Successful Technology Transfers to China · –Representative office (RO) –Wholly foreign owned...
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Successful Technology Transfers to China
Toby Mak
29 October 2012
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Welcome to the webinar
Philippe Healey
China IPR SME Helpdesk Project Manager
29 October
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29 October 3
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The China IPR SME Helpdesk
@iprchina
Fan page: 'China IPR SME Helpdesk'
'China IPR'
The China IPR SME Helpdesk provides free, confidential, business-focused advice
relating to China IPR to European Small and Medium Enterprises (SMEs).
Helpdesk Enquiry Service – [email protected]
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Today’s Speaker
• Dr. Toby Mak
• Firm: Tee & Howe
• Patent Attorney / PhD In Chemistry
• Email: [email protected]
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Technology transfer to/from China
• Overview
• Scenarios involving tech transfer to China
• Why things are operated differently in China than the Western world – the two major “problems” in China
• Forms of IP in China – registered vs unregistered IP
• Different kinds of transfers & practical notes
• Take away message
• Q&A
29 October 6
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Technology transfer to/from China
• Overview
• Scenarios involving tech transfer to China
• Why things are operated differently in China than the Western world – the two major “problems” in China
• Forms of IP in China – registered vs unregistered IP
• Different kinds of transfers & practical notes
• Take away message
• Q&A
29 October 7
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Scenario involving tech transfer to China
29 October 8
A foreign company wants to work in China:
Internally – set up local branch
Externally - engage local companies to act as
agent
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Scenario involving tech transfer to China
• Must transfer technologies to the local entity
• Internally – local branch
– Representative office (RO)
– Wholly foreign owned entity (WFOE)
– Joint venture (JV)
• Internal transfer
29 October 9
RO or WFOE
Much better control
Possibility of change of ownership
JV
3rd party involved Better to be treated as
external party
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Scenario involving tech transfer to China
29 October 10
• How things can go wrong:
Issue Bad consequences
Improperly or unclearly defined subject
Unclear of what has been transferred →
unexpectedly transfer excessive IP to receiving
party
No dispute handling mechanism Receiving party can continue undesirable
activities during dispute
Unclear deposition of
IP/information/tools at termination
Receiving party still holds important materials
while they should not
Receiving party establishes new IP
Unclear ownership and responsibilities → new
IP may not be protected or even act against the
giving party
Assumed freedom-to-operate after
transfer
Receiving party may be sued for infringement,
and the giving party may have to compensate
the receiving party
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Technology transfer to China
• Overview
• Scenarios involving tech transfer to China
• Why things are operated differently in China than the Western world – the two major “problems” in China
• Forms of IP in China – registered vs unregistered IP
• Different kinds of transfers & practical notes
• Take away message
• Q&A
29 October 11
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Why things are operated differently in China
than the Western world – the two major
“problems” in China
• Why are things different in China?
• The two major “problems” in China
– Trust problem
– Volume problem
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Why things are operated differently in China
than the Western world – the two major “problems” in China
• How are things different in China?
– Heavy reliance on evidence recorded at
authorities or verified by independent party
– “Anything not in writing will be ignored”
– What have been signed have been signed
– Proper documentation for tech transfer is
vital
• → how?
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Case Study - What happened?
UK inventor invented a chair
Wanted to make good money
out of it
Needed to find someone to
make the chair
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What happened? (continued)
Engaged a Dutch company
Dutch company sub-contracted
to a Chinese manufacturer
Filed a UK patent application,
but abandoned prior to
publication, and did not file
abroad including China within
the necessary time period
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What happened? (continued)
• Consequence - everything put on hold until issues of the Chinese utility model and design are resolved
Relationship with Dutch
company turned sour
UK inventor found a French
company to continue the project
Chinese manufacturer has
registered design and utility
model for the chair in China (!)
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What can the UK inventor do?
• Invalidate the CN design and utility model – Unlikely to be successful as the invention was not publicly
disclosed
• Claim to be the correct owner of the CN design and utility model – Difficult, particularly if the Chinese manufacturer claimed
that they originally developed the chair
• The CN design and utility model would not have caused any problem if the UK inventor filed patent application in China claiming priority from his UK application
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Take-away messages
• Involvement of sub-contractor → caution
• Register IP BEFORE having any direct or indirect business deal in China
• If you do not register your IP, someone will do it against your business
• Registering IP in China serves offensive and defensive purposes
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Technology transfer to China
• Overview
• Scenarios involving tech transfer to China
• Why things are operated differently in China than the Western world – the two major “problems” in China
• Forms of IP in China – registered vs unregistered IP
• Different kinds of transfers & practical notes
• Take away message
• Q&A
29 October 19
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Forms of IP in China
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29 October 21
Registered rights are territorial in nature.
