Intellectual Property Protection In China

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					 IP PROTECTION IN CHINA




          Intellectual Property Protection
                                                  In China




        China Desk, International Trade
Australian Business Limited Incorporating the
     State Chamber of Commerce (NSW)




 Australian Business Limited Incorporating the State Chamber of Commerce (NSW), 2007
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IP PROTECTION IN CHINA




                       TABLE OF CONTENTS

1. Definition and Category of Intellectual Property .....................................3

  1.1 Definition of Intellectual Property (IP).................................................3

  1.2 Types of Intellectual Property.............................................................3

2. Intellectual Property in China ..................................................................3

  2.1 Patents Protection in China................................................................4

  2.2 Trademark Protection .........................................................................6

3. IP Enforcement in China .........................................................................7

  3.1 Infringement, Administrative Agency and Penalty Threshold ............7

  3.2 Main Government Agencies’ Responsibilities....................................8

4. IP Protection Techniques ........................................................................9

  4.1 Pro-active Actions...............................................................................9

  4.2 Actions on IP Infringement .................................................................9

Appendix I Patent Application Agencies in China ....................................9

Appendix II Registration Fee ..................................................................12

For patent ..................................................................................................14

For utility model .........................................................................................14



Australian Business Limited Incorporating the State Chamber of Commerce (NSW), 2007
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          1. Definition and Category of Intellectual Property

1.1 Definition of Intellectual Property (IP)

“Intellectual property (IP) represents the property of your mind or intellect. In business terms,

this also means your proprietary knowledge”.
                                                                               — Definition by IP Australia


1.2 Types of Intellectual Property

        Patents

        Trade Marks

        Domain names

        Designs

        Copyright

        Circuit layout rights

        Plant breeder's rights

        Confidentiality/trade secrets.




2. Intellectual Property in China

For the past 5 years, the Chinese government has taken considerable measures to update its

IP laws and improve the enforcement of these laws. Today, the environment of IP protection is

much better. However, IP issues still exist and present significant challenges in China for to the

Chinese judicial system. When entering China an awareness of Intellectual Property Protection,

a familiarity with registration procedures and the necessary protection measures to take, are

vital for your business success in China.




Australian Business Limited Incorporating the State Chamber of Commerce (NSW), 2007
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IP PROTECTION IN CHINA



2.1 Patents Protection in China

The registration of an invention Patent in China can prevent other parties, especially

competitors, from producing similar products within the country - not only for competitive sale in

the Chinese market but also for export to other countries.

2.1.1 China’s patent categories

        Inventions

        Utility models

        Design.


2.1.2 Procedures for patent application in China




                                                 Invention Patent

       An application for an invention filed                Application classified under categories



      Patent application approved by SIPO                           Patent examined by SIPO



                 Patent publication                            Request for substantive examination



         Re-examination and invalidation                            Substantive examination




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                                        Utility Patent & Design Patent

                                 An application for an invention filed to SIPO



                                 Application classified under certain category



                                           Patent examined by SIPO



                                        Application granted or rejected



                                       Re-examination and invalidation




Notes:

1. The first inventor to file a patent registration application will own the patent if it is granted by

the Chinese patent office (the State Intellectual Property Office, SIPO).

2. Applications filed first in another Patent Cooperation Treaty (PCT) member country can be

used as a basis for claiming priority in China, a member of the PCT.                  Consequently, a Chinese

version must be submitted at the same time as priority is being claimed.

3. Foreign applicants are required to submit patent applications in China through a registered

patent agent.


2.1.3 The valid period for patent registration in China

Registered invention patents in China are to be protected for 20 years from the application

filing date with annual maintenance fees to be applied.



Design patents and utility models are to be protected for only ten years from the application

date.




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IP PROTECTION IN CHINA



2.2 Trademark Protection

In Australia, the person who uses the Trade Mark first is entitled to register. Whereas in China,

the person who files the Trade Mark first would obtain Trade Mark rights, which can put the real

owner of the Trade Mark at a disadvantage, especially foreign owners. However, if you rights

are found to have been infringed through official examination, authorities can cancel previous

Trade Mark applications and allow you to register.



