1. What different types of intellectual property rights exist to protect: (a) Inventions (e.g. patents, supplementary protection certificates, rights in trade secrets, confidential information and/or know-how); (b) Brands (e.g. trade marks, cause of action in passing off, rights to prevent unfair competition, association marks, certification marks, hallmarks, designations of origin, geographical indications, traditional speciality guarantees); (c) Other creations, technology and proprietary interests (e.g. copyright, design rights, semiconductor topography rights, plant varieties, database rights, rights in trade secrets, confidential information and/or know-how).
(a) Inventions (e.g. patents, supplementary protection certificates, rights in trade secrets, confidential information and/or know-how);
The followings are available for inventions: patents, rights in trade secrets, confidential information and/or know-how.
(b) Brands (e.g. trade marks, cause of action in passing off, rights to prevent unfair competition, association marks, certification marks, hallmarks, designations of origin, geographical indications, traditional speciality guarantees);
The followings are available for brands: trademarks, rights to prevent unfair competition, association marks, certification marks, hallmarks, designations of origin, geographical indications.
(c) Other creations, technology and proprietary interests (e.g. copyright, design rights, semiconductor topography rights, plant varieties, database rights, rights in trade secrets, confidential information and/or know-how).
The followings are available for other creations, technology and proprietary interests: copyright, design rights, semiconductor topography rights, plant varieties, database rights, rights in trade secrets, confidential information and/or know-how.
2. What is the duration of each of these intellectual property rights? What procedures exist to extend the life of registered rights in appropriate circumstances?
Invention patent: 20 years from filing date; Utility model patent: 10 years from filing date; Design patent: 15 years from filing date; Semiconductor topography:10 years from filing date or 15 years from the creation date, whichever is earlier; Plant varieties:15-20 years depending on the specific variety.
There is no procedure to extend the life of the above IP rights, except for the patent related to a new pharmaceutical product approved for marketing in China to compensate for the time taken for review and approval. The patent term extension shall not exceed 5 years, and the resulting total effective patent term shall not exceed 14 years from the approval for marketing of the new drug.
Trademarks: 10 years since registration date. Renewable for 10 years each time (1) within 6 months before the expiration, or (2) within a grace period of 6 months beyond the expiration.
Copyright: For a work of a citizen, the lifetime of the author plus 50 years after his death. For a work of a legal person or an unincorporated organization, the protection period for its right of publication shall be 50 years after the creation of the work; the protection period of other rights (such as "the right of reproduction" etc.) shall be 50 years after the first publication of such work. No renewal or extension.
3. Who is the first owner of each of these intellectual property rights and is this different for rights created in the course of employment or under a commission?
Patents, semiconductor topography and plant varieties: the entities or individuals who have made the inventioncreation, unless otherwise agreed upon in advance. For service invention-creation, the first owner is the employer unless otherwise agreed upon in advance.
Trademarks: trademark applicant who has filed in bona fide or on case-by-case basis, the first bona fide user of the trademark.
Copyright: The first owner of copyright shall be the natural person who has created the work, or be the legal entities and unincorporated organizations, if the work is created under the auspices of and reflecting the will of the said entities and organizations and the responsibilities of the work are assumed by the said entities and organizations.
4. Which of the intellectual property rights described above are registered rights?
Patents, trademarks, semiconductor topography rights and plant varieties are registered rights.
A copyright shall subsist on the date when a work is created. Copyright registration is optional and advisable.
5. Who can apply for registration of these intellectual property rights and, briefly, what is the procedure for registration?
Patents, trademarks, semiconductor topography rights and plant varieties: Any individual, legal entity or other organisation. The registrations of patents in China can follow either Paris conventional route or PCT route (not for design). But for semiconductor topography rights and plant varieties, there is only one route: directly filing the application with the competent authority in P.R. China.
The registrations of trademark in P.R. China can follow either domestic filing route or international filing route.
Copyright: Authors and other copyright owners may register their works with a registry recognized by the copyright authority in P.R. China.
6. How long does the registration procedure usually take?
Patents, semiconductor topography and plant varieties: For invention patent, it takes on average 2.5 years from filing to granting. For utility model patent, it takes on average 10 months from filing to granting. For design patent, it takes on average 6 months from filing to granting. For semiconductor topography, it takes on average 2 months from filing to registration. For plant varieties, it takes on average 4 years from filing to registration.
Trademarks: 1 year on average.
Copyright: 3 months on average.
7. Do third parties have the right to take part in or comment on the registration process?
Patents: only for invention patent after publication. For utility model/design, semiconductor topography and plant varieties, the third party has only option of file an invalidation request after the announcement of the rights.
Trademarks: within three months since the publication on the Trademark Gazette.
Copyright: Not available.
8. What (if any) steps can the applicant take if registration is refused?
As for the Patents and Trademarks, the applicant can appeal with the competent authorities if registration is refused. If the applicant is not satisfied with the ruling of competent authorities, he can still lodge a further administrative lawsuit before the Beijing IP Court.
Not available for copyright registration refusal.
9. What are the current application and renewal fees for each of these intellectual property rights?
Official fee RMB 950 for invention; RMB 500 for utility mode/design; RMB 1000 for semiconductor topography; 0 RMB for plant variety; RMB 300 for regular trademark; RMB 1500 for certification/collective mark. Application fees for copyright registration vary depending on the type and length of the work, mostly ranging from RMB 300 to RMB 2000 per work.
10. What are the consequences of a failure to pay any renewal fees and what (if any) steps can be taken to remedy a failure to pay renewal fees?
Patents or trademark: abandonment of the right with possible restoration.
Copyright, semiconductor topography and plant varieties: No renewal fees.
11. What are the requirements to assign ownership of each of the intellectual property rights described above?
Patents, semiconductor topography, plant varieties: file a request for the assignment.
Where a registered trademark is assigned, the assignor and the assignee shall enter into an assignment agreement, and jointly file an application with the China National Intellectual Property Administration (CNIPA). The assignee shall guarantee the quality of goods/services on which the registered trademark is used. A trademark registrant intending to assign the registered trademark is required to concurrently assign all its identical and/or similar registered trademarks on identical and/or similar goods/services.
A copyright owner may wholly or partially transfer certain rights (such as "the right of reproduction" etc.) in accordance with the Copyright Law, a written contract shall be concluded by and between the transferer and transferee.
12. Is there a requirement to register an assignment of any of these intellectual property rights and, if so, what is the consequence of failing to register?
To transfer patent rights or trademark rights, the parties concerned must register the assignment with the CNIPA after signing a written contract for the transfer. The transfer of rights shall take effect from the date of registration.
However, copyright transfers do not need to be registered now. A copyright transfer contract concluded with the copyright owner may be filed with the registry recognized by the copyright authority for the record, and it is not mandatory.
13. What are the requirements to licence a third party to use each of the intellectual property rights described above?
A licence contract.
14. Is there a requirement to register a licence of any of these intellectual property rights and, if so, what is the consequence of failing to register?
Yes, it is advisable but not mandatory, and does not influence the effectiveness of a license contract.
According to trademark law, where a trademark license contract has not been filed with the CNIPA, it can not be invoked to confront bona fide third parties.
15. Are exclusive and non-exclusive licensees given different rights in respect of the enforcement of the licensed IP, and if so, how do those rights differ?
Yes. The licensees' rights are different as to lodging lawsuits.
The exclusive licensees can enforce the licensed trademark/copyright (i.e., file a civil litigation against infringement as plaintiff), the non-exclusive licensees need to have the explicit authorization from the trademark/copyright owner for enforcement of the licensed trademark/copyright.
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Originally published by The Legal 500
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
