NEW FRONTIERS EDP May 2013 – Nov 2013 David Brophy - FRKelly Protecting IP David Brophy An introduction to Chinese IP law

IP Myths China doesn’t recognise IP “ ”

IP Myths There’s no legal framework in place “ ”

Copyright Law, Amended 2001 Patent Law 2008 Trademark Law 2001

Copyright Law, Amended 2001 Patent Law 2008 Trademark Law 2001 Administrative Measures Safety of Places of Origin of Agricultural Products 2006 Administrative Procedure Law 1989 Administrative Procedure Law PR of China Anti Monopoly Law 2007 Anti-Unfair Competition Law 1993 Civil Procedure Law PR of China Collective/Certification Marks 1994 Collective/Certification Marks 2003

Constitution PR of China Copyright Administrative Punishment Implementation Rules 2009 Copyright Collective Management Regulations 2004 Copyright Law 1990 Copyright Law Implementation 1991 Copyright Law Implementation 2002 Criminal Law PR of China Criminal Procedure Law PR of China Customs Implementation Regulations 2004 Customs Law 2001

Customs Penalty Regulations 2004 Customs Regulations 1995 Customs Regulations 2003 Decision of the Standing Committee of NPC on Amendment of Patent Law 2008 Foreign Trade Law 1994 Foreign Trade Law 2004 Geographical Indication Products Protection 2005 Guidelines for Examination 2006 Implementation Madrid Agreement 2003

Implementing Regulations on Patent Law 2010 Law on Guarding State Secrets 1988 Layout Design IC Implementation 2001 Layout Design IC Regulations 2001 Legislation Law PR of China Measures for Administrative Enforcement of Patent 2001 Measures for the Administration of GI of Agricultural Products 2008 Measures for the Administrative Protection of Internet Copyright 2005

Olympic Logo Regulations 2002 Opinion of the MOFTEC/SIPO on Strengthening Administration of Patents in Foreign Trade 2003 Patent Law 1984 Patent Law 1992 Patent Law 2000 Patent Law Implementation 2001 Patent Law Implementing Regulations 1992 Product Quality Law 2000 Property Rights Law PR of China Protection Measures for Intellectual Property Rights during Exhibitions 2006

Provisions on the Implementation of International Copyright Conventions 1992 Punishment of the Crime of Fake or Substandard Commodities 1993 invalid Regulation on National Defense Patent 2004 Regulation on Radio and Television 1997 Regulations of on Awards for Inventions 1978 Regulations on the Protection of Types of Traditional Chinese Medicine (1993) Science and Technology Progress Law 1993 Software Protection Regulations 2002

Standard for Application Patent Number 2003 Tort Liability Law 2009 TRAB Rules 2002 Trademark Law 1993 Trademark Law Implementation 2002 Trademark Provisions on Claims for Priority 1985 Transitional Measures on Implementation of Amended Patent Law 2009 Unfair Competition Law 1993 Well-known-trademarks Recognition/Protection Law 2003 China’s IP laws are extensive, up-to-date, and harmonised with those in the West (mostly)

IP Myths You can’t enforce IP rights “ ”

IP Myths Foreign companies lose “ ”

More IP cases per year than any other country

More likely to win than Chinese litigants IP owners win >55% Foreign companies as IP litigants

IP Myths

To avoid IP being taken, you first have to own Chinese IP

just ask Proview

who registered their TM nice & early

just ask Proview who registered their TM nice & early and who triumphed when someone used it without permission

just ask Proview who registered their TM nice & early and who triumphed when someone used it without permission “IPAD”

First to register TM owns it

TM “squatting” is common

TM owner can stop goods leaving China

Get in first File for English version And for Mandarin

Chinese Patents Invention patents All inventions Utility patents New apparatus (shape/ structure) Design patents New aesthetic product design

Chinese Patents Invention patents Very similar to Europe Utility patents Design patents

Chinese Patents Invention patents Utility patents Cheap & fast As many exist as invention patents 0.71% from abroad (vs 21% for invention) Design patents

Chinese Patents Invention patents Utility patents Design patents Also cheap & fast As many exist as invention patents 2.6% from abroad (vs 21% for invention)

2011 filings for Chinese patents

Easy to get, hard to invalidate Damages can be high ($45m against Schneider) May need to file earlier than regular patents Placeholder until regular patent grants Utility & Design patents

IP Truths The system is fair – if you know how to use it (foreign companies often don’t)

IP Truths Foreign companies don’t register their TMs early enough

IP Truths TM “owners” can stop goods exiting China

IP Truths The regular “invention” patent system has few surprises

IP Truths Design & utility patents are the secret weapons of Chinese IP

“Respect your own IP before asking us to respect your IP”

Thank you David Brophy