimited if kept secret

Patents: Utility Models: An advance in the Technical Arts Asian IP Introduction Patents: An advance in the Technical Arts Typically no software patents, business models, etc. Limitations on Pharmaceuticals, drugs, etc. Utility Models: Usually for physical objects only – no methods, formulations, software, etc. Increasingly used by Western Businesses

Trademarks: Copyrights: Trade Secrets: First to file Asian IP Introduction Trademarks: First to file Some common law TMs Internationally v. locally famous TM Squatters Copyrights: Rights automatic upon creation. Trade Secrets: Varies significantly by country

Opportunity areas: Design Patents Asian IP Suggestions Opportunity areas: Design Patents Easy, quick & cheap to file and to enforce Available everywhere Very little translation needed. Patent Prosecution Highway – Japan, Korea, China, Australia, Singapore, etc. Trademarks - File early, file for what you are using.

Utility Models: Utility Models – cheap and quick to file Asian IP Suggestions Utility Models: Utility Models – cheap and quick to file Available: Australia, China, Hong Kong, Indonesia, Japan, Macao, Malaysia, Philippines, South Korea, Taiwan, Thailand, Vietnam Not available: Brunei, India, Pakistan, Singapore, Sri Lanka Either with or without Substantive Exam. Via PCT

Consider Utility Models for… Asian IP Suggestions Consider Utility Models for… easy to copy, low-tech... short market life… low inventive step low manufacturing cost, mass producible important yet low value

Understand Local practices in: Asian IP Suggestions Understand Local practices in: Litigation Discovery Local court practice Invalidity procedures Alternative Dispute Resolution Local expertise/IP attorneys

What are they going to copy? How are you going to make money? Anti-counterfeiting Tips What are they going to copy? How are you going to make money? Supply Chain/Make products difficult to copy: Coca-Cola Model Black Box (Dispersed suppliers, final assembly in-house) Computers with no USB ports Control of Molds Etc.

It is not as bad as you have heard. China It is not as bad as you have heard. It is just as bad as you have heard.

File TMs, Patents, Designs, etc. early China File TMs, Patents, Designs, etc. early Contracts - supplier, contractor, etc. Court vs. Administrative enforcement Makes informed decisions - Don’t assume everything is the same as in the US DUE DILIGENCE!

Michael Lin Email: MLin@marks-clerk.com.hk LinkedIn: https://hk.linkedin.com/pub/michael-lin/3/b33/b37