China IP? Better Luck Next Time.

International IP lawyer

David Dayton of the always excellent Silk Road International Blog just did a post, entitled, Show Questions, on some of the questions he was asked as a speaker at the Global Sources Buyers Show in Hong Kong.

My favorite interaction was the following:

Finally, I had a very nice conversation at the “Ask the Experts” Q&A Sessions yesterday with a rather worried new buyer. Basically he said: “I’ve made samples and placed two trial orders already with 4 different factories. I didn’t like the quality I got and I’m currently not working with any of them. But now I’m worried that they may be violating my IP.”

My response: “Don’t worry, they are. Your best case scenario now is to hope that they don’t file for trademark or patent registrations in China before you do.”

Remember China is a first to file country so you’d better be the one that files first! That means file BEFORE you give your art to the factory

So true. Every month or so, someone calls one of the international IP lawyers at my law firm (usually just long enough after returning from their first trip to China for the glitter to have worn off), worried that the design or prototype they were showing all over China might be copied by one of the factories to whom they will not be awarding their bid.

If these companies have a patentable product (and nine times out of ten they do not, either because their product is inherently not patentable or because it has been too long since they secured a patent on it outside China), we discuss with them their need to patent their product in China before someone else does. We do the same regarding China trademarks, if that is applicable.

More commonly though, I just tell them that the next time they show their product or design in China, they should first require the party to which they will be making the disclosure sign a China NNN Agreement.

Such advice is the legal industry’s equivalent of “better luck next time.”