US Patent Office Releases New China IP Rights Toolkit
December 15th, 2023
Contributor: Pramod Chintalapoodi
According to the USPTO,
The Toolkit offers an in-depth look at the basics of protecting IP rights in China… It also provides an overview of China’s IP environment, details about IP enforcement, and a list of valuable China IPR resources…that can help rights holders who do business in China.
As the introduction to the Toolkit explains,
U.S. companies doing business in China face a range of challenges in protecting and enforcing their intellectual property (IP). Companies planning to do business in the People’s Republic of China (PRC) should understand that the U.S. and PRC IP legal systems are different and that registration of rights in the United States does not confer rights in China. It is important to become familiar with the differences between the two systems and to develop and implement a comprehensive strategy for protecting and enforcing your IP in China.
As the US International Trade Administration explains,
Intellectual property (IP) infringement and theft is widespread in China, and firms operating there must take steps to protect and enforce their IP rights.
The Toolkit recommends the following strategies for IP protection in China:
- Create a basket of IP rights, including patents, trade secrets, trademarks, and copyrights. A multilayered IP portfolio can provide synergistic protection and compensate for gaps in China’s IP system.
- Develop an IP strategy with enforcement in mind. The strategy could involve hiring a competent local IP attorney who can provide a full range of services. Such services should include not only registration of rights but also monitoring, investigation, and enforcement work.
- Customize your strategy according to your needs. Your strategy may differ depending on the nature of your business and your IP rights, and on your plans for doing business in China. To be successful in China, you should plan carefully. Begin by considering the general strategies and best practices identified in this toolkit.
- Instill in your China-based workforce a sense of IP ownership, and make IP protection and enforcement the responsibility of your entire China team.
- Keep good records. IP enforcement in China generally requires original documentary evidence (for example, certificates of registration) to establish rights and provide a basis for enforcement.
- Take advantage of U.S. government resources, including the China team at the U.S. Patent and Trademark Office (USPTO), China IP resources made available on the USPTO website, and the USPTO’s three IP attachés posted in China. The IP attachés can offer on-the-ground assistance and information on protecting and enforcing IP rights; finding local service providers; and addressing problems with PRC counterparts, including advocating for U.S. rights holders under exceptional circumstances.
The Toolkit explains:
- How to obtain trademarks in China
- How to obtain domain names in China
- Challenging third-party domain registrations in China
- Protecting trade dress in China
- How to obtain patents in China
- How to file a copyright registration in China
- How to obtain trade secret protection in China
- Enforcing IP rights in China
The 42-page Toolkit is available as a free download from the USPTO website.