Brookings Program Highlights China’s Legal and IP Reforms

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A program on January 28, 2015 at Brookings in DC, demonstrated how China indeed is “crossing the rule of law river by feeling the IP stones.” Two Chinese judges – Supreme Peoples Court Vice President Tao Kaiyuan and SPC No. Four Civil Tribunal Chief Judge Luo Dongchuan, gave an upbeat overview of China’s quickening pace of judicial legal reform which was deeply informed by their experience on IP matters. The presentation of Judge Tao is available on line.

Judge Tao is well known to many for her stewardship of the Guangdong IP Office, where she served as Director General from 2008-2013. In her current role at the SPC, she oversees the IP Division (No. 3 Civil Division).  Judge Luo now handles foreign-related commercial and maritime cases. He has been outspoken recently about improving foreign-related civil litigation. He is perhaps best known for his many years of work on the IP Division of the SPC, where I had numerous discussions with him on a range of IP issues, including patent litigation and the role of specialized IP courts.

Judges Tao and Luo, in public and in private, were both quick to point out their close relationship with the IP community. As slides 7- 8 point out, numerous reforms are underway and indeed, many of the reforms that are being contemplated nationwide are now being tried out at the specialized IP courts.

The Judges themselves appear to be part of a modest rule of law “charm offensive”, with a prior stop over in Houston.

(Photo above: Federal Circuit Bar Association President Jim Brookshire with Madame Tao Kaiyuan.)

Revised Patent Administrative Enforcement Rules – Is SIPO Building an Administrative System so the Patent Law Amendments Will Come?

On January 27, 2015 SIPO released a revised draft of its Patent Administrative Enforcement rules for public comment.  The released draft includes a line by line comparison with the last version (Feb. 1, 2011) as well as an explanation of the changes. The due date for comments is March 15, 2015. The purpose of these amendments is to address such matters as reducing the time frame for patent administrative litigation, improving procedures, and improving enforcement in the on-line environment.

Separately SIPO Commissioner Shen revealed at a SIPO Party Meeting on January 23, that in addition to rapidly increasing patent filings (2.361 million in total in 2014), , the total number of patent administration enforcement cases was 24,479, increasing 50.9% from the prior year.  This is a nearly 16 fold increase since 2009.  Past efforts like these have typically brought surges in “patent passing off” cases, which is most like false marking.   SIPO’s administrative enforcement in recent years has also shown irregular month to month cycles that are likely tied to enforcement campaigns (see my chart below).Patentadminenf

I estimate that this high level of enforcement activity is likely due to a combination of four factors, including an NPC Standing Committee to supervise administrative patent enforcement in eight provinces and regions that was launched in 2014. a campaign from last year to address counterfeit and substandard products (打击侵犯知识产权和制售假冒伪劣商品), a renewed commitment to amend the patent law, which Commissioner Shen noted in his talk at the meeting to local IP Offices on January 19, and SIPO’s own desire to ensure that its administrative enforcement system is not sidelined by recent efforts to improve judicial adjudication of high technology IP cases, including the establishment o f the specialized IP courts.   Indeed, the explanation advises that this draft reflects the commitments to improving rule of law in China.

The different roles of China’s administrative and judicial systems in patent enforcement has been previously discussed by me in this blog,  I quoted David Kappos at that time as recommending that “China should consider concrete ways of promoting and improving the civil judicial enforcement system by providing more resources, promoting the independence of the judiciary, providing for more training of judges, particularly on technical patent matters, and in general, improvements in the civil legal environment”  Many of these efforts are now underway in the judicial system.   Maybe the administrative system is trying to catch up?

