Protecting Your Intellectual Property in Hong Kong

A Hot Tip about Corporate Law in Hong Kong SAR

Posted on: 25 Mar 2010

Introduction

Several general principles are important for effective management of intellectual property rights (IPR) in Hong Kong and Macau. First, it is important to have an overall strategy to protect IPR. Second, IPR is protected differently in Hong Kong, Macau and the U.S. Third, rights must be registered and enforced in Hong Kong and Macau, under local laws. Companies may wish to seek advice from local attorneys or IP consultants. The U.S. Commercial Service can provide a list of local lawyers upon request.

 

It is vital that companies understand that intellectual property is primarily a private right and that the U.S. government generally cannot enforce rights for private individuals in Hong Kong and Macau. It is the responsibility of the rights' holders to register, protect, and enforce their rights where relevant, retaining their own counsel and advisors. While the U.S. Government is willing to assist, there is little it can do if the rights holders have not taken these fundamental steps necessary to securing and enforcing their IPR in a timely fashion. Moreover, in many countries, rights holders who delay enforcing their rights on a mistaken belief that the USG can provide a political resolution to a legal problem may find that their rights have been eroded or abrogated due to doctrines such as statutes of limitations, laches, estoppel, or unreasonable delay in prosecuting a law suit. In no instance should USG advice be seen as a substitute for the obligation of a rights holder to promptly pursue its case.

 

It is always advisable to conduct due diligence on partners and give your partners clear incentives to honor the contract. A good partner is an important ally in protecting IP rights. Keep an eye on your cost structure and reduce the margins (and the incentive) of would-be bad actors. Projects and sales in Hong Kong and Macau require constant attention. You should consider working with legal counsel familiar with Hong Kong and Macau laws to create a solid contract that includes non-compete clauses, and confidentiality/non-disclosure provisions.

 

Small- and medium-size companies should understand the importance of working together with trade associations and organizations to support efforts to protect IPR and stop counterfeiting. There are a number of these organizations, both Hong Kong and Macau or U.S.-based. These include:

• The U.S. Chamber and local American Chambers of Commerce

• National Association of Manufacturers (NAM)

• International Intellectual Property Alliance (IIPA)

• International Trademark Association (INTA)

• The Coalition Against Counterfeiting and Piracy

• International Anti-Counterfeiting Coalition (IACC)

• Pharmaceutical Research and Manufacturers of America (PhRMA)

• Biotechnology Industry Organization (BIO)

• Intellectual Property Department of Hong Kong

• Macao Customs Service

 

IPR Resources

A wealth of information on protecting IPR is freely available to U.S. rights holders. Some excellent resources for companies regarding intellectual property include the following:

• For information about patent, trademark, or copyright issues -- including enforcement issues in the U.S. and other countries -- call the STOP! Hotline: 1- 866-999-HALT .

• For more information about registering trademarks and patents (both in the U.S. as well as in foreign countries), contact the U.S. Patent and Trademark Office (USPTO) at: 1-800-786-9199.

• For more information about registering for copyright protection in the U.S., contact the U.S. Copyright Office at: 1-202-707-5959.

• For U.S. small- and medium-size companies, the Department of Commerce offers a "SME IPR Advisory Program" available through the American Bar Association that provides one hour of free IPR legal advice for companies with concerns in Brazil, China, Egypt, India, Russia, and Thailand.

 

- For an in-depth examination of IPR requirements in specific markets, toolkits are currently available in the following countries/territories: Brazil, Brunei, China, Egypt, European Union, India, Italy, Malaysia, Mexico, Paraguay, Peru, Russia, Taiwan, Thailand, and Vietnam.

• The U.S. Commerce Department has positioned IP attachés in key markets around the world.

 

IPR Climate in Hong Kong and Macau

The best protection for an American company is to make sure that its products are available in the local market in authentic form. Local agents, dealers and partners also have a strong incentive to stop any piracy or counterfeiting and, with good local connections, have a better chance of making that happen than an American company that is not actively participating in the market. In Hong Kong, the chief law enforcement agency for IPR is the Hong Kong Customs and Excise Department, which works closely with affected industries and conducts vigorous anti-piracy and anti-counterfeiting operations. However, protecting copyrights or trademarks takes vigilance.

 

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Posted: 25 March 2010