China design patentsOne of the most common things our China lawyers do is help protect our clients’ IP when they first go into China. One of the most common subsets of that work is protecting our clients before they start to manufacture their products in China.

On that front, one of the things we virtually always discuss is what the client can do to protect itself from its own manufacturer by contract and overall in China from everyone (including the client’s own manufacturer) by registering their intellectual property in China.

The intellectual property we help our clients register can be an invention patent, a utility patent, a design patent, or a trademark or a copyright, all depending largely on the particular sort of intellectual property needing protection and the client’s particular situation and stage.

On the contract front, early on we typically recommend an NNN Agreement, a Product Ownership Agreement, a Product Development Agreement, and/or a China OEM Agreement (a/k/a a China Supply Agreement or a China Manufacturing Agreement) again, largely depending on the particular IP needing protection and the client’s particular situation and stage.

In an ideal world, our China lawyers work with our clients to pick and choose from the above with cost as now object. But rarely do our clients have unlimited budgets and so most of the time we have to work with them to determine which of the above are absolutely necessary, which of the above will have the most “bang for the buck,” and which of the above are not all that necessary or can wait.

One of the most common questions with which we have to grapple is whether our client should focus on its China IP registrations or its China manufacturing contracts. If the client has only enough funds for one thing, should it use those funds to register its trademark in China, its design patent in China, or to have an China-focused NNN Agreement it can use with all China companies to which it will be revealing its secret sauce?

Unfortunately, there is nothing even close to a one size fits all China IP protection strategy because there is nothing even close to a one size fits all China IP situation. So there is little I can tell you here about how to prioritize the above.

We would though love to hear from you-all on how you have prioritized your China IP protective measures and why you did what you did and, most importantly, how it has worked out for you.

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Photo of Dan Harris Dan Harris

Dan is a founder of Harris Bricken, an international law firm with lawyers in Los Angeles, Portland, San Francisco, Seattle, China and Spain.

He primarily represents companies doing business in emerging market countries, having spent years building and maintaining a global, professional network. 

Dan is a founder of Harris Bricken, an international law firm with lawyers in Los Angeles, Portland, San Francisco, Seattle, China and Spain.

He primarily represents companies doing business in emerging market countries, having spent years building and maintaining a global, professional network.  His work has been as varied as securing the release of two improperly held helicopters in Papua New Guinea, setting up a legal framework to move slag from Canada to Poland’s interior, overseeing hundreds of litigation and arbitration matters in Korea, helping someone avoid terrorism charges in Japan, and seizing fish product in China to collect on a debt.

He was named as one of only three Washington State Amazing Lawyers in International Law, is AV rated by Martindale-Hubbell Law Directory (its highest rating), is rated 10.0 by AVVO.com (also its highest rating), and is a recognized SuperLawyer.

Dan is a frequent writer and public speaker on doing business in Asia and constantly travels between the United States and Asia. He most commonly speaks on China law issues and is the lead writer of the award winning China Law Blog. Forbes Magazine, Fortune Magazine, the Wall Street Journal, Investors Business Daily, Business Week, The National Law Journal, The Washington Post, The ABA Journal, The Economist, Newsweek, NPR, The New York Times and Inside Counsel have all interviewed Dan regarding various aspects of his international law practice.

Dan is licensed in Washington, Illinois, and Alaska.

In tandem with the international law team at his firm, Dan focuses on setting up/registering companies overseas (via WFOEs, Rep Offices or Joint Ventures), drafting international contracts (NDAs, OEM Agreements, licensing, distribution, etc.), protecting IP (trademarks, trade secrets, copyrights and patents), and overseeing M&A transactions.