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Oct 31, 2011

Misconceptions about China: IP Protection Strategies Work in China

My mother thinks that people in China still ride around on bicycles wearing those green army suits and green hats with the red star in the middle.  While there are still a lot of bicycles, especially in Beijing and Shanghai – where they are proud to wear their silk pajamas while riding their bicycles and smoking at the same time – there are not many people wearing those green outfits. 

In fact, to most people in the U.S., China would be unrecognizable from what they remember in the news clips from the last few decades.  There are many misconceptions about China and we are here to clear up a big one.

I have had several clients recently tell me that their lawyer from _______ (insert the country here cause they are all the same) told them that there “wasn’t any need to file a trademark or patent application in China because China doesn’t recognize intellectual property rights anyway and people still ride around on bicycles wearing those green army suits and hats” (I added that part).  This is a big misconception that could potentially cost someone a lot of money.

First of all, China has something called the State Intellectual Property  Office of the Peoples Republic of China “SIPO”.  They even have a website if you want to pay them a visit:  SIPO and if you can read Chinese you would understand what they are writing.  If you can’t read Chinese, they have an English version at: SIPO English Site.  From the website you can see they are legitimate, SIPO is similar to the US Patent and Trademark Office (USPTO), and takes Intellectual Property filing and enforcement very seriously.

Secondly, as more Chinese companies file for IP protection in China and in the West, and they have an expectation of enforcement and a rule of law, those same principles will extend to foreign companies and individuals who apply for IP protection in China.  I have personally watched IP filing and protection improve dramatically in the past decade and most of the problems in enforcing intellectual property rights arise when foreign companies have not filed in China.

Thirdly,  China does not recognize US and other patents in the same way as other countries.  China recognizes Chinese patents filed with the SIPO and China is a first to file jurisdiction.  This means the first person to file usually gets the IP rights.  I say usually because there are circumstances where internationally recognized brands have spent a lot of money to enforce their trademark rights from people who have filed first in China or similarly they have spent a lot of money to buy the rights from those same clever individuals who filed first.

Finally, filing Trademark and Patent applications in China is relatively straight forward and not prohibitively expensive.  In fact, the costs compare with those in the U.S. and are lower than in the E.U.  When filed and approved by the SIPO you then have Intellectual Property rights and an asset in the IP that you didn’t have in China prior to filing.  The certificate then allows you to use expanding legal channels to enforce your IP.

So, why wouldn’t you file!!!!  Because your lawyer, who has never been to China, told you it wouldn’t make a difference? While we don’t make a bunch of money on helping clients file Trademarks and Patents in China, it is a service we offer because we simply wouldn’t be doing everything we can to help our clients navigate the business jungle in China – if we didn’t.

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SeanHayes@ipglegal.com