A trade mark/patent/design registered in
Europe has no rights in China, and vice
versa.
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One product – many IP rights
29 October 22
• Design - for phone shape
• Trade Mark - "NOKIA”
• Copyright - software, ringtones & images
• Patent - for technology to produce and operate.
Some pooled or cross-licensed, others kept
exclusive
• Trade secret - some technical know-how kept "in-
house" and not published
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Registered v Unregistered IP in China
29 October 23
Registered IP
• Registered trade mark
• Patent
• Invention patent
• Utility model
• Design
Unregistered IP
• Unregistered trade mark
• Copyright
• Trade secret
• Trade dress
• Unregistered design (not available in China)
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Trade secrets - characteristics
29 October 24
• Any information not available to the public
Advantages
• No registration required
• Protection can last forever as long as secret is maintained
Disadvantages
• Non-exclusive → can be circumvented by independent development
• Need to take substantive measures to maintain the secret
• Once breached, the public is free to use
• Only can target and claim damages from the person who made the breach
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Trade secrets in China
Typical scenario – an ex-employee joins a competing company,or even forms his own company using trade secrets from ex-employer
29 October 25
What does the employer need to
do to protect the company’s trade
secret?
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29 October 26
To successfully sue for breach of
trade secret by a person, you need to
prove:
– the information is indeed qualified as secret
– that person does not have the right to breach
– that person did know and breach
– the damages suffered by the petitioner
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29 October 27
• Usual defense – the secret was worked out
independently, for example by reverse engineering
• Relief – stopping that person from using/disclosing
the secret, and request compensation for the loss
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Technology transfer to China
• Overview
• Scenarios involving tech transfer to China
• Why things are operated differently in China than the Western world – the two major “problems” in China
• Forms of IP in China – registered vs unregistered IP
• Different kinds of transfers & practical notes
• Take away message
• Q&A
29 October 28
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Kinds of transfer
29 October 29
• Assignment
• Licensing
• In/out of China
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Assignment in China
29 October 30
• Prompt recordal is highly
recommended, otherwise:
– Rights to litigate are affected
– If the Assignor has dissolved or deceased,
subsequent recordal can become very
difficult
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Assignment in China - Patent
29 October 31
• Co-ownership of patent NOT recommended
• Unless otherwise specified, all co-owners can
practice and license the patent without each
other’s consent → possible for partner to give
license to competitor
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Licensing in China -
handling disputes
29 October 32
• Chinese judges “strongly” encourage
mediation
• If disputes are specified to be handled outside
of China, be careful that Chinese courts are
not obliged to honor the outcome of such
foreign proceedings.
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Licensing in China -
Monitoring licensee activities
29 October 33
• Excess products/over-runs produced – Licensee has to find a way to dispose excess
products while recovering cost → leak to the market
– Buy-back mechanism may avoid these from leaking to the market
• IP filings – Bad-faith registrations
– Developments
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Licensing in China –
Challenge on validity from licensee
29 October 34
Clause NOT allowed Allowed clause
Forbid licensee to challenge
validity
Immediate termination upon
challenge
Increases license fee upon
challenge
Request for a lump sum
upon challenge to defend
validity
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Licensing in China
–Handling of new IP
29 October 35
• New IP arises from development during cooperation, e.g. improvements on products
• Clauses prohibiting tech development in contract violates the Chinese Contract Law
• Should consider:
Mechanisms for good recordkeeping, for indentifying
inventors → determination of ownership
If ownership distribution cannot be decided at the start
of the project, mechanisms for discussion of ownership
and costs for establishing IP should be established
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Licensing in China –
Handling of new IP
29 October 36
• Inventions completed in China must obtain clearance before filing patent applications elsewhere.
• If IP is completed by more than one entity, for example A and B, then unless otherwise specified – A and B are co-owners of the invention – If B declares giving up patent application rights and
A eventually obtains the patent, B is entitled to practice the invention for free
– If A or B disagrees to apply for patent, then the remaining party cannot apply for patent on its own
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Licensing in China –
Handling of new IP
29 October 37
• Unless otherwise specified, when selling the new IP, default first-right-of-refusal to: – Inventor(s)
– Client of contracted research
– Co-owner of invention
• Contracted research – Unless otherwise specified, entity completing the
invention owns the patent application right
– However, client of the contracted research is entitled to practice the invention for free
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Licensing in China –
default implicit clauses
29 October 38
• For a patent license, Chinese Contract
Law:
– requires licensor to provide necessary
information, guidance and assistance to the
licensee to practice the invention → includes
trade secret?