Trade Marks should include both English and Chinese versions and logos. You are strongly

advised to have a Chinese version of your Trade Mark when you register.


2.2.1 Trade mark application

A Trade Mark application can be filed in China:

      directly with the China Trade Mark Office (CTMO);

      by extending an existing application or

      by registration to China under the Madrid Protocol.



The Trade Mark application process in China is similar to that in Australia. However, a patent

application must be filed through a registered Chinese Trade Mark agency. In addition, the

applicant must provide a name and address in Chinese.



Once an application is filed and then approved, it will be publicized. Any party may file an

opposition within three months. A registration certificate will be issued if no opposition is filed

within this three-month period.




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IP PROTECTION IN CHINA


                Trade mark application /opposition/examination procedure
                                                   Application



                                             Preliminary examination



                               Application rejected               Application published



                     Application                    Application                       Re-examined
                      withdrawn                      Reviewed

                                                                            Issue of Registration Certificate




2.2.2 The valid period for Trade Mark registration

Chinese Trade Mark registrations are valid for 10 years and can be renewed for successive 10

year periods. Trade Marks registered through the Madrid Protocol are also valid for 10 years.


2.2.3 What if a third party has already registered my Trade Mark in China?

If others have registered your Trade Mark, you can apply to have it cancelled through the filing

of petitions with the Trademark Review and Adjudication Board (TRAB), and submitting

extensive evidence. The cancellation may take 5 to 7 years to be decided.




3. IP Enforcement in China

3.1 Infringement, Administrative Agency and Penalty Threshold

Infringement              Administrative agency                   Penalty Threshold

Trade mark          • Industry and Commerce                       • Producing and/or selling fakes over

infringement        • Local Technology Supervision                RMB50, 000

                    Bureaus                                       • Producing counterfeits of two or more



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                                                                  brands over RMB30, 000 at the same

                                                                  time.

Copyright           • Local Patent Bureaus                        • Value of pirated works up to

and Patent          • Copyright Bureaus                           RMB50,000

Infringement                                                      • Re-selling exceeding RMB100, 000

Domain              • A Chinese court -                           If a .cn domain name is registered for

names                Dispute resolution measures                  more than 2 years, the name will be dealt

                                                                  with by filing a civil action with a Chinese

                                                                  court.




3.2 Main Government Agencies’ Responsibilities
                                                                 Information source: www.ipaustralia.gov.au

      Government Agencies                                          Responsibilities
Provincial and Municipal Patent                 Administrative enforcement of patents under the
Bureaus                                         supervision of the State Intellectual Property Office:
                                                www.sipo.gov.cn
Provincial and Municipal Copyright              Administrative enforcement of copyrights under the
Bureaus                                         supervision of the National Copyright Administration
                                                (NCA)
                                                www.ncac.gov.cn
Provincial and Municipal                        Administrative enforcement of Trade Marks as well as
Administrations for                             unfair competition disputes under the supervision of the
Industry and Commerce                           Trademark Office of the State Administration for
                                                Industry and Commerce.
                                                www.saic.gov.cn
Provincial and Municipal Technology             Administrative enforcement against counterfeits and
Supervision Bureaus                             other product quality violations (including labeling
                                                compliance) under the supervision of the State General
                                                Administration for Quality Supervision, Inspection and
                                                Quarantine (AQSIQ)
                                                www.aqsiq.gov.cn
General Administration of Customs               Administrative enforcement of IP rights at China’s
                                                borders
                                                www.customs.gov.cn
Public Security Bureaus                         IP enforcement at borders
                                                www.mps.gov.cn


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IP PROTECTION IN CHINA


Ministry of Agricultural and Ministry           Plant breeder’s rights
of Forestry Joint                               www.forestry.gov.cn; www.agri.gov.cn




4. IP Protection Techniques

4.1 Pro-active Actions

        Ask professionals about IP protection in China - find an agency if necessary

        Develop IP protection strategies

        Stipulate IP protection in contracts and business plans

        Keep core elements of processes and technologies conducted/developed in house

        Conduct due diligence on potential business partners and put appropriate contractual

        protections in place

        Register all relevant rights in China, including Chinese version

        Monitor the market frequently

        Send strong IP message to business partners from the start.


