Transcript China and ASEAN IPR SME Helpdesks Michał Kłaczyński 20 February 2014 20 February 2014 Protecting Your Business and Innovation in Asia 20 February 2014 Michał Kłaczyński Lawyer and expert.

China and ASEAN IPR SME
Helpdesks
Michał Kłaczyński
20 February 2014
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Protecting Your Business and
Innovation in Asia
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Michał Kłaczyński
Lawyer and expert with China IPR SME Helpdesk and
ASEAN IPR SME Helpdesk. Educated in USA (Harvard
Law School), China (Sichuan University) and Poland
(Jagiellonian University). Experience includes several
commercial and investment projects in China, SouthEast Asia and Central Asia (also in Europe and USA)
and IPR and regulatory matters in several
jurisdictions.
e-mail: [email protected]
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Agenda
• China and ASEAN – legal systems
• Intellectual Property – basic concepts
• National IPR regimes: patents, copyrights,
trademarks, trade secrets
• Strategies for European SMEs
• The IPR SME Helpdesk – what we can do for you?
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Association of Southeast Asian Nations
(ASEAN)
population of 602 million
– Indonesia, Thailand, Malaysia, Singapore, Philippines,
Vietnam, Laos, Cambodia, Brunei, Myanmar
– High economic growth, combined GPD US$3.5 billion
– Free trade association => common market (goods,
services, capital/investments)
– Trade agreements with major partners: China, Korea,
Japan, India, Australia, New Zealand
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China’s legal system
– civil law, communist heritage, market reforms and legal implants, IPR
protection influenced by WTO/TRIPS
ASEAN – legal diversity
Transplants from common law and civil law, socialist law and local
traditions
– Anything in common?
• Rule of law and economic growth
• Protection of private property, freedom of contracting, fair quality
of judiciary, free international trade, liberal labour market
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Indonesia
– Adat law (customary law) – diverse heritage, elements of Islamic law
– Civil law system (Dutch law) – IPR similar to European continental law
Malaysia
– Common law system with Islamic elements
– Commercial law and IPR similar to English law
Thailand
– Civil law with common law influences (real estate, companies)
Vietnam
– Civil law (French) + socialist law
– Since 1982 economic reforms
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What are Intellectual Property Rights?
• Exclusive Rights + Intangible Property + Intellectual Component
– Arts (copyright)| Science/Technology (patent)|Know-how (trade
secrets, competition) | Market identity (trademark)
• What can/should be registered?
– Trademark, Patent (invention), Utility Model, Design
• What is not registered?
– Copyrights, Trade Secrets
• Registration & protection is territorial
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Copyright: China
Copyright Act (1990, revised in 2002):
• "works of literature, art, natural science, social science, engineering
technology and the like which are expressed" in written form, or musical,
dramatic, fine art, photography, cinematography and videographic works,
drawings of engineering designs and product designs, maps, sketches
and other graphic works, computer software
• Some tangible form required
• Registration of copyright - not required but widely adopted
• Creator's exclusive right to use (and benefit from) original work
• Computer software protectable under copyright law and a separate
regime (Computer Software Protection Rules 1991)
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Copyright:
Thailand, Vietnam, Malaysia , Indonesia
• Copyrightable subject matter - works of literary, artistic and scientific
character (including musical, choreographic, software and databases)
• Exclusive use and economic benefits
• Protection for 50 years after author's death
• Automatic protection (Berne Convention regime), but commonly registered in
Vietnam, Thailand, Malaysia and Indonesia (copy of the works and declaration
of authorship); simplified evidence of infringement
• In Vietnam copyright protection available for logo and product design
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Trade marks: China
• Recognizable sign, design or expression to identify products/services on
the market;
• Territorial and temporary protection (but can be extended without
limitation);
• China is a “first to file” jurisdiction (i.e., no protection for the “wellknown” but unregistered trademarks);
• Localization of trademarks (translation).
