Book Review of IP Protection in China

IP Protection in China (Donna Suchy, ed.) is a 359 page compilation of articles introducing China’s patent, copyright, trademark, trade secret and antitrust regimes. The book has been prepared by 20 experts, and includes model IP and labor contracts. It is available to American Bar Association – Intellectual Property Law Section members for $109.95, or $139.95 for non-members.

This book is an excellent collection with a particular strength in explaining laws and practices, including patent and trademark prosecution. It also gives very good overviews of proposed changes in legislation, much of which have been the subject of ABA comments. In addition, the book provides numerous practical tips on handling some of the hot bilateral IP issues – such as data supplementation for pharmaceutical patent applications, prosecution of patents for graphical user interfaces, trademark squatting, and on-line copyright enforcement.   This is a book intended for “a seasoned practitioner who has a firm grasp of U.S. law” (introduction of Elizabeth Chien-Hale, at p. x). As such, the comparisons it makes with US law on a wide variety of issues should also prove very helpful in introducing a range of IP issues to US and foreign lawyers, by addressing such issues as “how do design patent practice differ from the US?”, “what constitutes a well-known mark in the United States and China?”, “does China require fixation of copyrighted works?” and “what are the differences in definition of a ‘work’ between China and the United States?”, etc.

The book is less strong in the trade content of much of China’s IP development, including improvements in such areas as patent protection for GUIs and data supplementation. Oddly, European initiatives to engage China are singled out (p. 266), while 35 plus years of US government efforts to work with China on its IP system are hardly noted. As another example, there is no reference to China’s TRIPS commitment on trade secrets or numerous US-China Joint Commission on Commerce and Trade commitments.

Another area not as thoroughly addressed is control over exports of infringing products from China. The authors discuss the use of Customs remedies for control of products that infringe Chinese patents (pp. 108-109), trademarks and copyrights. Notably, China provides such remedies to address the export of infringing goods, while the U.S. and TRIPS agreement generally require such provisions only for the import of infringing goods. Moreover, the continuing, high level of seizures by US Customs of Chinese origin infringing products underscores both that the Chinese system is hardly perfect and that non-Chinese remedies are critical components to Chinese-origin infringement that affects global markets.   In that regard, another useful supplement to this book would be an introduction to US remedies that address Chinese-origin products and enter the US market and infringe US rights, such as the recent Gucci case, or the media box piracy case in California, the SI Group cases in China and at the ITC, or the Vringo NDA dispute with ZTE in New York involving patent licensing and Chinese antitrust matters.

In an era where TPP establishes the new benchmark for global IP protection, one wonders if references in the book to China’s WTO or TRIPS compliance are especially significant meaningful (p. x). Rather it seems, as the authors of the trade secret chapter have noted “more effort is needed to put the Chinese system more in line with international standards.” (p. 265).   Of course, discussing weaknesses in the Chinese system, does not imply that any system is perfect. However, it is difficult to argue that the Chinese system generally works very well when China has recognized numerous deficiencies in many areas such as trade secret litigation, weak patent enforcement, and onerous licensing requirements.

I believe that the book would have also benefitted by chapter that introduces the Chinese legal system including a more general overview of current legal reforms in IP in such areas as discovery, deterrent damages, case law, technology assessors in patent cases, etc., as well as understanding how to assess risk in litigation and prosecution strategies. As one example of this, in addressing preliminary injunctions (111-114, 231-232), high “grant” rates for provisional remedies are noted, however the low “application” rate is not discussed. This low application rate may be due to refusals to accept cases in the first instance, which results in inflated “grant” rates for provisional relief. Provisional relief can be especially critical in China due to the absence of discovery mechanisms to obtain evidence held by an adverse party, the high level of on-line infringements where evidence may be ephemeral, and lack of an effective patent linkage regime to link patent protection with pharmaceutical regulatory approvals.

The book also would have benefitted by a more careful proofreading of Chinese legal terms and a discussion of their relative significance. In Chinese legal terminology, laws, regulations (issued by the State Council) and rules or guidelines (issues by ministries) have different meanings and significance, which a US practitioner might benefit from better understanding (see, eg., pp. 149, 195, 305).

None of these suggestions should be understood to detract from the value of this book. It is a very useful and practical contribution to the literature in the area. It deserves to be on any foreign China IP practitioner’s bookshelf.