4.2 Actions on IP Infringement

If there is IP infringement, you may resort to administrative or judicial enforcement as follows:

        Take administrative procedures

              SAIC — trademarks

               SIPO — patents

               NCA — copyright

        Take judicial actions

              Civil action

              Criminal action


Appendix I                Patent Application Agencies in China

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IP PROTECTION IN CHINA


                                                                Information source: http://www.sipo.gov.cn
CHINA TRADEMARK & PATENT                       14,Yuetan Nanjie, Xichengqu, Yuexin Bld, Beijing,
LAW OFFICE CO., LTD                            P.R.China
CHINA SCIENCES PATENT &                        15/F,Bldg.B,Tsinghua Tongfang Hi-Tech Palza, No.1,
TRADEMARK AGENT LTD                            Wangzhuang Rd., Haidian District, Beijing, P.R.CHINA
CCPIT PATENT & TRADEMAKR                       Vantone New World Plaza 8th Floor,2 Fuchengmenwai
LAW OFFICE                                     Street, Beijing ,CHINA
CN-KNOWHOW INTELLECTUAL                        Room 2402 Building 3 Jinqiuzhichun Garden No.6
PROPERTY AGENT LIMITED                         Zhichun Road, Haidian District, Beijing 100088,CHINA
CHINA PATENT AGENT(H.K.)                       22/F,Great Eagle Centre, 23 Harbour Road, Wanchai,
LTD                                            HONG KONG,P.R.China
LUNG TIN INTERNATIONAL
                                               18th Floor, Tower B, Grand Place No.5 Huizhong Road,
INTELLECTUAL PROPERTY
                                               Chaoyang District, Beijing,1P.R.China
AGENT LTD.
SHANGHAI ZHI XIN PATENT                        10/F,Italy Building,446Zhao Jia Bang Road, Shanghai
AGENT LTD.                                     200031 CHINA
SHANGHAI PATENT &
                                               435 Guiping Road, Shanghai,P.R.China
TRADEMARK AGENCY
CHANGSHA ZONEKEY PATENT
                                               135 Bayi Rd. Changsha Hunan, P.R.China
LAW FIRM
GUANGZHOU SINO PATENT                          4th   Floor,No.87,Cangbian  Road,    Guangzhou,
AGENT CO.LTD                                   Guangdong, CHINA
SHANGHAI XIN TIAN PATENT                       R1606,No.59     Fu   Nanchang   Rd.,   Shanghai
AGENT CO.LTD                                   200020,CHINA
SHANGHAI KAIJI
                                               ROOM 1501,188 Nandandong Road Shanghai 200030,
INTELLECTUAL PROPERTY
                                               CHINA
AGENT CO.LTD
ADVANCE CHINA I.P. LAW                         Suite 918-920 9/F,Dong Shan Plaza,No.69 Xianlie
OFFICE                                         Central Road, Guangzhou 510095 P.R.CHINA
                                               1/F,Taiwan Hotel, Hubin East Road,361004 Xiamen
XIAMEN SHINHWA PATENT
                                               Fujian, CHINA
ZHEJIANG HANGZHOU
                                               19F,Kexie Building,No.47,Huancheng North              Road
JINTONG PATENT AGENCY
                                               Hangzhou, Zhejiang Province 310003 CHINA
CO.,LTD
SHENYANG PATENT AGENCY                         24 Sanhao Street, Heping District, Shenyang,
ACADEMIA SINICA                                Liaoning, China
                                               2701       Shuntian Building,No.185,Middle Furong
HUNAN ZHAOHONG                  PATENT
                                               Road,Changsha,Hunan,410011 China
LAW OFFICE