Of Roses, Country Roads and Eileen Zhang

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Every once in a while, perhaps for surprise effect, I remind a Chinese friend or colleague that an ancient or modern Chinese cultural icon may in fact have been a foreigner or under foreign influence.    Perhaps the most renowned traditional cultural figure that might claim foreign roots is Li Po (Li Bai  李白 ),   one of China’s greatest poets, who was likely borne in Central Asia.  Another, more recent cultural figure was Eileen Chang, who became a US citizen in 1960 and was among the most accomplished of modern Chinese novelists.   Ang Lee directed Eileen Chang’s “Lust, Caution,” in 2007 and went on to win  another Golden Lion at the Venice Film Festival for this movie.  His first Golden Lion was for Brokeback Mountain.

Another type of cultural dissemination occurs when songs cross borders and take on a life of their own.

As we near Valentine’s Day, it might be worth reflecting on Frankie Lane’s song “Rose, Rose I Love You”, which was drawn from the popular 1940’s Chinese song  of the same name: 玫瑰玫瑰我愛你, sung by the 1940’s pop star  Yao Li 姚莉  (Miss Hue Lee).  There are many clips of these songs available on line.   You can look for the 1940 Chinese original Columbia recording, or the 1951 Frankie Lane Columbia recording.   The lyrics are predictably somewhat different, and I personally find Miss Hue Lee’s lilting and vulnerable voice more endearing that Frankie Lane’s reinterpretation of   the song to describe a foreign protagonist abandoning a Malayan Chinese.   Although Chinese music has been deeply influenced by foreign music in recent decades in fact, as one Chinese commentator notes, one of the earliest examples of a hit in both the US and China was this song.   In fact, Frankie Lane’s version  apparently helped propel Hue Lee’s Chinese original  to a number 3 position in the United States on Billboard’s top pop songs for a period of time.

Sometimes songs also take on a life of their own for both their cultural and political resonance.  John Denver’s Country Roads certainly has that legacy, as it was played by the late singer for Deng Xiaoping and Jimmy Carter at a celebration to honor the normalization of relations.   Cory Doctorow explains the importance of the song at some length in a blog posting “China’s love affair with ‘Take Me Home Country Roads’”.   I suspect that almost anybody who travels to China often enough will have heard the song many times.

Wikipedia tracks several versions of “Rose” over the decades beginning in its first appearance in a pre-revolutionary Chinese film.  John Denver’s song seems to be most popular in China in its English version, although the song is known in Chinese as: 《乡村路带我回家>.    As of January 26, 2015, there were seventy four hits for Country Roads on Baidu. It would be interesting to know if the rightsholders of “Country Roads” collect anything in royalties from Chinese sources, including ring tones, and if the rightsholders of “Rose” were able to collect from  the use of their compositions by Frankie Lane, Petula Clark and other singers back in the 1950’s, at a very difficult time in US-China relations and in China’s IP development.   I hope some of the artists benefitted.

By the way, Yao Li enjoys a particularly active life in music.  Her last recording was made in 2011, at nearly 90 years old, and she also enjoyed a career for a time in Hong Kong with EMI Music.

Prison Inventions and Patent Subsidies

The South China Morning Post reported recently on jail house inventors, a topic that you may have first read about here. According to the SCMP and Beijing Youth Daily, various provinces have different commutation schemes for inmates that file patents, which are based on provisions in the criminal law permitting commutation based on meritorious service (Criminal Law, Art. 78).

As with their policy “cousin”, patent subsidy and innovation tax incentive programs, not all inventions are treated equally for purposes of obtaining government benefits. For example, according to 2005 Provisional Opinions on Specific Questions on Commutation of Sentences in Jiangsu,《关于审理减刑案件若干问题的意见(试行)》 one invention patent is equal to one utility model patent or three design patents.

Similar to patent subsidy programs, there are also any number of patent agents pursuing this type of business. However, the best practice for would-be inventors is likely if the convict or his/her representative finds a patent agent familiar with the practice of the local prisons as practices may vary.

Why the increased interest in jail house inventors? Probably the press has picked up on this issue with the December 9, 2014 decision of the Beijing Second Intermediate People’s Court which reportedly granted one year’s commutation of the sentence of the former Chinese Football Association Vice President Nan Yong.  Nan Yong was granted 4 patents in 2012 and 2013 for: a soccer practice device, a portable goal, assembly of mobile terminal supporting frames, and a desktop computer monitor.