• Ping Guo / 苹果
Ke Kou Ke Le / 可口可乐 Xilaideng / 喜来登
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Trade marks:
Thailand, Malaysia, Indonesia, Vietnam
• Recognizable sign, design or expression which identifies products or
services
• Visual trade marks only - letters, words, graphics, 3D (but not scent or
sound)
• Simplified registration for TM already registered abroad (without Indonesia)
• Protection of "well-known" trade marks (widely known by continuous use)
• "first-to-file” jurisdictions (with exception for Malaysia)
• Registration - National Office of Intellectual Property (Vietnam), Directorate
General of IPR (Indonesia), Registry of Trademarks (Malaysia), Trademark
Office (Thailand)
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Technology Protection: China - Inventions
 Inventions – registration required
– Territorial and temporary protection (exclusive use)
• 10 years for utility models and design patents
• 20 years for invention patents
– In exchange for full disclosure to the public (after the protection
expires everyone can use it)
– China is a “first to file” jurisdiction
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Technology Protection: Vietnam
• Inventions (novelty, industrial applicability and inventive step) –
protection for 20 years;
• Utility Solutions (inventive step not required) – 10 years’ protection;
• Industrial Designs (shape/visible attributes; creative nature, novelty
industrial applicability) – 5 years’ protection;
• “First-to-file” jurisdiction
• if two or more applicants file for patents for identical items, the
one whose application was filed first prevails
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Technology Protection: Thailand
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“first-to-file” system
Invention Patent (20 years protection)
Design Patent (10 years protection)
Utility Model (6+2+2 years protection)
Patentability of software!
Technology Protection: Indonesia
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“first-to-file” jurisdiction
Standard Patents (product or process, 20 years’ protection)
Simple Patents (product, 10 years’ protection)
Industrial Designs
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Technology Protection: Malaysia
• Inventions (protection for 20 years)
• Utility Innovations – “lesser inventions” concerning upgrading an existing
product or process
(protection for 10 years, may be extended up to 20 years
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Protection of Technology - Trade Secrets
• Any valuable information (commercial or technical nature) not available
to the public (deliberately kept secret);
– No registration, no time limits for protection
– Not-exclusive (can be circumvented)
– Once discovered may be used by others
– No infringement claims towards third parties
– Could be patentable but even technology doesn’t need to be novel
• Reverse engineering and independent development allowed
• Importance of contractual measures
– Non-disclosure of confidential information is not the only concern
– Key issues: competitive activity usage or circumvention our IPR
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Trade Secrets – China
• Unfair Competition Prevention Act (1993)
– only misappropriation of trade secrets by competitors covered (does
not apply to employees)
• Reliance on contractual provisions
– usually a standard NDA will not be sufficient – competitive activities
and circumvention of IPR need to be eliminated
• Criminal liability for theft of trade secrets
• Civil procedure – limited discovery
• Administrative enforcement – AIC (Administration for Industry and
Commerce) may order to stop sales of infringing product and/or a penalty
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Trade Secrets – Malaysia
• Trade secrets/confidential information - protected under the common law
principles.
Trade Secrets – Thailand
• Trade Secrets Act BE 2545 (since 2002)
• Industrial and commercial secrets
Trade Secrets – Indonesia
• Trade Secrets Act of 2000
– proprietary rights to confidential information of a commercial nature
– information that is secret, has commercial value, and is appropriately
guarded by its owner
– protected indefinitely
– exclusive right to use the trade secret, or to license it to third parties
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Trade Secrets – Vietnam
• Competition Law of 2005 and the
Civil Code (industrial property
includes trade secrets)
• General
provisions,
not
specifically crafted to protect
confidential information
• Difficult to enforce – evaluated as
unsatisfactory protection against
abuse of trust/confidentiality
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Trade secrets – contractual safeguards
Standard NDA will not be sufficient!