QINGDAO LZ PATENT                              No.1 Zhongshan Road, Qingdao, Shandong Province
TRADEMARK OFFICE LTD                           266001,P.R.CHINA
SHOUCHUANG JUNHE PATENT                        5F,Labour Force Market Building,No.191 Changqing
AGENT CO.,LTD.XIAMEN                           Road,Xiamen ,FujianP.R.CHINA     361012


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IP PROTECTION IN CHINA


JILIN CHANGCHUN NEW                            No.132,Ren Min Street, Changchun City, jilin
CENTURY PATENT CO.LTEL                         Province,130021,P.R.CHINA
                                               1/F,shenzhen    Science    &    technology   Building,
SHENZHEN ZHONGZHI
                                               Shangbu Zhong Road,Shenzhen,Guangdong,518031,
PATENT AGENT CO.,LTD.
                                               CHINA
NINGBO CHANNEL PATENT                          18th,Floor,Sunshine    Mansion,No.65,Jiefang   South
ATTORNEYS OFFICE                               Road,Ningbo City, Zhejiang Province ,P.R.China
WUHAN KAIYUAN PATENT
                                               No.1757-1 Jiefang Road Wuhan, Hubei, CHINA 430016
AGENCY LTD.
NANJING JINGWEI PATENT &                       No.6 Yangtse River Rear Street, Nanjing, Jiangsu ,
TRADEMARK AGENCY CO.,LTD.                      P.R.CHINA
FUZHOU YUANCHUANG
                                               No.34 Southstreet Wuyi Fuzhou Fujian,350009 CHINA
PATENT AGENT LTD.
TIANJIN XUE-YUAN PATENT
                                               Nankai University Weijinlu 94 Tianjin 300071 CHINA
AGENCY LTD.
CHENGDU HONGQIAO PATENT                        Rm.505,3rd Block, Chaoyang Gardon,No.2 Yongfeng
LAW OFFICE                                     Road, Chengdu, Sichuan Province 610041,P.R.CHINA
                                               No.263,Huanghe Street, Xigang District, Dalian
DALIAN EAST PATENT
                                               Liaoning Province, CHINA
BROKERAGE CO.,LTD.

                                               Suite 1108, Wantong Mansion No.394, Meiling Road,
HEFEI HUAXIN PATENT
                                               Hefei,Anhui, 230011 P.R.CHINA
CHONGQING HENGXIN PATENT                       1175 Longhua Road,Longxi Yubei District Chongqing
AGENT CO.,LTD                                  City China




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IP PROTECTION IN CHINA




Appendix II                Registration Fee

Appendix 2.1: Schedule of Fees Payable to SIPO in its capacity as Receiving Office,

International Searching Authority and International Preliminary Examining Authority

under PCT (Currency: Yuan RMB (CNY))

                                                            Information source: http://www.sipo.gov.cn
  Items                                                         Fee                     Notes
  Transmittal fee (PCT Rule 14)                                 500
  International filing fee (PCT Rule 15.2)                      Equivalent in CNY of
                                                                Swiss francs 1400
      Fee per sheet in excess of 30                             Equivalent in CNY of
                                                                Swiss francs 15
     Reductions (under Schedule of Fees, item                   Equivalent in CNY of
  3 ): PCT EASY:                                                Swiss francs 100
  Fee for priority document (PCT Rule 17.1(b))                  150
  Late payment fee (PCT Rule 16bis.2)                           50% of the amount
                                                                of unpaid fees but
                                                                at least equal to the
                                                                transmittal fee, up
                                                                to a maximum of
                                                                50% of the
                                                                international filing
                                                                fee
  Search fee (PCT Rule 16)                                      1500                    Until 31 Dec.
                                                                                        2005
  Search fee (PCT Rule 16)                                      2100                    From 1 Jan. 2006
  Additional search fee (PCT Rule 40.2)                         1500                    Until 31 Dec.
                                                                                        2005
  Additional search fee (PCT Rule 40.2)                         2100                    From 1 Jan. 2006
  Late furnishing fee (PCT Rule 13ter.1(c))                     200                     From 1 Jan. 2006
  Fee for copies of documents cited in the                      2 per page
  international search report (PCT Rule 44.3)
  Protest fee (PCT Rule 40.2(e))                                200
  Preliminary examination fee (PCT Rule 58)                     1500
  Additional preliminary examination fee (PCT                   1500
  Rule 68.3)
  Handling fee (PCT Rule 57.1)                                  Equivalent in CNY of
                                                                Swiss francs 200
  Fee for copies of documents cited in the                      2 per page


