Why NDAs Are Useless for Protecting Your Intellectual Property in China
Since we started this blog, we have emphasized the importance of using NNN Agreements for China, and not Western Style NDA Agreements. Most companies now understand this, but twice in the last few weeks I have had to tell an American company that it likely would not be able to stop its Chinese manufacturers from manufacturing the American companies’ products and selling them to others because the NDA they had used with their Chinese manufacturers were likely ineffective in stopping what its manufacturers were doing. See It’s Perfectly Legal for Your Chinese Manufacturer to Copy Your Products.
The first step in doing OEM manufacturing in China is to find a good factory to make your product. This is a dangerous stage and too many make the mistake of trying to protect their IP with an NDA (a nondisclosure agreement) rather than with an NNN Agreement (non-use, non-disclosure, non-circumvention) enforceable in China. In this post I explain why NDA agreements are not what you want.
I have reviewed hundreds of NDA agreements used in China and few of them have been of any use to the foreign party. The reason is technical, so stick with me because understanding the technical legal issue will provide the key to figuring out what you need to do. An NDA agreement is focused on protecting trade secrets. Trade secrets are a form of intellectual property, just like trademarks, patents, and copyrights. The essence of a trade secret is simple: to be protectable property, the information must remain a secret. If the “secret” is revealed to the public, there is no more protectable property.
The Problems with NDA Agreements
Focus on Trade Secrets and Public Disclosure
NDA agreements are focused on preventing disclosure of the trade secret to the public. That is their sole purpose, and once public disclosure occurs, there is no more property right in the information and any associated NDA agreement is no longer valid. Good NDA agreements are therefore narrowly focused on preventing the secret information from being revealed to the public.
Most lawyers in the United States and Europe seek to maintain their domestic intellectual property portfolio. Trade secrets are created by law and these lawyers are therefore concerned with ensuring protection of the trade secrets in their portfolio. For this reason, it is natural for an American or European lawyer to draft a single NDA, subject to U.S. or maybe British law, written in the English language and exclusively enforceable in some U.S. state or in the UK.
But this kind of NDA is of no value in China. There are two reasons for this:
Limited Scope and Jurisdiction
1. The fundamental issue in China is not protection from disclosure to the general public. The Chinese factory that steals your idea is not planning to disclose that to the general public. The factory that steals your idea is planning to use it for its own benefit. You therefore need a contract that prevents the factory from doing this. The prohibition must be based on the contract, not on the concept of something being a secret. The contract must be clear that it does not matter whether the information provide to the Chinese factory is a secret or not. By contract, the Chinese factory is agreeing not to use the information in competition with you. The typical NDA does not work because its language does not fit the actual situation. What is needed is an NNN Agreement.
2. The other fundamental problem with the typical European or U.S. style NDA is that the agreement is not enforceable in China. Chinese law allows for protection of trade secrets. Chinese law also allows for contracts that provide for complete NNN protections. But for such a contract to be easily enforceable in China it must be governed by Chinese law, be governed by the Chinese language portion of your contract, and be exclusively enforceable in a Chinese court. We explained in detail why this is true here.
I meet often with American and European entrepreneurs working to manufacture new and innovative products in China. I ask them whether they have already given away their idea to the Chinese side? The common response is, “no, I have not, because I used an NDA drafted by my U.S. (or European) intellectual property lawyer.” In every one of those cases where I reviewed their NDA, I had to explain that their NDA was useless. In virtually all these situations, the entrepreneur already gave away their critical ideas and fixing this will be difficult, perhaps impossible.
Securing Your IP with NNN Agreements
The solution is simple: use an NNN agreement enforceable in China. My law firm’s international IP lawyers have drafted 1000+ NNN Agreements for China, Vietnam, Thailand, Mexico, Taiwan, etc., and maybe five NDAs in total for these same countries.