Three China/IP Positions Open

In what I hope is a good sign for the job market for next year, recently three China-related positions have opened up, all of which have IP as an area of focus.

In the private sector, the US Information Technology Office is looking for a new managing director. USITO is a trade group based in Beijing. USITO is involved in supporting US high tech industry in China.  USITO has been actively involved in IP issues in China in the past.

In Washington DC, the US Patent and Trademark Office (where I have my “day job”) is looking for a China IP program specialist. A law degree is not required. Instead the program requires experience and interest in running IP-related programs in China.   There are two announcements – one for applicants from outside the US government, and one for applicants from within the US government.  This position closes December 4, and is at the GS-12 – 13 level.  Applicants must be US citizens.
In addition the Department of Justice is looking for a state or federal prosecutor to go on detail to Hong Kong for a short term assignment (14 months). This position has a title of “Regional Intellectual Property Law Enforcement Coordinator” and includes obligations to: (1) assess the capacity of law enforcement authorities throughout the region to enforce intellectual property rights; (2) develop and deliver training and other capacity building formats designed to enhance the capacity of justice sector personnel to enforce intellectual property rights (3) assist in developing or strengthening institutions dedicated to enforcing intellectual property rights; (4) monitor regional trends in intellectual property protection and computer crimes; and (5) provide expert assistance in support of U.S. Government IP and computer crime policies and initiatives in the region. The deadline for applications is November 30.
Hopefully, these are signs of a developing job market in China IP-related matters in 2016!

More Guiding Cases on IP, and More Experiments on IP Case Law


Stanford Law School has just released eight new guiding cases, including including five IP and unfair competition cases covering trademarks, unfair competition, and software copyright.  The cases were determined to be guiding cases earlier this year by the Supreme People’s Court, and are available here.   Dr. Mei Gechik. the Founder and Director, China Guiding Cases Project, also has analytic reports on the CGC Project here.

Regarding IP-related matters, Dr. Gechik notes “the SPC’s confidence in providing guidance in intellectual property and unfair competition through GCs seems to have grown. Five out of the eight GCs released in 2015 Q2 cover these two areas. Of particular note, the SPC went beyond patent law to release cases that address issues in trademark law, as well as copyright law as applied in the protection of computer software.”

These guiding cases appear to me to be part of an increasing interest in developing a system of case precedent in China, particularly since the establishment of China’s IP courts, and the keen interest in developing precedent expressed by the Beijing IP courts, including a national conference on this topic on September 22, 2015 which set forth the role of the Beijing IP court as a national center for research on case guidance (案例指导研究基).

The prospects for Chinese case law, and IP case law in particular, was discussed at a recent IP judicial conference sponsored by the Federal Circuit Bar Association in Shanghai, which included a large turnout of both Chinese and US judges. Among issues discussed included the role of case law in adjudicating cases, the possibilities of introducing amicus briefs, the role of en banc decisions in making or reversing precedential cases, the binding effect of local court decisions and other issues involved in handling cases that are intended to have greater legal impact than determining only the rights of the parties involved in the law suit.

Of course, the development of precedent could be especially valuable to developing “transparency and predictability” for business people seeking greater legal predictable in their complex decision making processes, which would appear to be an important goal of an effort to enhance commercial rule of law between the US and China.

Interestingly these five cases were decided as long as eight years ago.  In addition, only one of these cases was decided by the Supreme People’s Court.  The remainder were adjudicated by local Higher People’s Courts.  From a common law perspective, this may not look like a system of precedent as we know it.  For example, if the cases are to have binding effect, how can past cases be recognized as precedential?   How/why should local cases affect decisions from other provinces? Or are the cases primarily intended for other purposes, such as education of the judiciary and public or to assist in development of a more limited body of case law? Nonetheless, whatever the role of case law will be in China, its development is overall a positive step that should be encouraged and Stanford Law School/Dr Mei Gechik are making a very important contribution to that effort.

Here is a quick summary of these five important cases, with links, that is drawn from the translation and analysis on the Stanford website.  All errors in my summary are of course, my own:

Guiding Case No. 49

Shi Honglin v. Taizhou Huaren Electronic Information Co., Ltd.  This dispute over computer software copyright infringement  involved circumstances regarding reversal of burden of proof when defendant refuses to release source code in a software copyright infringement case.

