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China and ASEAN IPR SME Helpdesks Michał Kłaczyński 20 February 2014 1.

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Presentation on theme: "China and ASEAN IPR SME Helpdesks Michał Kłaczyński 20 February 2014 1."— Presentation transcript:

1 China and ASEAN IPR SME Helpdesks Michał Kłaczyński 20 February 2014 1

2 Protecting Your Business and Innovation in Asia 220 February 2014

3 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, South- East Asia and Central Asia (also in Europe and USA) and IPR and regulatory matters in several jurisdictions. e-mail: 320 February 2014

4 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? 420 February 2014

5 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 20 February 20145

6 Chinas 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 20 February 20146

7 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 20 February 20147

8 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 20 February 20148

9 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) 20 February 20149

10 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 20 February 201410

11 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 well- known but unregistered trademarks); Localization of trademarks (translation). Ping Guo / Ke Kou Ke Le / Xilaideng / – 20 February 201411

12 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) 20 February 201412

13 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 20 February 201413

14 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 20 February 201414

15 Technology Protection: Thailand 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 first-to-file jurisdiction Standard Patents (product or process, 20 years protection) Simple Patents (product, 10 years protection) Industrial Designs 20 February 201415

16 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 20 February 201416

17 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 doesnt 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 20 February 201417

18 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 20 February 201418

19 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 20 February 201419

20 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 20 February 201420

21 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. 20 February 201421

22 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 20 February 201422

23 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 20 February 201423

24 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 20 February 201424

25 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 20 February 201425

26 26 China and ASEAN IPR SME Helpdesks Enquiry Helplines IP Guides & Newsletters E-learning & Business Tools Training Workshops & Live Webinars Websites & Blog 26 20 February 2014

27 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 +86 (10) 64620892 2720 February 2014

28 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 28 20 February 2014

29 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 29 20 February 2014

30 Online Portals 30 Practical IPR guides E-learning modules Case study catalogue FAQs Helpdesk newsletters Event information Latest blog posts Helpdesk videos www. 20 February 2014

31 FeedbackQuestions Discussion 3120 February 2014

32 32 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 – / Training & Events Materials Online Services - / 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 20 February 2014

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