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

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

3. 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

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

5. 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!

6. 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

7. 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

8. 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

9. 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.

10. 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

11. 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

12. 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

13. 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.

14. 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.

15. 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!

16. Michael Lin
LinkedIn: