As we previously reported the NPC’s Standing Committee established three Specialized IP Courts in Beijing, Shanghai, and Guangzhou. The Supreme People’s Court and the cities’ High Courts are now in the process of implementing the NPC’s decision.
On November 3, 2014, the Supreme Court issued a decision and held a news conference outlining the jurisdiction of the Specialized IP Courts of Shanghai, Beijing, and Guangzhou. The court detailed the Specialized IP Courts’ jurisdiction over cases of first instance, over different types of IP cases, and over IP right authorization and verification.
The Specialized IP Courts have jurisdiction over three types of cases:
1. Civil and administrative cases involving patents, new plant varieties, layout designs of integrated circuits, technical secrets, computer software and other technology cases; 2. Administrative cases involving copyright, trademark, and unfair competition against the administrative action of the State Council department or above the county level departments; and 3. Civil cases involving the affirmation of well known trademarks.
The Specialized IP Courts will review civil and administrative IP cases challenging the judgment of lower courts. Additionally, the Higher People’s Courts, where the Specialized IP Courts are located, will review appeals against the judgment of the Specialized IP Courts. Probably the two most important impacts of the jurisdiction of the courts in terms of its impact upon foreigners aspect of the jurisdiction are the jurisdiction of the Beijing Specialized IP Court over appeals over patent and trademark office final decisions and jurisdiction over well-known marks
Foreigner-related cases constitute a large percentage of these appeals from the patent and trademark office while the infringement cases brought by foreigners are about 2% of the docket. According to various press reports, the overall share of administrative cases brought by foreigners in Beijing hovers near 50%. Interestingly, in January of 2014, Beijing had already divided its intermediate IP court into two divisions one of which would hear patent appeals and the other would hear trademark appeals. This experiment, which likely was intended to anticipate one national IP court like the Federal Circuit in the United States, has necessarily become short-lived. Nonetheless, in its jurisdiction over patent and trademark appeals, the Beijing Specialized IP Court does retain jurisdiction that is in many ways similar to the Federal Circuit’s “administrative” jurisdiction over the USPTO.
I do not have precise current data on foreign-related well known mark cases. However, well known mark status has been of concern to foreign brand owners for some time. Former China Trademark Office Director-General An Qinghu 安青虎published an extensive analysis in English in 2005 on recognition of well-known marks in China, including the various circumstances by which foreign well known marks have been recognized, which as I recall from prior personal review of that article, was intended in part to address the concern of foreigners over how well-known marks were being protected in China As DG An noted at that time “Among the 153 well-known trademarks affirmed by SAIC or Trademark Review and Adjudication Board, 132 are registered by Chinese registrants …, 21 by foreign registrants …” (fn. 7), and “SAIC had affirmed some well-known trademarks in objection decisions in the 1990s, most of which were registered by foreign registrants.” (final endnote). I do not have current data on well known mark ownership by foreigners.
The Beijing, Shanghai, and Guangzhou Specialized IP Courts have different focuses and differing impact upon foreigners. As noted, the Beijing court is distinguished by its largely administrative docket. The Shanghai and Guangzhou courts will deal with hear comparatively more civil IP cases and will hear relatively fewer administrative cases, mostly involving administrative enforcement decisions. Guangdong has the largest IP docket in China although not the largest foreign-related docket. Guangdong’s handling of intra-provincial IP disputes could become a model for a national appellate IP court. Interestingly, an important and rapidly rising part of the overall IP docket in Guangdong involves online infringement owing to the large Internet business community in Guangdong. However online copyright is not part of the Guangdong Specialized IP Court’s jurisdiction, despite many of those cases involving different regions of China and their rapid rise and complexity. For example, from 2010-2013, the online infringement docket in the Pearl River Delta of Guangdong increased from 4058 to 9449, increasing from 21% to 38% of the overall IP docket.
The Supreme People’s Court also issued guidance regarding the selection of judges for the Specialized Court. The judges can be selected either from those judges engaged in IP or related trials, or the judges can be selected if they have the same qualifications and conditions and are engaged in law practice, legal research or are law teaching professionals.
- A judge should also have the following qualifications: more than 6 years of relevant trial work experience; a bachelors or higher degree in law; a strong capacity for leading trials and drafting judgments; and Senior judge qualifications.
- The standards for other legal professionals as judges of the Specialized IP Court are referenced in further comments.
The candidates for the president of the Specialized Court are appointed by the city’s People’s Congress Standing Committee. The new President of the Beijing IP Court, Su Chi 宿迟, and his deputies, Chen Jinchuan 陈锦川 and Song Yushui 宋鱼水 appear to have such credentials. Indeed, as if to underscore my analysis on the importance of Beijing to foreigners, the press reports also underscore their experience in adjudicating foreign-related disputes.
Beijing’s Specialized IP Court will also include “Technology Experts,” (技术调查官) who will help resolve technology issues that come up in the cases. The High Court pointed to Taiwanese and Japanese courts that make use of such officials, noting that in those courts the Technology Experts are senior officials. However, the SPC has also cautioned that the courts should not rely on such experts exclusively.
Written by Mark Cohen with the support of Marc Epstein and Yao Yao from Fordham Law School.