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1. General Considerations:

To understand why a company must register its IPR in China, it is important to stress that China’s IPR infringement is a tremendous issue for US companies doing business in China. Chinese officials have increased enforcement efforts, but their actions and legal remedies have not been effective in deterring counterfeiters. Therefore,  it is advisable to protect and register IPR in China before any infringement occurs; without registration, it is highly unlikely to obtain any reparation from counterfeiters.

However, a company needs to be aware that Chinese IPR registration rules differ in a few important areas from commonly accepted international rules. Registration must conform to China’s domestic legal requirements for IPR to be enforceable in China.

 

  • General international rules: A company has two options when it comes to registering IPR abroad:
    • To ensure full IPR protection in another country, a company can apply to register any IPR in that country. For more information about the specific intellectual property laws and requirements of individual countries, visit the WIPO Guide to Intellectual Property Worldwide.
      However this option can become challenging especially when a company needs to register its IPR in several countries.
    • However, when a country is signatory to one of the numerous IPR multilateral treaties (e.g. WTO, Berne and Paris Conventions…) the complexity of overseas filing is largely reduced; a registration in the jurisdiction designated by the treaty will grant IPR protection in all the signatory countries of the treaty. This is the easiest option and the most commonly adopted. It provides IPR protection in several countries with only one registration.
  • Rule in China: although China is a party to some of these multilateral treaties, a company must register its IPR with the appropriate Chinese agencies and authorities for those rights to be enforceable in China.

 

2. How To Register Your Rights in China?

The following provide resources and practical information for registering IPR in China.

  1. Registering Copyrights in China:
  • A company technically does not need to register its Copyrights in China because protection is granted without registration. However, registering copyrights is highly recommended in order to prove ownership against counterfeiters.
  • The registration is voluntary and must be done with  China's National Copyright Administration (NCA)
  • To learn about the registration process and what copyrights protection covers in China, see: Coverage and Protection.
  1. Register your IPR with Chinese Customs!
  • Patents need to be registered with the State Intellectual Property Office(China’s patent office). Warning: In China, in contrast with the US, the applicant who files an application first is granted the patent right (i.e. patent protection in China is based on the “first to file” principle, in contrast to “the first to invent” US system). Therefore you need to file for a patent as soon as possible before someone else applies to register a patent on something you actually invented.
  • OF NOTE: If you don’t have a business office in China your application must be filed through an authorized patent agency. For a list and address of this agencies, see: Foreign-Related Agencies.
  • You will have to write a letter of authorization, fill in a power of attorney, and send the relevant application documents to the patent agency to handle.
  • To learn about the registration process, see: The Patent Registration Process
  1. Registering Trademarks in China:
  • Trademarks need to be registered with the China Trademark Office. Warning: You need to register your Trademark early because China has established a "first-to-file" system that grants trademark rights to the party that first applies to register the trademark in contrast to the United States which confers trademark rights upon the first party to use a trademark in commerce.
  • OF NOTE: If you don’t have a business office in China your application must be filed through a Chinese Trademark Agent. For a list and address of this agencies, see: Foreign-Related Agencies.
  • You will have to write a letter of authorization, fill in a power of attorney, and send the relevant application documents to the agency to handle.
  • To learn about the registration process and what rights are conferred on a Trademark holder in China see: The Trademark Registration Process, What are the documents and materials requested for filing a trademark registration application in China?
  1. Register your IPR with Chinese Customs!

Chinese Customs Regulation protects against infringement from both import and export products. It covers trademark, patents and copyrights.

However this protection is only granted to companies that have registered their IPR with the Chinese Customs.For details about the application see: record-filing of IPR. The application must be send to:

General Administration of Customs
6 Jianguomennei DaJie
Beijing, China 100730
Tel: (86.10) 6519-5243 or 6519-5399
Fax: (86.10) 6519-5394
Website: http://www.customs.gov.cn (Chinese)

If protection is granted, it will last for 10 years and be renewable every 10 years.

This protection takes two forms:

  • When a company suspects that infringing products are about to enter or exit China, it may submit a written application to customs at the suspected point of entry or exit where protection is sought (for details about the application see: Application for Detention of Cargoes Suspected to Violate IPR. OF NOTE: this application is different from the one used to obtain protection from the Chinese Customs). After the company has provided a timely application and if the investigation confirms that the products are infringing IPR, the Customs agency are empowered to seize the merchandise.
  • Customs will notify a company whenever infringing products are about to enter or exit China. The Customs  agency also has the authority to seize the infringing goods if the IP holder submits a timely application and provides a guaranty. If it is determined that the seized goods are not infringing products, the IP holder will have to compensate the loss incurred by the consignees.