– Non-disclosure is not our only/main concern
• Rather - using confidential information to for competitive activity
or to circumvent our IPR
• Secure all three aspects: Non-Disclosure, Non-Circumvention, and
Non-Competition
– Prevent IPR being used for other party:
• Independent business activity
• Creating and developing own products, technology, production
methods or management of their company
• Creating and registering any IPR
– Secure that no supplier/manufacturer, distributor, consultant (and
their employees, managers, shareholders, subcontractors) will
establish a business relationship with such entities, that were
contacted or introduced to him in relation to providing services to us.
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Case study – infringement of IPR in China
AMSC v. Sinovel Wind Group – dispute over proprietary product for wind
turbines
– Background
• Key components and software developed in USA
• No patents in China (not available for software)
• Reliance on effective protection of trade secrets (control of
production)
• Vulnerable for industrial espionage, corrupted employees
• Some remedies available (criminal and contractual), but not
against third parties
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Case study – infringement of IPR in China
AMSC v. Sinovel Wind Group – dispute over proprietary product for wind
turbines
– Outcome
• Litigation since 2011 (US$1.2 billion damages), so far AMSC
loosing, now pending before the Chinese Supreme Court
• AMSC successful in bringing criminal charges against corrupt
employees
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Case study – trade mark dispute in China
• European clothing brand decides to change the business model
– Relocate production from China to Pakistan, give up imports to EU for
the high-end Chinese market
– Long-term supplier is not happy, tries to block imports to China with a
registered trademark
– Dispute over validity of the trademark arises, but imports and
shopping malls’ space rental difficult
– The court does not annul registration, but orders to transfer the
trademark
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Take-away messages
 First: prevent infringements
– Register your trademarks and patents (also with customs
administration)
– Due diligence
– Enforceable contracts (non-disclosure, non-compete)
 Cost-benefit analysis before litigation
 Enforcement: what are the best measures?
 Monitoring the market (early detection of infringements)
 Use different ways to protect the same IPR (assets)
 Manage confidential information appropriately
 Control key components, production or marketing stages
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China and ASEAN IPR SME Helpdesks
Enquiry Helplines
Websites & Blog
E-learning &
Business Tools
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Training Workshops
& Live Webinars
IP Guides &
Newsletters
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Enquiry Helpline
• IPR one-to-one consultations: E-mail, telephone,
face-to-face
• First-line advice on China and ASEAN countries IPR matters
• Confidential
• Delivered by China and ASEAN IPR specialists
• Available for EU SMEs and SME intermediaries
[email protected]
+86 (10) 64620892
[email protected]
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Information & Materials
• Library of publications:
– IP specific guides, incl. patents & trade marks
– Industry specific guides, incl. textiles, machinery, creative industries
– Business guides, incl. technology transfer
– ASEAN IP Country Factsheets
• Quarterly Helpdesk newsletters
• Article placement
• Topical blog posts
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Training Workshops & Webinars
• Workshops across Europe, China and ASEAN countries
• Addressing general IPR and industry specific IPR
matters
• Trainings delivered in several languages
• Free one-to-one consultations
• Webinars: Save time by joining these interactive
training sessions from your own office or watch
recordings online
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Online Portals
www.China-iprhelpdesk.eu
www. ASEAN-iprhelpdesk.eu
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Practical IPR guides
E-learning modules
Case study catalogue
FAQs
Helpdesk newsletters
Event information
Latest blog posts
Helpdesk videos
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Feedback Questions Discussion
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The China and ASEAN IPR SME Helpdesk provides free,
confidential, business-focused advice to European Small and
Medium Enterprises (SMEs) relating to IPR in China and
Southeast-Asia
Helpdesk Enquiry Service – [email protected] / Training & Events
Materials
Online Services -www.china-iprhelpdesk.eu / www.asean-iprhelpdesk.eu
For more information about our services and how the China And ASEAN IPR SME Helpdesk can add value to EU
SMEs, please contact: Telephone/Hotline: +62 21 572 2056 ext.108 Jakarta / +86 (10) 6462 0892 China
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