China IPR SME Helpdesk Protecting your IPR in China & How the Helpdesk can Assist you. Beijing, 28 April 2014 Valentina Salmoiraghi, IP Expert

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1 China IPR SME Helpdesk Protecting your IPR in China & How the Helpdesk can Assist you Beijing, 28 April 2014 Valentina Salmoiraghi, IP Expert

2 1) The China IPR SME Helpdesk s Services 2) Protecting your IPR in China

3 1) The China IPR SME Helpdesk s Services

4 The China IPR SME Helpdesk Information and services free of charge for SMEs Raising awareness and preparing SMEs for IPR issues in China: know before you go Business-focused and practical first-line advice Delivering IPR business tools and self-help solutions (guides, E-learning) Enabling SMEs to make informed IPR decisions (protection, enforcement, IP management)

5 Snapshot: Helpdesk Services Enquiry Helpline Training Workshops & Live Webinars Website & Blog E-learning & Business Tools IP Guides & Newsletters 5

6 IPR Guides and Newsletters Guides and training materials addressing China IPR issues: Both IP Specific incl. patents, trademarks, copyrights and Industry specific incl. creative, textiles, medical devices, automotive Business focus incl. IP as a business asset, how to find the right lawyer New series of practical How to guides IPR Updates and developments Newsletters, articles, content provision

7 Training workshops and webinars Workshops across Europe and in China Addressing general IPR and industry specific IPR matters Tailored to the needs of SME audience Outreach to regions: non capital cities, SMEs clusters Conducted in local language where possible Organised in partnership with SME intermediaries Webinars: convenient to join from own office or home

8 Website and Blog Multi-lingual comprehensive information hub Easy access for all EU SMEs to all Helpdesk services and materials including: Helpline Helpdesk guides E-learning modules Event information Helpdesk blog Your IP Insider

9 Enquiry Helpline Available for EU SMEs and SME intermediaries First-line advice on China IPR matters Confidential Delivered by China IPR specialists Accessible via , telephone, face-to-face IPR one on one consultations

10 Typical Enquiries How do we register our patent in China? I have a trade mark registered in Europe. Is it valid in China? What actions can be taken in case of copyright infringement? How long does it take to resolve a trade mark dispute case? How much does it cost?

11 Some of our partners:

12 Online Portal Download / view for free: Practical IPR guides E-learning modules Case study catalogue FAQs Latest blog posts Helpdesk videos Social Media: Stay Connected Fan page: 'China IPR Youtube / Tudou channel: IPRChina 12

13 2) Protecting your IPR in China

14 China s current IPR legal framework: Basic legal framework: Copyright Invention Patent Utility Model Design Patent Trade mark IP Laws: Trademark Law Patent Law Copyright Law Unfair Competition Law (trade secrets) China nowadays has a comprehensive system of IP related laws, that generally match international standards

15 China IP Acquisition of rights First-to-file Territorial Enforcement of rights administrative civil criminal NB: protect your business by filing your IP as soon as you plan to enter the Chinese market!

16 IP Action Plan for China Implement proper protection and overall strategy in advance and use all available resources Timely register relevant and core IP in China Select the right partners and sign with them contracts including specific IP clauses (e.g. distribution agreements, import/export, Non-disclosure Agreements ) Always be proactive and monitor the market Plan budget for the enforcement of your core IP

17 What IP is involved in the F&B and cosmetic industries? Marketing branding creates Trade Marks Specific packaging of the products create Designs Content, documents, website create Copyrights Confidential recipes, know-how, systems create Trade Secrets Special technologies may create Patents Products with certain qualities are protected by Geographical Indications or Collective Trade Marks Procedures and machineries to process food may involve Patents, Know-how, Technology Transfer

18 Acquisition of Rights Trademark Office (CTMO) Domestic filing at the China Trademark Office o 12 months examination/ 9 months after May 1 st 2014 o Pre-approved + 3 months for oppositions o Protection from date of final decision(expiration of the 3 months) International extension (WIPO) o Based on a foreign national registration o If no objection from CTMO (one year): registered

19 Trade marks Distinctive sign to identify certain goods (or services) to prevent confusion regarding the origin of products and the dilution of its distinctive quality Formal approach, no registration gives in general no protection. Foreign applicants need a trade mark agent. International or national application; broader specifications versus Chinese certificate. Term: 10 years, renewable. Duration of application procedure: about 1 year. Enforcement through courts or AIC (Administration of Industry and Commerce) way depends on the specific case and claims. Don t forget: Foreign Trade marks and Trade marks in Chinese language are basically different things!

20 Geographical Indications (GIs) 3 different definitions of GI provided in China s legislations: 1) Geographical Indications in the Trademark Law 2) GI products in the Provisions on the Protection of Geographical Indication Products and 3) GIs of agricultural products in the Measures for the Administration of Geographical Indications of Agricultural Products. Focus on GIs protection under the Trademark Law as Collective Marks or Certification Marks Collective Marks: registered by a group of registrants belonging to a specific consortium of producers Certification Marks: identify goods as originating in a region, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin, it is qualified to be registered as certification mark and to certify the origin and a given quality or other characteristic of the goods

21 Acquisition of Rights State Intellectual Property Office (SIPO) Patent o new technical solution relating to a product process or improvement: novelty inventiveness practical applicability o national route / PCT o substantial examination of the technology, 2 to 3 years Design o no substantial examination, less than 1 year o New designs of a product s shape, pattern, colour or combination thereof (not only the colour). External features and not the result of a technical component, it needs to have an industrial application. Novel and inventive.

22 Invention patents, (utility models) and design patents All under the Chinese Patent Law Absolute novelty standard for inventions Foreign applicants need a patent agent Foreign applications: Paris Convention 12/6 months, or Patent Cooperation Treaty (PCT) - (30 months priority term) Terms: 20/10 years, subject to annuity fees Duration of application procedure: 3-5/1 years Enforcement through courts or IPO (Intellectual Property Office) way depends on the specific case and claims Be careful with Chinese translations of the Patent applications!

23 Acquisition of Rights Copyright Automatic right no formal requirement of registration however registration is strongly recommended for enforcement in China Voluntary registration with the Copyright Protection Centre, Local Copyright Bureau o 30 days registration o cost-effective

24 Trade Secrets Technology or know-how that cannot be patented can be protected by keeping it secret Definition: technical information not known to public; with economic value; kept secret by the owner In certain situations a Trade Secret is even preferable to a Patent: the know-how can be more valuable when kept secret Protection under Unfair competition for Trade Secrets

25 Enforcement Principal characteristic: double track system Public enforcement (administrative) o before specialized administrations o fast, cheap, reasonably efficient o confiscation, destruction, fine but no damages compensation Private enforcement o before the People s Courts o advisable for more difficult cases o time consuming and more expensive o compensation awarded

26 Special administrative ways to protect your IP: Recordal of IPR with the Chinese customs (GAC) Recordal with Quality & Technical Supervision Bureau (QTSB) Record a claim with the Fair Trade Bureau No special rights granted, but advantages when enforcing

27 Tips to protect IP in China for all businesses Register your IP in China Due diligence Monitor the market Clean up Internet sites Attend trade fairs Stop shipment at borders Do raids! Don t fear the Chinese Courts Work together!

28 Feedback Questions Discussion For more information about our services and how the China IPR SME Helpdesk can add value to your organisation, please contact us: Fan page: China IPR SME 'China IPR' Telephone: +86 (10) Online: Blog:

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