End of Year Tid Bits

儿童强不睡,相守夜欢哗 – “Children try not to sleep, We noisily enjoy guarding the night.”

Song dynasty poet, Su Shi. 守岁 – On the New Year

 

There is China IP news even to the end of the year:

Interdigital and Huawei have agreed to enter into binding arbitration of their dispute.  Here’s how the Shenzhen Daily described the settlement: http://www.szdaily.com/content/2013-12/26/content_8926494.htm.

Tao Kaiyuan, the DG of the Guangdong IP Office, has been promoted to Vice President of the Supreme People’s Court: http://www.chinanews.com/fz/2013/12-28/5674725.shtml .  Madame Tao has a Ph.D in law, was a former professor at Jinan University in Guangzhou and also formerly served as the Vice President of the Guangdong High Court.   I wish her well.

Shen Changyu has been promoted to be the new SIPO Commissioner.    According to Baidu, he is leading scientist and member of the Chinese Academy of Sciences, who has written four books and 70 works in the Science Citation Index.  His most recent prior appointment was for less than two years as President of Dalian Polytech University: htttp://baike.baidu.com/view/98467.htm.  I certainly wish him and his predecessor, Tian Lipu, well.

The State Council Legislative Affairs Office is now soliciting comments on revisions to China’s Promotion of Science and Technology Achievements and Transformations Law 促进科技成果转化法((http://www.chinalaw.gov.cn/article/cazjgg/201312/20131200394359.shtml.  These revisions will seek to harmonize the old law with newer provisions found in relevant IP laws, as well as update relevant provisions regarding technical secrets, transfers of technology to foreign parties, and employee compensation for IP-related service invetions.  Comments are due January 30, 2015.

Happy New Year to all!

 

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(the picture is yours truly at the Guangdong IP Office).

 

Mark

 

 

 

 

 

Student Externships at USPTO

The US Patent and Trademark Office has posted an announcement seeking applications for Externships.  The Externships also include the USPTO Office of Policy and International Affairs, which includes the China team.  Information is available at: https://www.usajobs.gov/GetJob/ViewDetails/357924100

This is a great opportunity for students to understand the inter-governmental context of intellectual property policy and/or to understand the relationships among international trade, intellectual property and domestic policy – including China. 

The usajobs.gov notice was posted December 23, 2013.  Applications will be accepted from the first 250 applicants, and the vacancy will close on January 24, 2014, or when the limit of 250 is reached, whichever comes first.

 

Who Went Where in 2013?

Many people in the China IP community changed jobs in 2014 – from seasoned experts to novices.  The biggest changes were in the government, although other areas were not excluded.

Amongst the European diplomatic corps, the IP Key team of the EU is being filled out, most notably due to the start of EU IP technical cooperation program —  IP Key.   The Beijing-based IP Key team consists of of Benoît Misonne and Dan Prud’homme, and will be adding others.  OHIM as the implementing agency of IP Key (in cooperation with the European Patent Office) with a team of four based in Alicante. Valentín Mir is the Action (or Project) Manager at OHIM.   

In addition to IP Key, Christophe Gimenez is currently serving as OHIM’s IP Attaché in the Delegation of the European Union to China and Mongolia, a position that was previously held by Jesús Romero.  Another European colleague, Jean-Baptiste Barbier joined the French Embassy in China from the French IP Office, INPI.

This year one veteran IP attorney left practice for diplomacy.   Clifford Borg-Marks became the Ambassador of Malta to China in August, 2013.    Among his many IP accomplishments, Cliff co-authored Trade Mark Law in the People’s Republic of China.

In the US government, we saw the departure of David Kappos as Director of the USPTO, for a partnership at Cravath.  Dave had established a close relationship with SIPO Commissioner Tian and other Chinese leaders.  Teresa Stanek-Rea, the Deputy Director, left USPTO to rejoin Crowell and Moring.   Terry was also very active in China IP matters, particularly in the pharmaceutical sector.   Also in 2013, Ray Chen, the former Solicitor of the USPTO became the first Chinese-American to sit as a judge on the U.S. Court of Appeals for the Federal Circuit.  We wish them all well. 

At the USPTO, Joel Blank and Tim Browning went to posts in Beijing and Guangzhou, respectively.  The Shanghai position of USPTO is now in the process of being filled.  Amb. Gary Locke, who formerly was Secretary of Commerce (and directly responsible for USPTO) also announced that he is returning to the United States in 2014.