Considering the large size of the US prison population (about 600,000 more than China), is this an untapped resource for encouraging innovation in the US :)?

Synergies and Contrasts Between The National IP Strategy Action Plan and Fourth Plenum (with contrasting wordclouds)

 

“””NIPS

Here is an unofficial translation of the English language translation of the Action plan of the National IP Strategy (2014 -2020) (NIPS), about which I previously blogged. A wordcloud from this English translation is above – with an obvious focus on “management,” “strengthening,” “promotion” and “enforcement” and some mentioning of the “market.”  As the NIPS was released just weeks after the Fourth Plenum, it make a useful point of contrast on where China is headed on IP, including IP-related rule of law. An annotated version of the Fourth Plenum decision is available here for comparison.   For those with short attention span, or a strong visual orientation a wordcloud of the Fourth Plenum decision is found at the end of this post.  In short, the Fourth Plenum is emphasizing the “market,” “law” and “enforcement.”  The NIPS, however, seems to be all about strengthening the IP system.

The NIPS contains some interesting general goals, particularly in terms of developing IP intensive industries, including developing Chinese patent pools and Chinese cultural industries. promoting IP services, integration of IP into state science and technology plans, and expanding cooperation.   Some sticky issues, such as involving China’s multiple track system of protecting geographical indications will be changed into a unified system of some kind.  The NIPS also calls for a Chinese-type Section 337 remedy, as was originally contemplated in China’s Foreign Trade Law, ie., to “carry out investigations on infringement of Chinese IPR by imported products and other unfair competition acts in import trade.”

Regrettably, the NIPS keeps some of the failed metrics of its first implementation in place.  Patent filings will increase from 4 per 10,000 people in 2013, to 14 per 10,000 in 2020.  This means that SIPO will be receiving in excess of 6 million patent applications per year. In an implicit recognition of the problem I have noted that patent maintenance  is at least as important as patent applications, the NIPS also wants to increase the average maintenance period for invention patents from 5.8  years to 9.0  by 2020.  However this data point doesn’t resolve the problem of low maintenance rates for utility models and designs and it is to be hoped that in all cases, maintenance rates expand due to growth in the market and not due to the kinds of artificial subsidies that already plague China’s patent applications.   Among the market oriented targets, export growth in IP rights is also slated to grow from 1.36 billion USD in 2013 to 8 billion USD in 2020.  Commercialization-related goals reflect the goals of the Third Plenum, to increase IP utilization generally.

Here’s what the NIPS says about the judiciary:

“Strengthen.. the criminal law enforcement and the judicial protection of IP. We will intensify the investigation of IP crime cases and supervise the handling of key cases; persist in the combination of fight and prevention to gradually bring special campaigns onto the track of normalized law enforcement; strengthen the linkup between the administrative law enforcement of IP and criminal justice and intensify the handover of cases of suspected crimes; strengthen the trail of IP-violating criminal cases according to law, intensify the application of pecuniary penalty to deprive infringers of the capability and conditions for committing crimes again; strengthen the civil and administrative trial of IP to create a good innovation environment; provide human, financial and material guarantee and support for the establishment and operation of IP court according to the plan for establishment thereof.”

The NIPS seems to be following the lead of other agencies in judicially-related efforts.  In administrative law, it also supports  the State Council’s effort to promote administrative transparency, including extending it to credit reporting systems:

“We will … solidly push forward the disclosure of information on cases of administrative punishment of IP infringement to deter law violators and, in the meantime, promote standardized, just and civilized law enforcement by enforcers; incorporate the disclosure of case information into the scope of statistical notification of the efforts of cracking down on infringement and counterfeits and strengthen examination; explore the establishment of the credit standard related to IP protection to include acts of mala fide infringement in the social credit evaluation system, disclose the relevant information to credit reporting agencies and raise the social credit level for IP protection.”

