Utilities Membranes China

IP protection in China: Positive developments and practical tips

Tuesday, 14 May 2024

Many water tech companies keen to explore the Chinese market will have preconceptions about certain aspects of the business world. Often, these are formed from a lack of current knowledge. The truth is that China welcomes investment from international businesses. 

One business regulation that companies often want to understand better, for example how intellectual property is protected.

Aquatech Online talked to Xie Zekun, head of the foreign affairs department at Zhong Yin Law Firm, based in Shanghai, to find out more about how China regulates IP protection.

What does IP cover in China?

IP in China covers very similar territory to elsewhere: copyright; trademarks; patents; trade secrets, etc. It is covered legally by Article 123 of the Civil Code, which stipulates that civil subjects enjoy intellectual property rights in accordance with the law. The right holder, therefore, has exclusive IP rights over the following ‘objects’:
• Works
• Invention, utility model, and appearance design
• Trademark
• Geographical indications
• Trade secrets
• Integrated circuit layout design
• New plant varieties
• Other objects stipulated by law.


Does China have international IP agreements?

With the Chinese government keen to welcome international companies to its domestic market, the country has joined multiple international conventions related to intellectual property rights. 

The most important of these are the Convention Establishing the World Intellectual Property Organization and the Agreement on Trade Related Aspects of Intellectual Property Rights. Zekun told Aquatech Online: “Not only do these strengthen IP cooperation, but they also help to promote technological innovation and cultural exchange.”

China has also joined most other international multilateral treaties on intellectual property, for example:
The Paris Convention for the Protection of Industrial Property - joined in 1984. 
The Berne Convention for the Protection of Literary and Artistic Works - joined in 1992. 
The Madrid Agreement Concerning the International Registration of Marks and the Madrid Protocol - joined in 1989 and 1995, respectively. 
Patent Cooperation Treaty (PCT) - joined in 1994. 
Beijing Treaty on Audio Visual Performances: This is an international treaty that protects the rights of audio and visual performers. China is a signatory to this treaty. 
The World Copyright Treaty and the WIPO Performances and Phonograms Treaty - joined in 2007 and 2013, respectively. 
The Universal Copyright Convention - joined the UCC in 1979, one of China’s earliest international IP treaty. 
The International Convention for the Protection of New Varieties of Plants (UPOV) - joined in 1999. 
The Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure: joined in 2010, this has great significance for research and development in the field of biotechnology.

Zekun added: “By joining these international agreements and treaties, China has made significant progress in intellectual property protection, while also promoting international exchanges and cooperation.

“In addition, China actively participates in multilateral and bilateral negotiations, further strengthening cooperation with other countries and regions in intellectual property protection through signing free trade agreements (FTA) and investment agreements.

“These efforts demonstrate China's determination and actions as a responsible global power, committed to building a fair, reasonable, and transparent international intellectual property governance system.”

How does an international company protect its IP in China?

Registering intellectual property can protect a company's innovative achievements and commercial brands and prevent infringement by others. Therefore, registering intellectual property rights is crucial for the development of foreign enterprises in the Chinese market. This is especially true for new technologies; it is best to apply for patents in China or register relevant software copyrights based on local patent applications.

International companies can take the following steps to protect their intellectual property:
1. Trademark registration: Foreign companies should register their trademarks in China to ensure their exclusive rights in the Chinese market.
2. Patent application: Foreign companies should apply for patent protection in China to ensure their unique rights to technology and innovation in the Chinese market.
3. Sign a confidentiality agreement: Before engaging in commercial cooperation with Chinese companies or partners, foreign companies should sign a confidentiality agreement to protect their trade secrets and technical information.
4. Monitoring infringement behaviour: Foreign companies should regularly monitor infringement behaviour in the Chinese market and take necessary legal actions to protect their intellectual property rights.
5. Understand Chinese intellectual property laws and hire a Chinese intellectual property law team: Foreign companies should be familiar with Chinese intellectual property laws and regulations and take appropriate measures to protect their rights when necessary.
6. Actively participating in industry associations and protection alliances: Participating in industry associations and intellectual property protection alliances can be an effective strategy. Through these platforms, enterprises can not only obtain the latest information and policy interpretations on intellectual property protection, but also exchange experiences with other companies in the same industry and receive support and assistance in the case of any infringement.

Is it necessary to use a Chinese legal team for IP issues?

The short answer is ‘yes’, it is necessary to hire a Chinese legal team to handle IP issues. China has strict IP protection and companies entering the market will usually need to register trademarks, patents and copyrights, etc.

A local legal team can help international companies understand China's intellectual property laws and regulations, provide professional legal advice and protection measures, and ensure that the company's intellectual property in the Chinese market is fully protected.

What steps can a company take if it suspects an IP infringement?

If a company suspects intellectual property infringement, they should take the following measures: 
1. Evidence collection: Collect relevant evidence, including the time, location, and evidence of the actual infringement, for subsequent use in safeguarding rights.
2. Seek legal advice: Consult a professional IP lawyer to understand whether it constitutes infringement and what legal action should be taken.
3. Issue a warning letter: The company may send a warning letter to the suspected infringing party, requesting them to stop infringing behaviour, and may also demand compensation for losses.
4. Litigation: If the warning letter is ineffectual or deemed an invalid path, the company may choose to file a lawsuit to protect its intellectual property rights through legal means.
5. Administrative investigation: Report to administrative agencies, such as the Administration for Industry and Commerce, the Patent Office, and the Copyright Office (Cultural Law Enforcement Brigade). These agencies can order the infringing companies to cease their infringement and can impose administrative penalties on them.
6. Request for infringing companies to be reported to the public security bureau, customs and other authorities: Request criminal punishment for the infringing company, in order to prevent the recurrence of infringement.

What steps are involved in registering IP in China?

The following steps are usually required:
 1. Contact the China Intellectual Property Administration (CNIPA) or Chinese patent agencies to learn how to register.
2. Prepare relevant materials, including company information, product information, patent, or trademark documents, etc.
3. Submit the application and wait for approval. This varies depending on the type of IP and the application situation, though generally takes from a few months up to a year.
4. Costs depend on the type and quantity of IP registered, including application fees, agency fees, etc.

During the process, a company can contact Chinese patent agencies or legal teams for professional assistance and guidance.

Zekun added: “Even if a foreign company has not entered China, it can apply for IP registration in China through international treaties, such as applying for trademarks in China through the Madrid Treaty and applying for Chinese patents through the International Patent Cooperation (PCT). 

“If foreign companies need it, they can also seek IP lawyers from the country in question. Usually, they also cooperate with Chinese lawyers or relevant institutions to handle international intellectual property business.”

It is recommended that a company conducts an IP audit before entering the Chinese market. By analysing and evaluating its IP status, a company can determine the value of IP, what protection measures are needed and potential risks and issues.