Guiding Case No. 48

Beijing Jingdiao Co., Ltd. v. Shanghai Naikai Electronic Science and Technology Co., Ltd.  This computer software copyright infringement dispute involved use of technological protection measures (TPM)  to restrict machines from reading the data stored in a file format, thereby ensuring that the machine bundled with computer software possesses a competitive advantage in the market.  The court determined that use of a TPM by this means is not a type of act taken by a copyright owner to protect its software copyright under the Copyright Law.

Guiding Case No. 47

Ferrero International S.A. in Italy v. Montresor (Zhangjiagang) Food Co., Ltd. and Zhengyuan Marketing Co., Ltd.  This unfair competition dispute is one of a few well known and widely commented cases involving Ferrero on trade dress and design protection in China.  This case holds that in order to determine whether a commodity is well known as used in the Anti-Unfair Competition Law, the court should consider a combination of various factors that demonstrate the circumstances under which the known commodity is protected — including sales period, sales regions, sales volume, and sales targets of that commodity within China, as well as the duration, extent, and geographical scope of publicity that has been carried out.

Guiding Case No. 46

Shandong Lu Jin Industrial Co., Ltd. v. Juancheng Lu Jin Crafts Co., Ltd. and Jining Lizhibang Home Textiles Co., Ltd.  This trademark infringement and unfair competition dispute involved a determination that “Shandong Brocade” (Lu Jin) had already become a generic name for textile products that possessed regional characteristics.  According to the court, a generic name can be an appellation established by the industry norm or it can also be the abbreviated name used as a convention by the public. The court noted that Shandong Brocade has a history of over a thousand years and that Shandong Brocade has been generally recognized by the State mainstream media, various kinds of specialized newspapers, and the news media of Shandong Province.  Reference books on arts and crafts and fine arts have confirmed that “Shandong Brocade” is a type of  cotton folk textile product that is hand made in Shandong.  The case’s decision implicates not only what constitutes a generic geographical term, but also the role of traditional knowledge/intangible cultural heritage in defining whether a term is generic and how to handle the relationship between these terms and the trademark system.

Guiding Case No. 45

Beijing Baidu Netcom Science and Technology Co., Ltd. v. Qingdao Aoshang Network Technology Co., Ltd. et al.  This unfair competition case addressed acts by Aoshang Network Company and Unicom Qingdao Company which involved their advertising popping up when network users log onto the Baidu website to conduct keyword searches through the Internet access service provided by Unicom Qingdao.  The court determined that this practice violated the good faith and business ethics and was within the scope of prohibited acts under Article 2 of the Anti-Unfair Competition Law.

Photo from recent FCBA program with East China University of Politics and Law.

SISVEL Vs. Haier: First German FRAND Case Decided Post Huawei vs. ZTE

The information in this blog comes to me via the German law firm of Arnold Ruess and the English language website of IAM (Joff Wild) (Nov. 12, 2015).

In what is apparently Germany’s first decision relating to FRAND and standards essential patents (SEPs) since the European Court of Justice’s decision in the Huawei vs. ZTE case, the Italian company Sisvel has been granted injunctive relief by the Düsseldorf Regional Court after a finding by that court that Sisvel’s patents had been infringed by Haier (Cases 4a O 93/14 and 4a O 144/14) (Nov. 3, 2015). The judgments are based on the German patents that belong to the Sisvel wireless patent portfolio. The judgements have not yet been appealed.

According to the IAM translation of the Arnold Ruess news release, the Court made the following determinations regarding the FRAND defense raised by Haier.

“The Court … held that the FRAND defense raised by Haier was not successful as it had not complied with the … requirements [of Huawei vs. ZTE]. It therefore did not need to decide on the preliminary question whether the FRAND defense was applicable at all as, …this would only be the case if the SEPs in suit actually conferred SISVEL with a market dominant position.

The Court found that SISVEL had complied with point 1 (information on patent infringement) [of Huawei vs ZTE]. In cases where the action was filed before [Huawei vs. ZTE] … was rendered, it is sufficient that the infringer gains knowledge about the infringement via the statement of claims.