In the Chinese government, former NCAC and GAPP Minister Liu Binjie assumed an important new role in charge of the Education, Science, Culture and Health Committee of the National People’s Congress in 2013, where he will  supervise pending IP legislation .  Meanwhile, Judge Luo Dongchuan, a veteran of the IPR Tribunal, became chief judge of the No. 4 civil tribunal at the Supreme People’s Court, which handles foreign-related cases.

If rumors are to be believed, other changes are afoot.  The rumors say that during 2014 it is likely that SIPO Commissioner Tian Lipu will retire and that Chief Judge Kong of the IP Tribunal will be promoted.

There were also a number of changes in the private sector.   He Jing went from ZY Partners to the Anjie Law Firm.  Horace Lam left Jones Day for DLA Piper.   Karen Guo, formerly of Jones Day and Wilson Sonsini went in-house to Novo Nordisk A/S.    Lucy Nichols, formerly of Nokia, went to work for cREATE.org (the Center for Responsible Enterprise and Trade) in Washington, DC.  Also back in the USA, Charles Freeman, former Assistant USTR for China, joined Rock Creek Global Advisors, while David Weller, who was formerly a partner at Wilmer Hale and had also served as a deputy to Charles, became the Head of Global Trade Policy for Google. 

There are also many who are starting out.  Amongst those I know personally:  Ge Yijun, a former student of mine from Fordham, started out at Bird & Bird in Shanghai and Ron Vogel, who wrote an article on trade secrets in China when I was a full-time professor, is starting out at Fish and Richardson in New York. 

Feel free to write it if you believe there is something that needs to be announced or corrected. 

Most importantly, however, I wish you all a healthy and happy new year!

Positive Developments on IP in JCCT Outcomes

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The 24th bilateral Joint Commission on Commerce and Trade concluded on December 20, 2013 at Diaoyutai State Guest House.  The US “Fact Sheet” on this year’s JCCT is attached here

The JCCT was jointly chaired by the US Department of Commerce, the US Trade Representative and the US Department of Agriculture at the ministerial (Secretary) level on the US side, and by Vice Premier Wang Yang on the Chinese side.  It is a key bilateral mechanism for raising trade-related bilateral intellectual property concerns.

This year there were several outcomes that were IP-related.  These outcomes included: a commitment by China to include trade secrets protection as a priority item in the interagency IPR leading group for 2014, as well as a commitment to work on trade secret legislative reform matters in China.  A prior commitment by China to insure that patent applicants in pharmaceutical patents can supplement their data was expanded to specify that this commitment applied to examination, re-examination and SIPO’s representation before the courts, as well as to work together to resolve specific cases. 

China also committed to work with the US on civil IPR enforcement matters, to continue to work on trademark squatting issues, cooperate on enforcement efforts to realize increases in sales of legitimate, non-infringing goods and services, and to undertake enforcement efforts involving substandard and infringing semiconductors.  

There was a also a recognition of SIPO’s efforts to date to provide design patent protection for graphical user interfaces, and a signing ceremony for a bilateral MOU with the U.S. Trade And Development Agency to provide IPR-related technical assistance with MofCOM as a coordinating agency (that is the picture above).  The various signings are attached here.   A Chinese summary of the outcomes from the concluding ceremony also includes improved bilateral criminal justice enforcement cooperation on IP matters.

The JCCT is sometimes used to break new ground (such as on trade secrets, or SIPO’s representations before the courts on pharma patents).  It is also used to reinforce existing commitments (such as on GUI’s and sales of legitimate goods), and to expand areas of technical assistance and cooperation (such as in civil enforcement of IP and the signing of the TDA MOU).

I personally believe the outcome statement shows a good balance among the role of administrative enforcement agencies, resolution of technical IP issues, and the importance that the civil and criminal systems should play in the development of a mature IP system.

 

Photographs above and below by Mark Cohen.

Diaoyutai scenery

Diaoyutai Scenery 

InterDigital – Safety of Executives Now at Issue in Ongoing China AML/IP Matter

The Internet and wire services are abuzz on December 16 with the latest update on the InterDigital saga. InterDigital’s executives will reportedly not travel to China to meet with the National Development and Reform Commission(NDRC) to discuss the alleged violation of China’s Anti-monopoly Law. InterDigital apparently has been told by NDRC that it would not ensure the safety of any executives sent in place of InterDigital’s CEO, and that they could be arrested or detained. InterDigital’s CEO stated that “we are simply unable to comply with any investigation that is accompanied by a threat to the safety of our executives.” According to CNET, the proposed meeting with NDRC was to be held on December 18, scheduled one day before ITC’s target day to decide the IP issues against Huawei and ZTE.