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  international preliminary examination report
  (PCT Rule 71.2)
  Fee for copies of documents contained in the                  2 per page
  file of the international application (PCT Rule
  94)
  Protest fee (PCT Rule 68.3(e))                                200




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Appendix 2.2: Schedule of Fees Payable to SIPO in its capacity as Designated (or

Elected) Office under PCT (Currency: Yuan RMB (CNY))

                                                                Information source: http://www.sipo.gov.cn
 For patent                                         Fee          For utility model                       Fee
 Filing fee                                         900          Filing fee                              500
 Application publication fee                        50
 Additional filing fee                                           Additional filing fee
     for each sheet of description in               50               for each sheet of description in    50
 excess of 30 sheets                                             excess of 30 sheets
     for each sheet of description in               100              for each sheet of description in    100
 excess of 300 sheets                                            excess of 300 sheets
     for each claim in excess of 10                 150              for each claim in excess of 10      150
 Fee for priority claims, per priority              80           Fee for priority claims, per priority   80
 Surcharge for late entry into the                  1000         Surcharge for late entry into the       1000
 national phase                                                  national phase
 Handling fee for rectifying errors in              300          Handling fee for rectifying errors      300
 translation in preliminary examination                          in translation in preliminary
 phase                                                           examination phase
 Handling fee for rectifying errors in              1200         Handling fee for rectifying errors      1200
 translation in substantive                                      in translation in substantive
 examination phase                                               examination phase
 Restoration fee for unity of invention             900          Restoration fee for unity of            900
                                                                 invention
 Fee for correcting priority claim                  300          Fee for correcting priority claim       300
 Handling fee for change of                                      Handling fee for change of
 bibliographic data                                              bibliographic data
     for change of applicant, inventor or           200              for change of applicant,            200
 patentee                                                        inventor or patentee
     for change of agency or agent                  50               for change of agency or agent       50
 Fee for requesting restoration of                  1000         Fee for requesting restoration of       1000
 rights                                                          rights
 Examination fee                                    2500
 Fee for requesting extension of time                            Fee for requesting extension of
 limit                                                           time limit
     first time, per month                          300             first time, per month                300
     second time, per month                         2000            second time, per month               2000
 Maintenance fee, per year                          300
 Fee for requesting invalidation                    3000         Fee for requesting invalidation         1500
 Re-examination fee                                 1000         Re-examination fee                      300
 Fee for requesting compulsory                      300          Fee for requesting compulsory           200
 license                                                         license
 Fee for requesting adjudication on                 300          Fee for requesting adjudication on      300

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 exploitation fee of compulsory license                         exploitation fee of compulsory
                                                                license
 Registration , printing and stamp fee              255         Registration fee, printing fee and   205
                                                                stamp fee

 Annual fee                                                     Annual fee
   for the 1st to the 3rd year                      900           for the 1st to the 3rd year        600
   for the 4th to the 6th year                      1200          for the 4th to the 5th year        900
   for the 7th to the 9th year                      2000          for the 6th to the 8th year        1200
   for the 10th to the 12th year                    4000          for the 9th to the 10th year       2000
   for the 13th to the 15th year                    6000
   for the 16th to the 20th year                    8000




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