The Court also confirmed that SISVEL had made a suitable license offer to Haier. It is sufficient if the license offer is addressed to the mother company of the alleged infringer in order to initiate negotiations. It would be a mere formality if a patent holder had to address all affiliates of a group separately.

The Court did not have to dwell on the details of whether SISVEL’s offer was FRAND and also left open whether Haier was already excluded from the FRAND defense as it had not reacted in a timely manner [as required Huawei vs ZTE, which would have mandated that if SISVEL does not accept the counter-offer, Haier had to render account and provide security for the payment of past royalties.]

… The Court in addition held that such rendering of account and the provision of a bond has to take place within a month after the rejection of the counter-offer by the patent holder.”

Huawei vs ZTE and its relationship to proposed NDRC IP abuse guidelines are discussed in further detail here.

I look forward to reading this important decision in full.

Global Antitrust Institute Releases Its Comments on NDRC IP Abuse Rules

Attached are the English and Chinese comments of George Mason’s University Global Antitrust Institute (GAI) on the draft NDRC Guideline on Abuse of Intellectual Property Rights.  The comments were prepared by Koren W. Wong-Ervin, Professor Joshua Wright, Judge Douglas Ginsburg, and Professor Bruce Kobayashi.

I previously distributed on this blog the GAI’s response to the NDRC questionnaire here. Overall, these additional comments of GAI urge the NDRC to recognize throughout its Draft Guideline an IPR holder’s core right to exclude as a “legitimate” or “legal” use of IPRs, and to incorporate the “but-for” approach taken by the U.S. antitrust agencies of comparing the competitive impact of the IPR use against what would have happened in the “but for” world in the absence of a license.

The GAI’s comments also focused on the issues of applying “unfairly high price” prohibitions on IPR royalties. The GAI asked the NDRC to 1) explicitly recognize that “reasonable” compensation should reflect the risk-adjusted break-even price; and (2) state that, in determining whether a particular royalty is “unfairly high,” the NDRC will calculate a reasonable royalty as a minimum floor baseline using the hypothetical negotiation framework from U.S. patent damages law. The patentee should have the opportunity to prove, in addition, its lost-profits as part of its damages, which would seem to be equal to the profits denied by the “unfairly high” pricing provision.  GAI emphasized that the goal of a reasonable royalty calculation is to replicate the market reward for the invention in the absence of infringement, and explained that comparable licenses are often the best available evidence of the market value of the patent. The comments also discuss use of the “Georgia-Pacific” methodology to help determine minimum rates for what a willing licensee and a willing licensor would otherwise have negotiated if an unfair pricing calculation is to be applied.

The comments also consider complex portfolio licensing by urging NDRC not to unduly take into account whether some expired patents are included in a portfolio. The commenters suggest that it would be impractical, if not impossible, for portfolio owners to constantly renegotiate licenses (or provide updated patent lists) every time an IPR in a licensed portfolio expires or, conversely, every time new IPR is added to the portfolio, both of which occur commonly.  As GAI notes, portfolios include patents with a variety of expiration dates and the parties to the license take the variety of expiration dates into account when negotiating a price.   Moreover, patent claims may change due to reexaminations, court and administrative proceedings, which can affect how they read on a particular technology over time.   In my own experience, most licensees are seeking freedom to operate from parties asserting patents, rather than a technical solution found in the patent itself.  Indeed, former Chief Judge Rader at a recent conference hosted by SIPO noted that one of the biggest differences he saw between being a judge and a private practitioner is that judges (and enforcement agencies) may look at litigation as patent-based or even claim-based, while the real commercial world is concerned with portfolios and freedom to operate considerations  I would add one other factor that the comments don’t mention involving licensing expired patents – the patents may still have some litigation value and considerable commercial value post expiration if relevant statute of limitations have not expired. In many cases, such as pharma patents, the principal value is to be found towards the end of the patent term. Moreover, if global licenses are entered into, longer statute of limitations in countries like the United States, (six years versus two years in China, and ten years in many other countries) should necessitate that Chinese licensees actively consider taking licenses on expired patents up until the relevant statute of limitations’ expiration.

The drafters also suggest rejecting that a refusal to license constitute an abuse of IP, noting that a patent exhaustion doctrine could also make refusals to license difficult to apply since licensors may choose to license its patents to a manufacturer, user or distributor.

