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.
Categories: China IPR
It appears that no one among the authors focuses on considering the operation of the Chinese courts in his (her) work, so it is understandable that basic issues such as discovery, deterrent damages, case law, technology assessors in patent cases, did not receive due attention.