IP LAWS Formalities (Introduction)
IP laws formalities means the procedure for obtaining and maintaining intellectual property rights.
For copyright law, no formalities are required, but right is territorial. A work is protected by law when it is created, provided it meets the requirements for copyright protection. In China, registration for a copyright (at the Copyright Center of China) is optional, and can provide a 'prima facie' evidence(初步的证据，表面证据) of copyright ownership, in courts action. 作品的原件，底稿，相片底片，出版书，以及版权登记证书，转让，继承合同都可以作为版权归属的证明。
In Trademark and Patent law, you need to obtain the right! And each law has a detailed process: Application, Examination and Grant.
These two rights are also 'territorial', registration required for each territory for which protection is required, or go through international filing process, via international agreements, for instance Patent Co-operation Treaty, Madrid Protocol.
TM & Patent need to be maintained. Maintaining the right requires a renewal fee. TM lasts forever, as long as in use, and renewal to be made every 10 years. Patent last 20 years, and to be renewed on payment of fee every year.
Trademark law
Obtaining a trademark
TM Authorities: China National Intellectual Property Administration(CNIPA) has two TM authorities
- Trademark Office(CTMO)
- Trademark Review and Adjudication Department(TRAD) CTMO formulate Trademark Examination Guidelines and perform examination through to grant, cancellations and renewals. TRAD reviews CTMO decisions. Decisions made by TRAD can be appealed.
TMs are obtained for goods or services. In WIPO, 32 classes for goods & 11 classes for servides are classified, which is a NICE CLASSIFICATION, NICE Agreement between member states.
Steps: 1. Brand name, logo selected, class selected. 2. Search to confirm if available for registration(A TM indicate source of goods. so must not be identical or similar to registered TMs for identical or similar goods.) 3. application to CTMO
Application: takes 18~24 months
| Application-> | Opposition-> | Grant |
|---|---|---|
| A.4 & Chapter II TM Law | A.4 & Chapter III TM Law | A.4 & Chapter II TM Law |
| Day application made - Filing date | A.33&35 Trad review,if needed | After publication in TM Gazette, have right to use ™ |
File first in home country - 'filing data' - 'priority date' for international application.(Madrid protocol. Madird is an international trademark system in up to 122countries.)
Maintaining a trademark
Chapter IV TM Law
- Initially valid for 10 years
- To be renewed every 10 years - fee
- If not used for 3 consecutive years - cancelled. A. 49
Invalidating the TM
Chapter V TM Law: Grounds for invalidation
- A.44 - not in accordance with A.10, 11, 12 e.g. March 2020 CTMO rejected applications for Huoshenshan and Leishenshan/Zhongnanshan/Li Wenliang. TM not distinctive/lose its distinctiveness.
- If obtained throug fraud or illegally.
- A.45 - if conflicting with prior rights(5 year limits for the prior rights' holder to request the new TM review to declare the registered TM invalid )
Patent law
Obtaining a patent
Patent Authorities: China National Intellectual Property Administration(CNIPA) has two patent authorities
- Chinese Patent Office
- Patent Review Board Chinese patent office formulate patent examination guidelines, and examination and grant of patents. Patent Review Borad execute invalidation proceedings.
Application: It takes 3~5 years from application to grant.
| Preliminary examination | ->Substative examination | ->Grant |
|---|---|---|
| claims, abstracts... | novel and inventive | or refuse |
In PRC PL Chapter III, it states the application to meet requirements using a Patent Specification.
Patent Specification(contents and their requirements):
- Abstract
- Description, including drawings sufficient disclosure(in A.26, clear and comprehensive description so that..) of technology, to allow person skilled in the art to work the invention
- Claims It determines the scope of the grant protection.(also stated in A.26) i.e. the limits of exactly what the patent does, and does not cover.
International filing: File in any country or at WIPO. Filing date of application is the 'priority date'.
Maintaining a patent
PRC CL Chapter IV Patent term is 20 years from date of filing of the patent. Renewal fee to be paid every year for the duration, and it increases with time. 年份：更新费用。1：900，7：2000，12：4000，15：8000.
Invalidate a patent
After granted, any person can make request to the Patent Review Board on ground that requirements not met. PRB decision can be appealed to the court.