The comments also suggest a cautious approach, using an effects analysis, in looking at discriminatory analysis. My own personal perspective is that China’s regulatory regime insures that non-discriminatory licensing is almost impossible to universally achieve. More specifically, there will likely be a certain amount of discriminatory licensing, as foreign licensors to Chinese licensees have to provide indemnities, non-mandatory grantbacks and access to markets under Chinese law which they will not need to provide elsewhere, or which Chinese licensors do not need to provide in their own domestic market or to foreign licensees.

The commenters also suggest that that “the NDRC not impose an AML sanction for merely seeking injunction relief” when a standards essential patent is involved, or at worst only deny injunctive relief when the licensor seeks “supra-competitive” royalties, i.e., is engaged in patent hold-up by seeking royalties that are not consistent with prior commitments by the SEP holder. Finally, the commentators direct NDRC to consider as a last alternative adopting a rule similar to the European Court of Justice decision in Huawei vs. ZTE. That case would provide a safe harbor for an SEP holder seeking an injunction that (1) prior to initiating an infringement action, alerts the alleged infringer of the claimed infringement and specifies the way in which the patent has been infringed; and (2) after the alleged infringer has expressed its willingness to conclude a license agreement on FRAND terms, and presents to the alleged infringer a specific, written offer for a license, specifying the royalty and calculation methodology.  The ECJ would then put the burden on the alleged infringer to “diligently respond” to that offer, “in accordance with recognized commercial practices in the field and in good faith,” by promptly providing a specific written counter-offer that corresponds to FRAND terms, and by providing appropriate security (e.g., a bond or funds in escrow) from the time at which the counter-offer is rejected and prior to using the teachings of the SEP.  This approach is necessary to take into account the conduct of both the patentee and the accused infringer when considering whether to impose an AML sanction and is especially useful in the Chinese context where the data suggests there is a high degree of under-licensing.

The GAI also provided comments on numerous other provisions, such as refusals to license, the essential facilities doctrine, bundling, cross-licensing, grant backs, and no-challenge clauses.

Thanks to GAI for making these comments publicly available. Distributing comments such as these, when affected parties may be unaware of the opportunity to comment, and in order to encourage more informed public discourse.

The TPP’s IP Challenge for China


The release of the TPP text on November 5, 2015 has caused many friends in Chinese IP colleagues to wonder what implications, if any, there are for China’s development of its IP system.

China’s recent experience of bilateral investment or free trade agreements has not prepared it for a major regional  IP-related agreement such as the TPP.  China’s  FTA  experience has thus far focused on a limited range of issues, most of which are not “core” IP.   As one academic researcher noted “the majority of China’s RTAs [Regional Trade Agreements] focus… on specific categories of IPRs, namely GIs and genetic resources and traditional knowledge or border measures, often omitting any reference to other categories, i.e. copyright, patents, trademarks or IPRs enforcement.”    The last comprehensive IP agreement that China entered into was its accession to the WTO  with  adherence to the TRIPS Agreement (2001).  The TPP is however more comprehensive and forward looking than TRIPS.

The China-Swiss FTA (2013) calls for some important, but limited improvements in China’s IP regime, particularly in areas involving designs, customs protection and plant variety protection.  To take plant varieties as one limited example, the TPP requires all member countries to sign on to UPOV ’91.  This was a step that Switzerland, a member of UPOV ’91 since 2008, did not secure in its bilateral FTA with China despite Switzerland’s having a flourishing agroscience sector.   By any measure the demands that would be placed on China by acceding to the TPP would be greater than most of the developed world, particularly for countries like Singapore, Chile, and Australia that have concluded free trade agreements with significant IP chapters with the United States in the past several years.

Despite these challenges, it would be difficult for China to stay outside of a regional trade agreement that includes such important regional trade partners.  Leaving China outside of the TPP may also not be the most desirable IP strategy.  China is the second largest global economy with the largest IP system in the world, and with rapidly growing innovative sectors and global business models (including in e-commerce).   The TPP and the global trading system could also be greatly strengthened if China were to play a constructive role, conform to and join TPP, and if reformers in China were empowered to bring China in adherence to TPP to spur another effort at market-reform.   As Amb. Holleyman recently noted in discussing the TPP: “the rules that China adopts to promote IPR protection directly impact our economy.  If IPR protection in China were improved to a level comparable to the United States, U.S. net employment might increase by 2.1 million jobs and American companies would benefit from an estimated $107 billion in additional annual sales, according to U.S. International Trade Commission estimates.”

