One 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.