CHANG TSI
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The Norms for Enterprise Management of Intellectual Property, drafted by the State Intellectual Property Office and China National Institute of Standardization and published on March 1, 2013, provides specific guidance for the enterprise to manage its intellectual property (IP). Myriad enterprises, after realizing the key role played by IP in creating and sustaining competitiveness as well as enhancing the market value of enterprises, have come to attach great importance to strategic planning of IP and put the management of IP at the top of their agenda.
The foremost for the enterprise to manage IP is to have an IP strategy aligned with its business needs and characteristics. Such strategy should be established based on IP audit and in view of its products/services, resource allocation, competitive advantage, and synergy. IP strategy of the enterprise can be classified as sub-strategies on patent, trademark, trade secret, copyright, etc. When it comes to IP management one size doesn’t necessarily fit all. Enterprises may have different priorities in planning of these sub-strategies, the contents of which should differ on a case-by-case basis.
Management modes vary in the enterprise management of IP, among which the most popular is the mode of centralized management. Large multinational companies such as IBM and ITW have adopted this mode, where the headquarters or specialized IP companies hold all the IP portfolio of the group and follow unified (and also tailored) policies in their management. Quite a few corporate departments can be involved in the centralized management, such as those for research, acquirement, protection, and commercialization of IP. It is of great significance to clarify the functions of each of these departments in the fundamental IP policy of the enterprise.
As the enterprise develops its own IP portfolio, apart from efforts to ensure legal protection for it, how to vitalize and leverage it will stand out prominently, which reflects the consistence between IP strategy, which should be an integral part of the overall business strategy of the enterprise, and business needs, as well as the transformation from innovations to business development. IP can be commercialized either directly by the enterprise, through an assignment, or by building up business partnerships (such as licensing and franchising). In light of the 80/20 rule, it is advisable for the enterprise to entrust prosecution, enforcement, and document review regarding its IP, all of which account for 80% of its IP workload, to specialized agencies, and to keep commercialization of IP prioritized in its own work.
Managing IP at the enterprise level also demands the establishment of systematic policies. Under the fundamental IP policy, there should be specific rules, such as those on the protection of patent, copyright, trade secret, trademark, etc. Both the fundamental policy and the specific rules should be based on the overall IP strategy in their formulation and implementation.
IP workflow is essential to promote the efficiency of the enterprise management, which should cover all the processes including internal report, review by the department concerned, ascertainment of the project, submission of the application, follow-up on the prosecution, docketing of files, enforcement of rights, and commercialization. Particulars of the workflow may vary a lot depending on the types of the IP concerned, which can be seen in the great difference between the patent workflow and the trademark workflow. Plausible and fluent workflow will be conducive to business development and can get internal departments respectively on research, acquirement, protection, and commercialization involved in an effective way.
The enterprise management of IP is playing a more and more significant role in the knowledge economy. While the foregoing illustrated points shed light on the overall planning of this matter, enterprises will find it indispensable to take efforts to explore their own way of managing IP in accord with their needs and characteristics.
Chinese consumers are paying more and more attention to the unique design of products. Under such circumstances, design patent rights become increasingly important in market competition, and thus a target that infringers tend to attack. A strategy the infringers usually use during infringement lawsuits is to file a request for invalidation against the patent right.
Computer software, as a type of work, could be the subject of copyright law. Whether or not a software is copyrightable depends on two basic factors -Originality and Idea/Expression Dichotomy. Both U.S. and Chinese Law and practice shall be discussed herein since the U.S. statutes and application effects a lot to Chinese.
The Anti-Unfair Competition Law of the People’s Republic of China was revised at the 30th Session of the Standing Committee of the 12th National People’s Congress of the People’s Republic of China on November 4, 2017. This Law will be implemented as of January 1, 2018, and is revised for the first time after 24 years since the Anti-Unfair Competition Law of the People’s Republic of Chinawas enacted in 1993.