A further systemic challenge is that the TPP appears to be based in part on its members experience on the difficulties in engaging China on IP.  As one former senior diplomat recently noted before a Japanese audience:

Rampant violations of intellectual property continue, state-owned enterprises are advantages over private competitors, and U.S. companies invested in China have become increasingly disillusioned by China’s unique standards and preference for “indigenous innovation”—not to mention evidence of large-scale cybersecurity violations…

TPP allows the U.S., Japan and our partners, to offer a high-standard, rules-based alternative to China’s state capitalism.

China has already acceded to all the major treaties enumerated as required for TPP accession with the exception of UPOV ’91 — namely the Madrid Protocol, Budapest Treaty,  Singapore Treaty, WCT. WPPT, as well as the Patent Cooperation Treaty, Paris and Berne Conventions, and of course the TRIPS Agreement.    I believe that most of the challenges to China are likely not in the form of adherence to required treaties, but in the more granular implementation of those treaties and in commitments that are not found in any current treaty that China is a part.  For example, in the pharma sector, the TPP contains extensive provisions on patent linkage, patent term restoration, and data exclusivity which go beyond the TRIPS Agreement.  In addition to these substantive IP issues, there are significant challenges in non-IP area chapters that affect commercialization and utilization of IP, such as in market access for lawyers, restrictions on state owned enterprises, e-commerce, and investor-state dispute resolution.

The focus in the TPP on treaties that support greater IP office to IP office cooperation in the TPP (e.g, PCT, Madrid), also underscores that this is a treaty that not only aims to raise substantive norms, but also aims to facilitate greater utilization of IP in the TPP region among its members to facilitate economic integration.   It would be wrong of critics to characterize this agreement as solely a North-driven effort to impose its IP norms on the South.  In addition to cooperative commitments, there are also provisions on genetic resources, access to medicines (aligning with the Doha Declaration), traditional knowledge and capacity building that reflect the interests of developing countries.

China’s recent past has shown that China can enter into WTO plus commitments on IP.  The most notable are China’s  joining the WIPO Internet Treaties, and thereafter hosting and ratifying the Beijing Treaty on Audiovisual Performances.  However, there are also important areas that have not been specifically addressed in recent trade-related agreements, such as trade secrets, have generally shown little norm setting progress since China first enacted its trade secret law in 1993, which had arguably been undertaken in response to US pressure in 1992.

The history of the past several decades of foreign engagement with China has, however, generally shown that linkage-based diplomacy, where trade concessions may be extended or removed in exchange for / or due to violations of IP-related commitments, has likely been the most effective single factor in driving IP-related changes in China.   Many of the key IP-related commitments  evolved in response to normalization of US-China trade relations, as well as WTO accession.

With modern China’s professed interests in becoming an innovative economy, will the TPP spur additional changes that are in China’s long term interests?  What kind of challenge does the TPP set for China’s own economic plans, including the revisions to the current five year plan, the National IP Strategy and China’s efforts to become a strong IP country?

While TPP members were negotiating the final text of their agreement, China’s state planners were drafting a new five year plan, which will further underscore China’s commitment to developing an innovation-oriented economy (see chart below, prepared by Barclays on frequency of ‘innovation’ in the current five year plan).  China will need to look at what it gains in TPP accession in exchange for IP commitments which China may believe it is not yet prepared for, but that in the long run will clearly benefit in the Chinese economy and enable it to become more innovative.  Hopefully, Chinese reformers will seize on the TPP as a way to drive a new era of economic reform, prosperity and IP harmony.


Top picture: Amb. Robert Holleyman noted at a November 8, 2015 US Chamber event discussing TPP.

NDRC IP Abuse Guideline Out For Public Comment


NDRC has released a draft for public comment of its Antitrust Guidelines for Abuse o IP知识产权滥用的反垄断指南(征求意见稿)(English language wordcloud above).   As with the NDRC questionnaire this appears to have been selectively released although some versions have also been made available on line by bloggers and the like.  Several organizations are commenting on it, and some bloggers have made its content publicly available.  The release of the guidelines has also been reported by the media based on NDRC presentations at public conferences.