However, regarding IPR-related commercial rule of law, one needs to focus a bit more on the Fourth Plenum.  Here are some of the significant judicial reforms that will affect IP:

Reform systems for judicial organs’ personnel and finance management, explore the implementation of separating courts’ and procuratorates’ judicial administrative management affairs and adjudication or procuratorate powers.

The Supreme People’s Court will establish circuit courts, to hearing major administrative and civil cases that cross administrative regions. Explore the establishment of People’s Courts and people’s procuratorates that cross administrative districts and handle cross-regional cases…

Reform systems for court acceptance of cases, change the case filing review system to a case filing registration system, and in cases that should be accepted by the People’s Courts, ensure parties’ procedural rights by requiring filing when there is a case, and requiring acceptance where there is a lawsuit…

Perfect systems for witnesses and experts appearing in court, ensure that courtroom hearings play a decisive role in ascertaining the facts, identifying the evidence, protecting the right of action, and adjudicating impartially.”

More broadly, here’s what the Fourth Plenum says about IP:

“Perfect a property rights system and an intellectual property rights system that encourage innovation, and structures and mechanisms to stimulate the transformation of scientific and technological achievements. Strengthen the construction of a legal system for the market, compile a civil code, … stimulate the free circulation, fair exchange and equal use of commercial products and factors, strengthen and improve macro-level coordination and market supervision according to the law, oppose monopolies, stimulate reasonable competition, safeguard a market order of fair competition. ”

Conclusion: It should come as no surprise that the Fourth Plenum, although more general, may more greatly impact IP-related judicial / legislative issues.  Based on a recent trip to Beijing, I understand that work is already underway to draft IP provisions of a civil code.  The new chief judge of the Supreme People’s Court IP tribunal (Song), the new Chief Judge of the Beijing IP Court (Su), the new Vice President of the SPC with authority over the IP tribunal  (Tao) all have civil law backgrounds.  In addition, consideration is being given to the specialized IP courts having a circuit court type role.  New technology assessors in the IP courts will affect the way that evidence is considered and will likely enhance the independence and professionalism of the courts. 

Will the Fourth Plenum further push China towards a more market-oriented approach to IP?  I personally believe that for the NIPS to work effectively, the decisive factors has to be the market.  Metrics for IP creation are meaningless unless there is utilization of IP.  Hopefully the Fourth Plenum will push the NIPS implementation even further in a market orientation, which is a key factor of the Fourth Plenum, as this wordcloud shows…

Fourthplenum

 

 

A Good Year for the Blog

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This blog had a very good year last year.

We exceeded 100,000 direct page views total for the blog since launch in 2011, with about half of those page views in 2014. We grew our page views by 60% in 2014, with over 5 ,000 views per month now, and over 800 email subscribers, not including social media postings.  We are read widely in the US and China, but we also have readers in 122 other countries.  We are also read and re-blogged by a number of academics, government officials and attorneys.  We are also catalogued as a leading Chinese law website.  The blog is also a historical resource: some of our most popular postings are  from prior years.  Our stats also understate the totals and influence, since they do not reflect other channels where the blog is reposted including an expanding network of foreign language sites.

You are welcome to repost content on this blog, but I do ask for attribution.  In addition, please tell me when you have reposted so I can keep track of my readership.  If you are regularly reposting my content, please contact me so that we can enter into a more formal relationship which may include cross-linking, sharing data, joint articles, etc.

Thank you also to all those who have provided comments and corrections either directly on this blog, or by emailing me (chinaipr@yahoo.com).

This blog began as a list of links on Chinese IP matters back in the late 1990’s.    Now it is a blog that I write in my personal capacity and that enjoys the support of research assistants from Fordham Law School, including (over the years) Jae Zhou, Amanda Ma, Yao Yao and Marc Epstein.   Without this support, it would be impossible to sustain this blog.

Thank you all.  I wish all of you a happy and healthy new year.

 

Photo: Christmas Tree in USPTO Atrium, Alexandria VA (2014)