My Book


This is a book I co-published with Gordon Harris (Head of IP of Wragge Lawrence Grahma & Co, UK) on Chinese IP:

"Chinese Intellectual Property - A Practitioner's Guide", Chinese Intellectual Property Publishing House, ISBN 978-7-5130-1713-8
This book summarises our years of experiences of serving our clients on every aspect of Chinese intellectual property. It is designed to be a highly practical handbook, dealing with the full range of IP rights and the full range of situations, from basic advice on registration strategy, to detailed advice on dealing with rights which arise during the course of employment, as well as practical guides on conducting IP infringement actions in China.

TABLE OF CONTENT
Practice notes on design filing. 5
Notable changes of amended patent law.. 8
Choosing private investigators for anti-counterfeiting work. 13
Legal grounds for combating pirated trade marks 17
Toolbox for trade mark opposition. 20
Evidence checklist for trade mark opposition/cancellation. 21
Intellectual property recordal at Customs 26
Four courses of action for IP enforcement 28
General strategies for IP enforcement 31
General strategy of IP complaint at Canton Fair 33
Practical tips of making IP complaints at Canton Fair 35
Practical tips for notarised trap purchase. 39
Dealing with infringers using false company address 40
Letter of consent relating to trade marks 44
Establishing copyright ownership. 46
Evidence of trade mark use. 48
Pragmatic anti-counterfeiting by risk/benefit analysis 51
Notes on partial designs 53
Contributory infringement of foreign supplier 54
IP holding company. 59
Evidence for well-known trade marks 61
Action plan for patent infringement 64
Typical process of patent infringement action. 69
Chinese character trade marks 72
Tips on translating trade marks 73
Collective trade marks 75
A primer for intellectual property registration. 76
A primer for unfair competition. 81
A primer for intellectual property enforcement 84
Domain name registration and compliance. 87
Legal grounds for domain name disputes 89
IP registration beyond mainland China. 92
Utility model coupled with an invention patent 93
Proving bad faith in trade mark dispute. 95
Notable features of trade mark assignment 97
Requesting an open hearing for trade mark cancellation. 100
Summary of patent registration requirements 102
Summary of trade mark registration requirements 113
Summary of copyright recordal requirements 122
Copyright registration of computer software. 124
Employee inventor compensation. 126
Technology transfer – three categories of technology. 127
Inventions made-in-China. 129
Trade mark piracy by the agent or representative. 132
Trade name vs. trade mark. 134
“Right of name/portrait” vs. trade mark. 136
Determining the similarity of goods/services 140
Determining the similarity of trade marks 145
Notable features of patent prosecution. 158
Recognition of well-known trade marks 163
Determining the similarity of designs 166
Requirements for design drawings 168
Trade mark infringement in OEM.. 170
Paying bond for Customs seizure. 172
IP complaint at B2B websites 175
The consequence of double patenting. 178
Double standard for the skilled artisan. 181
Electronic evidence in IP litigation. 184
Copyright in the course of employment 187
Fair use of copyright 190
Prior use defence in patent litigation. 193
Provisional protection of patent application. 195
Prosecution history estoppel in patent litigation. 197
China’s National IP Strategy. 199
Appendix. 204
Patent Law of the People’s Republic of China. 204
Trademark Law of the People's Republic of China. 234
Copyright Law of the People's Republic of China. 261
Law Against Unfair Competition of the People's Republic of China. 292
Trademark Registration Flow Chart 304
Patent Registration Flow Chart 304

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