Below is what I believe is the Chinese text regarding on abuse of dominance involving intellectual property rights.  Unfortunately I do not have an English text I can release.  I have added English captions so that non-Chinese readers can see some of the key areas discussed.

I did notice that the provisions on the availability of injunctive relief for infringement of standards essential patents thankfully address “whether the two negotiating parties in the process of negotiations have shown real willingness to negotiate”, which I believe is a significant problem in the Chinese environment.  Interestingly, in addressing the problem, the draft incorrectly identifies requests for injunctive relief as “the request of the patentee of a judicial body to issue an order to enjoin use of relevant patents.”  In fact, I believe the injunctive relief that is sought is typically to enjoin infringement, as there has been no authorized use of the patents in the absence of a license.

I am also wondering whether other agencies, notably MofCOM and SAIC are also preparing drafts of the abuse IP guidelines, particularly as SAIC only recently released its rules in this area.



 (一)不公平的高价许可费 [unreasonably high royalties]



  1. 相关知识产权许可历史或者可比照的许可费标准;
  2. 权利人是否超过知识产权覆盖的范围收取许可费;
  3. 权利人是否迫使被许可人接受不合理的许可方式或者许可期限;
  4. 权利人进行一揽子许可时是否迫使被许可人接受过期或者无效的知识产权。拒绝许可是权利人行使知识产权的一种表现形式,一般情况下,权利人不承担与竞争对手或者交易相对人进行交易的义务。但是,具有市场支配地位的知识产权权利人无正当理由拒绝许可,同时符合下列条件的,可能排除、限制竞争:
  5. (二)拒绝许可 [refusals to license]
  1. 拒绝许可可能导致相关市场上的竞争或者创新受到不利影响,损害消费者利益或者公共利益;
  2. 许可该知识产权不会对权利人造成损害。(三)搭售 [tying]搭售可能对相关市场的竞争产生不利影响,主要表现为排除了被搭售品市场中其他供应商的交易机会,并损害了消费者的选择权。同时,搭售也可能对相关市场的竞争产生有利影响,主要表现为可以降低交易成本,促进产品功能的完善等。搭售的正当理由,需要在个案中进行具体分析。如果搭售是基于技术兼容、产品安全、产品性能、交易成本等方面的考虑而实施的,可能被认为具有正当理由。具有市场支配地位的权利人在交易中附加下列限制条件,可能排除、限制竞争:
  3. (四)附加不合理的交易条件 [Attaching unreasonable conditions of trade]
  4. 具有市场支配地位的经营者没有正当理由,违背交易惯例、消费习惯等或者无视不同知识产权或商品的性质及相互关系,将不同知识产权,或者知识产权与商品强制捆绑销售或者组合销售,并且使该经营者将其在搭售品市场的支配地位延伸到被搭售品市场,可能排除、限制竞争。
  5. 搭售是指权利人就一项知识产权以许可、转让等方式行使时,违背交易相对人的意愿要求其接受另一项知识产权的许可或转让,或者从权利人处或者权利人所指定的第三人处购买某种商品。
  6. 拒绝许可的正当理由,需要在个案中根据具体情况进行分析,通常考虑的因素包括:被拒绝的潜在被许可人缺乏必要的质量、技术保障或支付许可费的能力,能够确保技术的正当使用或者产品的安全和性能;被拒绝的潜在被许可人使用知识产权行为可能会对节约能源、保护环境等社会公共利益产生不利影响等。
  1. 要求交易相对人将其改进的技术进行独占性回授;
  2. 禁止交易相对人对其知识产权的有效性提出质疑,或者针对其提起知识产权侵权诉讼;
  3. 限制交易相对人利用竞争性的商品或者技术;
  4. 对过期或者无效的知识产权主张权利;
  5. 禁止交易相对人与第三方进行交易,或者对交易相对人与第三方的交易行为在对象选择、交易地域等交易条件方面进行限制。一般来说,知识产权权利人对不同的被许可人实施不同的许可条件,是权利人的自由。但是,具有市场支配地位的知识产权权利人对被许可人实施差别待遇,同时符合下列条件的,可能排除、限制竞争:
  6. (五)差别待遇 [Differential treatment/discriminatory treatment]
  1. 拒绝被许可人提出与其他被许可人实质相同的交易条件;[the party refused a license offers substantially similar conditions of trade of a prior licensee]
