The most important things you should do before sending your product specification or design files to your manufacturer/supplier in China is registering trademark and file patent applications for your product. There is no effective way to prevent your supplier from stealing or leaking the design of your product after getting the product specification. But the good news is that you can make it illegal to sell products that copy your design ideas, preventing further loss. This brings us to the issue of intellectual property protection
What Is IP Protection?
Intellectual property protection refers to the protection of intellectual creations such as inventions, literary and artistic works, symbols, names and images created by the mind. Intellectual property (IP) is divided into two categories: Industrial property & copyright.
Industrial property includes but is not limited to patents for inventions, trademarks, industrial designs and geographical indications.
Copyright includes literary works such as novels, as well as artistic works such as paintings, photography, sculpture, web pages and architectural designs. And other rights related to copyright such as performing artist’s right to perform.
Can A Signed Confidentiality Agreement Protect Your IP?
The answer is no. Non-Disclosure Agreements is not effective as you may think. Because the NDA is binding only on your direct suppliers, it can’t prevent other suppliers from copying your products. And if your direct supplier wants to break the agreement, there are many ways to do it, such as using a relative’s name to produce the product. Even if the company signed the NDA and decides to respect it, these could still happen:
- They may send files to their suppliers to get quotations of materials and parts.
- Their employees may leak your files.
- Their poorly maintained IT infrastructure may get hacked (easily).
How to Protect IP?
The best way is to register at least both in manufacturing country and your target market. Here takes registration in China as an example. The most common IP registrations in China are trademarks, design patents and utility patents.
In layman’s word, your trademark is your brand name and logo. Say you have a great product idea and want to find a manufacturer in China to make the idea into products. What’s the first thing you should do before reaching out to the manufacturers?You must have registered the trademark. In China, whoever files a trademark gets it first. If someone register your trademark first, he could legally prevent your goods from leaving China, since your products violate his intellectual property. The same applies to patents.
Trademark Registration in China
According Chinese Trademark Law, A foreign company without a presence in China must work with a Chinese trademark agent to register a trademark. However, if your company does have Chinese branch or so, a Chinese trademark agent is not required. Despite that, we would still recommend that you hire a trademark agent to assist and accelerate the process.
- Register a trademark online or by an agent
- Register both in main markets and manufacturing country
- Trademark registration in China is free and the validity period is 10years
You should apply not only in your country or target market, but also in China even if you are not planning to sell your products there. If a malicious supplier were granted patent of your product design, they could prevent your goods from leaving China at the customs. Preparing for patent application documents is a highly technical and time-consuming job. Therefore, we suggest you find a patent agent.
If you are planning to do it yourself, the following information might help:
- European Patent Office: China Patent Information
- United States Patent & Trademark Office: Pursuing International Patent Protection – China
A patent gives you exclusive right to make profit from the design or function of your product. There are two types of patents:
A design patent protects the unique visual qualities of a product. It may be granted if your product has new design for the shape, pattern and color of the products.
- It takes 3-6 months to register in China
- Need to pay an annual fee
Utility Patent, also known as “patent for inventions”, covers the creation of a new or improved product. It can be a new technical scheme for the shape and structure of a product It forbids others from using or selling the invention with authorization from the patent holder.
- It takes almost 8 months to register in China
- For physical objects only
- Need to pay an annual fee
How to Avoid Violating Other’s IP for ODM Products?
When buying factory designed products from your supplier in China, there is a risk of violating other companies’ intellectual properties. The factory may claim the product was designed by them but they may just have copied the product of their previous client. You may face force recall of your product if you import these goods. You can take the following measures to avoid this risk.
1. Searching Amazon Listings
If there is only one company making and selling the product of a particular design or function, it’s highly likely that they have filed and been granted patent of the design/function. Therefore, nobody else are allowed to use the design/function unless otherwise authorized by the patent owner.
2. Searching Trademarks
Search for the existing trademarks. Here are some links:
European Union: https://euipo.europa.eu/ohimportal/search-availability/
United Kingdom: www.gov.uk/search-for-trademark
3. Searching Patens
Search online databanks for existing patents and compare them to the offerings of your ODM manufacturers. Here are some links:
United States: www.uspto.gov/patent
European Union: www.epo.org/search-for-patents.html
United Kingdom: www.gov.uk/search-for-patent
When working with a Chinese company, do not trust a NDA. Always remember to register trademarks and patents with your own company’s name.