How to Protect Your IP When You Move Your Manufacturing Out of China

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Fred Rocafort

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With no sign of peace breaking out any time soon on the US-China trade front, an increasing number of businesses are turning their eyes toward alternative manufacturing destinations, such as Vietnam, Thailand and Mexico. Such relocations present all sorts of new and different headaches, but I suspect that before long many folks will look back at their China days and ask, “why didn’t we do this sooner?”

Business is business, and whether the beaches near Bangkok are better than those near Beijing (they are, of course) or the coffee in Saigon is better than in Shenzhen (it undisputedly is) or the people are friendlier in Puebla than in Shanghai (they are!) is ultimately of no consequence when thinking of the bottom line. The point, however, is that once companies get a handle on the challenges of relocation, many will see the “new” kids on the block are actually pretty good places to do business. They may have preferred to stay put in China and avoid the hassles of moving—but when all is said and done, they will see that, give or take, the Vietnams, Thailands and Mexicos of this world are just as viable and in a whole host of ways even better, all things considered.

Unfortunately, one area where things are not likely to get better for foreign companies is intellectual property rights (IPR) protection. That may be hard to believe to those who have had their products blatantly counterfeited in China, but IPR protection is not necessarily better in the lands across the Red River. According to the U.S. Chamber of Commerce’s IP Index 2023, China’s score on protecting IP is about half that of the United States and Britain, but it is higher than Vietnam, Thailand, Colombia, Malaysia, and Indonesia, with Mexico just one tiny notch higher.

These Chamber of Commerce rankings necessarily reflect mostly in-country written legal protections. They do not much account for the likelihood of your own manufacturer or your own employees or anyone else stealing your IP, nor do they reflect whether the theft of your IP will include your product showing up on Alibaba or on some other international online marketplace for sale around the world. On these things, China is still by far in the unofficial first position. These rankings also do not reflect how the likelihood of your IP being protected in China depends on whether your product is central to China’s security or technological future. Nonetheless, the other countries to which so many foreign companies are increasingly moving their manufacturing are not IP paradises by any means.

As when in China, in the face of a reduced ability to rely on the legal system for protection, savvy businesses must do all they can to protect themselves—and protection starts at home. Through preventive efforts at their manufacturing facilities, businesses can go a long way towards minimizing IP theft and related risks.

What sort of prevention are we talking about? Obviously, you want to guard against unauthorized (i.e., third shift) production by your suppliers. You will also want to prevent sensitive prototypes from being photographed or extracted, as well as digital files with design specs from being leaked. You will also want to exercise strict controls over materials that could help criminals improve the quality of their counterfeits of your products, such as genuine accessories.

Clear, comprehensive guidelines are a cornerstone of product security in China and everywhere else. If you have experienced professionals on your payroll, they can draft those guidelines, but you should not wing it. Copying and pasting something you find online is not going to account for specific countries, specific products, or even specific factory conditions. For instance, in some locations, legal protections or labor agreements may prevent workers from being directly recorded by CCTV. If that’s the case, you will need to find a workaround to monitor staff at key locations.

Having established guidelines, the next step is to ensure that your staff actually comply with them. Though some factories do a good job monitoring themselves, most don’t. This is why you need specialized compliance audits, by professionals who understand the underlying risks.

Beware of lazy auditors who sit for a couple of hours in an air-conditioned conference room, sipping coffee while ticking off checklist items based on self-serving answers from staff. Proper auditing requires getting your hands dirty—literally. Rummaging through trash is an essential part of any product-security audit. It’s no fun looking around a garbage dump in the middle of a tropical summer, but the finds can be worthwhile. I once audited a factory in Cambodia that was contractually barred from working for my client’s competitors. As we walked around, we saw nothing fishy in the main office, production floor or warehouses. But a casual peek inside a wastebasket in a side office revealed trashed work orders . . . . from a competitor, of course

In addition to rummaging through the trash, proper auditing requires meticulously inspecting equipment and materials. For example, looking inside idle equipment can reveal unauthorized production taking place off the books. We had a client who caught a supplier secretly misusing our client’s custom molds at night to produce excess units to sell on the gray market. This came to light when an auditor opened up a dusty, “out of order” compression molding machine that should not have contained fresh plastic scraps.

Vigilant inspection and testing is tedious but critical. You can’t just rely on asking questions or reviewing documents provided by the supplier. Effective audits require auditors willing to scrape, poke, and prod to uncover irregularities.

Just as is true with China, (see China Trademark Theft. It’s Baaaaaack in a Big Way) you also need to register your IP with the relevant authorities. And oftentimes most importantly, your contracts with your supplier must include product-security considerations, such as your right to audit facilities and provide remedies for IP-related breaches. You also need country specific NNN Agreements and Manufacturing Contracts for each new country in which you are having your products made. See International NNN Agreements and Overseas Manufacturing Contracts (OEM, CM and ODM). You may also need a Product Development Agreement, and a contract protecting your molds and tooling. With all the tariffs and duties coming (and even occasionally going), you also should make sure one of your agreements with your supplier delineates who will ultimately be responsible for paying what.

Moving your manufacturing from China does not change the need to protect your product and your IP with appropriate auditing, proper trademark, patent, and copyright registrations, and country-specific manufacturing contracts.

Fred Rocafort

Fred leads Harris Bricken’s intellectual property practice and is the coordinator of the firm’s international team. Much of Fred’s practice consists of helping cannabis businesses protect their brands. He also works with entrepreneurs and companies entering the Web3 space, a new frontier for IP law. Prior to joining Harris Bricken, Fred worked overseas for more than a decade, in both government and private sector roles. Fred is a regular contributor to the award-winning China Law Blog and Canna Law Blog.Fred began his career overseas as a U.S. consular officer in Guangzhou, China, where he advocated for fairer treatment of American companies and citizens in China and for stronger intellectual property rights enforcement. After entering the private sector, Fred worked at a Shanghai law firm as a foreign legal advisor and later joined one of the oldest American law firms in China, helping foreign companies navigate the Chinese legal environment. He also led the legal team at a Hong Kong-based brand protection consultancy, spending most of his time out in the field, protecting clients against counterfeiters and fraudsters in Greater China, Southeast Asia and Latin America.In addition to his IP work, as a native Spanish speaker, Fred works closely with different Harris Bricken teams on Latin America and Spain matters. Fred also provides advice to cannabis industry participants and other businesses on import and export transactions.Fred is an ardent supporter of FC Barcelona—and would be even in the absence of Catalan forebears who immigrated to Puerto Rico in the mid-1800s.

Intellectual Property (IP), International Manufacturing

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