– unless otherwise specified, licensee is
forbidden to sub-license without licensor’s
consent
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Tech transfer into/out of China
29 October 39
• Governed by the Chinese Patent Law
and the “Administrative Regulations on
Export and Import of Technologies”
• Three categories:
– “forbidden technologies”
– “restricted technologies”
– “free technologies”, which include all other
technologies that do not belong to the above
two categories
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Tech transfer into/out of China
29 October 40
• “Restricted technologies” and “forbidden
technologies”
• Lists maintained by the Chinese State Council
and updated occasionally
• Very specific
– “Forbidden technologies” are not allowed to be
transferred
– “Restricted technologies” must obtain special
approval before transfer
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Typical issues – freedom-to-operate
29 October 41
• Obstacles to business – Compliance
– Competitor’s IP
• Freedom-to-operate searches → identify competitor’s IP
• Once identified → Apply a strategy to deal with the issue
• Otherwise, may have to pay huge compensation to competitor
• Chint v. Schneider → settlement of 150 million RMB (about 17 million EUR) from Schneider to Chint
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Chint v. Schneider
29 October 42
Circuit breakers of Chint’s UM ZL97248479.5 (C, left) and Schneider’s
CN1186320A (S, right)
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Chint v. Schneider
29 October 43
Schneider’s earliest priority date
23 Dec 1996
Schneider’s publication date
1 Jul 1998
Schneiders CN filing date
15 Dec 1997
11 Nov 1997
Chint’s filing and priority date
2 Jun 1999
Chint’s publication date
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Freedom-to-operate – practical notes
29 October 44
• IP filings in China help defend your positions
• IP is also useful to defend against
infringement claims
• Quality of IP matters
• Difficulties in establishing evidence at
Chinese Courts for unofficial materials
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Chinese prior art search
29 October 45
• A lot of Chinese patent filings have not filed
abroad
• Not available in languages other than Chinese
• Good side – find relevant references to
invalidate patents elsewhere
• Bad side – potential freedom-to-operate
obstacles in China
• Highly recommend to do Chinese prior art
search
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Technology transfer to China
29 October 46
• Overview • Statistics on tech transfer in China • Scenarios involving tech transfer to China • Why things are operated differently in China
than the Western world – the two major “problems” in China
• IP due diligence – issues specific to China • Choosing a partner for Tech transfer • Different kinds of transfers & practical notes • Take away message • Q&A
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Take Away Message
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• Register your IP in China!!
• Decide on an RO, WFOE or JV
• Be very specific/explicit in all agreements of terms • (i.e. licensing!!)
• Do not rely on unofficial evidence when enforcing or • defending your IP
• Follow all official protocol to ensure smooth and • efficient filing
• Follow IP due diligence – watch out for translation • and local legal requirements
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Q&A
• Dr. Toby Mak
• Firm: Tee & Howe
• Patent Attorney / PhD In Chemistry
• Email: [email protected]
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Helpdesk Guide: Guide to Technology Transfer to China
To access all our publications click here
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Upcoming Helpdesk Events
Save the dates of our upcoming events: Upcoming Training Events in China: 6 November, Beijing: Briefing to 'Made for China' Trade Mission 13 November, Shanghai: Protecting Your Company's Intellectual Property in China 14 November, Shanghai: Partnering for Success: Finding and Working with Chinese Business Partners 21 November, Beijing: Partnering for Success: Finding and Working with Chinese Business Partners
Upcoming Training Events in Europe: 14 November, London: IPR Protection for Making and Selling Fashion in China
Upcoming Webinars: 8 November: IPR Protection in China for EU SMEs from the Toy Industry
FOR MORE INFORMATION ON THESE EVENTS
CLICK HERE
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Thank you
The China IPR SME Helpdesk provides free, confidential, business-focused advice
relating to China IPR to European Small and Medium Enterprises (SMEs).
Helpdesk Enquiry Service – [email protected]
Training & Events
Materials
Online Services - www.china-iprhelpdesk.eu
For more information please contact the Helpdesk:
Room 900, Beijing Sunflower Tower
No. 37 Maizidian Street
Chaoyang District
Beijing 100125, P.R. China
Hotline number: +86 (10) 6462 0892
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