China’s ability to detain foreigners during pendency of civil, criminal and administrative matters, including IP issues has long been a matter of concern. It is, however, unclear from these reports, what is the legal basis for these threats.

First Guiding Case on Intellectual Property

Stanford’s Mei Gechik reports through Don Clarke’s Chinalaw listserve that Stanford’s Guiding Case project has just made available an English translation of the first guiding case on intellectual property: Shenzhen Siruiman Fine Chemicals Co., Ltd. v. Shenzhen Kengzi Water Supply Co., Ltd. and Shenzhen Kangtailan Water Treatment Equipment Co., Ltd., An Invention Patent Infringement Dispute. (深圳市斯瑞曼精细化工有限公司诉 深圳市坑梓自来水有限公司、深圳市康泰蓝水处理设备有限公司 侵害发明专利权纠纷案 .  This is Guiding Case Number 20.  The English translation is here:  http://cgc.law.stanford.edu/guiding-cases/guiding-case-20.  The Chinese text is available here: http://cgc.law.stanford.edu/wp-content/uploads/2013/12/CGCP-Chinese-Guiding-Case-20.pdfThe case was decided on December 20, 2011 by the Supreme People’s Court and made a “Guiding Case” by the adjudication committee of the SPC on November 8, 2013.  For further information on this project contact: contactcgcp@law.stanford.edu.

 

 

 

A Nail in the Coffin of Patent Linkage – New CFDA Rules

Today, December 13 is the last day for comments on proposed revisions to the China Food and Drug Administration’s proposed amendments to the Drug Registration Rules.  Normally, one wouldn’t look to CFDA for IP-related policy making.  However there are several key areas where CFDA plays a leading role: anti-counterfeiting/substandard products; control of active pharmaceutical ingredients used to make counterfeit drugs; regulatory data protection (TRIPS Article 39); and patent linkage.    

The proposed revisions will significantly undercut China’s already weak patent linkage regime.  In the United States, China and many developed countries, pharmaceutical regulators “link” their marketing approval with patent grants, effectively denying marketing approval to drugs that would infringe the innovator’s patent rights.  Linkage in principle should provide a measure of predictability to both innovators and generics.  An innovator obtains assurances that a drug will not obtain regulatory approval unless there is no patent infringement or the patent has been declared invalid.  A generic company will be provided assurances that certain pre-regulatory approval efforts, including research and development, may be free of the innovator’s claims of infringement.  The limited “freedom to operate” provided by linkage stems is frequently called a “Bolar exemption”, following the landmark US case, Roche Products Inc. v. Bolar Pharmaceutical Co., 733 F.2d 858 (Fed. Cir. 04/23/1984). 

Typically, Bolar exemptions are established in conjunction with an extension of the patent term for the innovator.  The “grand bargain” /balancing of interests is that generic companies get a limited freedom to operate which might otherwise constitute infringement in exchange for the extension of the patent term for the innovator.  Such extension policies are typically called “patent term extension” or “patent term restoration” policies.

Since the 2008 patent law amendments came into effect, China has had a “naked” Bolar.  A “naked Bolar” as I have described elsewhere is a system that lacks a patent term restoration or extension mechanism.   In essence, innovative pharmaceutical companies have had the final period of their patent term eroded, without any compensatory mechanism and are thus left “naked” of patent term extension.   

However, China nonetheless also had a modest patent linkage system in place which at least denied final market entry for pharma products if there was a risk of infringement.  This system, under Article 19 of China’s Drug Registration Rules, required applicants for marketing approval to set forth if their products would infringe another’s patents and would permit them to conduct regulatory testing during the last two years of the patent term. 

The CFDA has now proposed removing Article 19 of its Drug Registration Regulations which would essentially leave all issues involving invalidity of patents to the patent law, which already creates a broad exemption.   The intention of this regulation seems to be to give an additional “free pass” to generics to conduct pre-marketing approval operations beyond the two year period that was originally specified in the DRR.  China’s naked Bolar is in a sense now more fully “exposed” without regulatory limitations on generics’ operations.

China has a number of laudable goals to become an innovative biotech country with metrics such as new drug registrations, patent grants, and developing the largest biotech labor pool in the world.   Will these new developments help China become an innovative economy in the life sciences?

Comments may be submitted to: yjjdc@sfda.gov.cn & Facsimile: 010-68310909. The draft is posted at: http://www.sfda.gov.cn/WS01/CL0778/94158.html.