1. 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

2. 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”

3. 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

4. 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

5. 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

6. 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

7. 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

8. 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.

9. 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

10. 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

11. 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

12. 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

13. 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

14. 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

15. 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

16. 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

17. THANK YOU
CRYSTAL GAO