  2. 差别待遇对被许可人参与相关市场的公平竞争产生了显著不利影响。四、涉及标准必要专利的知识产权行使行为 [Concerning Implementation of Standards Essential Intellectual Property] 具有市场支配地位的标准必要专利权利人下列行使权利的行为,可能排除、限制竞争:标准必要专利权利人有权就其专利获得合理的激励性回报。但是,标准必要专利权利人所要求的许可费应当合理体现相关标准必要专利的经济价值。如果拥有市场支配地位的标准必要专利权利人向被许可人索取不公平的高价许可费,可能排除、限制竞争,损害消费者利益。
  3. 分析和认定标准必要专利权利人是否收取不公平的高价许可费,可以考虑以下因素:
  4. (一)收取不公平的高价许可费 [Receiving unfairly high license fees]
  5. 专利权人持有标准必要专利并不必然导致其具有市场支配地位。分析和认定标准必要专利权利人是否具有市场支配地位,可考虑以下因素: [the following may be considered](1)相关标准的市场价值与应用程度;[the value and use of the standard in the market](2)是否存在替代性标准;[are the substitutable standards](3)行业对相关标准的依赖程度及使用替代性标准的转换成本;…(4)不同代际相关标准的演进情况与兼容性;(5)标准必要专利许可双方的相互制衡能力等。
  6. 分析和认定是否构成差别待遇,在考虑被许可人的交易条件是否与其他交易对象实质相同时,[in analyzing and determining whether there is differential treatment, and considering whether the conditions of trade of a licensee are difference in substance, the primarily consideration should be from the the rightsholder perspectives regarding whether the intellectual property transaction costs are the same.]  主要从权利人的角度考量不同许可行为的交易成本是否相同。同时,还会综合考虑该知识产权的用途和使用该知识产权生产产品的属性、销售范围、销售量、销售额与利润率等因素。
  1. 被许可的标准必要专利的技术价值;
  2. 相关产业的技术特点;
  3. 符合相关标准的产品所承担的整体许可费情况;
  4. 相关标准必要专利所负担的许可承诺;
  5. 相关标准必要专利许可历史或者可比照的许可费标准;
  6. 相关产品市场上下游合理的利润空间。在标准必要专利许可中,下列交易条件可能排除、限制竞争:
  7. (二)附加不合理的交易条件 [Attaching unreasonable conditions of trade]
  1. 捆绑非标准必要专利;
  2. 强制要求免费交叉许可和回授;
  3. 强制要求被许可人给予许可人所指定的第三方免费专利许可;
  4. 就过期或者无效专利继续收费;
  5. 禁止被许可人质疑专利有效性或者针对许可人提起专利侵权诉讼。禁令救济是专利法赋予专利权人的救济手段,标准必要专利权利人有权依法申请禁令救济以维护其合法权益。但是,如果标准必要专利权利人利用禁令救济申请迫使被许可人接受其提出的不合理许可条件,可能排除、限制竞争。
  6. 分析和认定标准必要专利权利人申请禁令救济是否排除、限制竞争,可考虑以下因素:
  7. (三)滥用禁令救济 [abuse of injunctive relief]
  1. 谈判双方在谈判过程中所表现出来的真实谈判意愿;
  2. 相关标准必要专利所负担的有关禁令救济的承诺;
  3. 谈判双方在谈判过程中所提出的许可条件及许可条件的合理性;
  4. 申请禁令救济对双方谈判地位、相关市场及下游市场竞争和消费者福利的影响。

..consider the following factors:

  1. whether the two negotiating parties in the process of negotiations have shown real willingness to negotiate;
  2. whether the relevant standardsessentialpatentsare burdened by commitmentsrelating to injunctiverelief;
  3. the proposed licensing conditions and the reasonableness of the licensing conditions brought forth by the two negotiating parties during the negotiation process;
  4. the role of applications for injunctive relief in negotiations of the parties, competition in the relevantmarketand the downstream market, and the effectson consumer welfare.


Injunctive relief as referred to in this guide, refers to the request of the patentee of a judicial body to issue an order to enjoin use of relevant patents.