The Xmas Phone Call of ’06 And What It Meant to IP Cooperation

ID5The recent, successful launch of the ID5 (the Industrial Design 5) at the USPTO (picture above), with the participation of  OHIM (Office for Harmonization in the Internal Market of the EU), JPO, KIPO and USPTO underscores, yet again, the role of cooperative dynamics in IP reform.  While historically academics and officials had argued that IP reform in countries like China depended on either indigenous pressure (becoming a “stakeholder” in the IP system) or exogenous pressure (301, threats of trade retaliation or ‘linkage diplomacy’ as part of WTO accession or other trade agreements), another form of engagement is that conducted by and among IP offices.

I was fortunate to have played a small role in the evolution of this third dynamic.  On December 24, 2006, while on vacation in Los Angeles, I received a phone call from then USPTO Director Jon Dudas requesting that I call up SIPO’s Commissioner Tian Lipu to explore the possibility of developing an expanded “trilateral” of patent offices (EPO, JPO and USPTO) to include SIPO and KIPO.  On Christmas eve, I placed a phone call to the then Director General of SIPO for International Cooperation, Lv Guoliang 吕国良, extending an invitation for Commissioner Tian and Director Dudas to have a phone call together to see if SIPO might be interested in joining an expanded group, now called the IP5. From that original effort also came the inspiration for grew the TM5 [Trademark Five], and this past week, the ID5.

It is difficult to estimate the importance of these relationships, as they typically involve more technical issues of office operations, with the involvement of trade associations that are focused on the operations of these offices.   However, cooperation amongst the five largest offices also represents the vast majority of patent, trademark or design filings globally, and are also responsible for much of the activity in each of the five offices own dockets, as well as through such mechanisms as the Patent Cooperation Treaty, Madrid Protocol or Hague system for industrial designs.

One way of understanding its importance to China of these mechanisms evolved in response to that Xmas phone call.  In the spring of 2007, the United States took certain public steps towards filing of a WTO case against China.  The three claims that were ultimately filed involved copyright piracy and trademark infringement.  At that time, I was serving as IP attaché in Beijing.  Former Vice Premier Wu Yi told a large audience during IP Week in April 2007 in Beijing that China would “fight the US to the bitter end”.  I was at the conference as was then Ambassador Clark T. Randt, III.  The US Trade Representative, Susan Schwab, was quick to respond that filing of a WTO complaint was not a hostile act.   China had tried to avert the filing of a case by lowering criminal thresholds for IP criminal enforcement earlier in April, but apparently this had been deemed to be too little, too late.  China still warned of “severe damage” to bilateral trade relations and a suspension of some forms of cooperation between the US and China.

Despite threats and retaliation, the IP5 meeting planned for Honolulu, Hawaii in May of 2007 went on as  scheduled.   Since that time in fact, the IP5 has flourished, and has been joined by the TM5, and now the ID5.

What kinds of strategy works best to advance IP reform?  Taking the WTO case as an example, some have argued that the WTO case was a failure for the US  at the time, while others (including some Chinese scholars) have argued differently.  The rapid rise in criminal enforcement in China for IP infringements suggests that even if one accepts the premise that the US did not succeed in having China amend its law, it did draw attention to an important enforcement mechanism that had been underutilized in China, and now has grown to about 13,000 cases per year.    In a sense, the case accomplished its goal of increasing criminal enforcement in appropriate circumstances and in retrospect should be seen as a success for both sides.

Another way of looking at progress is to see what China was interested in advancing despite the WTO case.  Did the IP5 go forward in 2007 because the WTO case did not significantly involve patents, an area which I had considered “orphaned” trade discussions until relatively recently? Did the case demonstrate China’s abiding increase in continuing to engage in patents, an area which it deemed vital for its goals of developing an innovative economy?  Was the success of the IP5 due in part to the close relationship that existed between Jon Dudas and Tian Lipu? Or do these mechanisms succeed because their goals are invariably more technical, practical and obviously win-win?  Clearly, these big office cooperation mechanisms have their advantages, both in promoting practical steps towards improving services for the clients the offices serve, but also in developing trust amongst their leadership.  As USPO Director Michelle Lee noted in the recent launch of the ID5 “as only the five largest industrial design offices can, we must come together collectively to strategically develop tools, practices, and office efficiencies. These agreements will promote the further development of user-friendly, consistent, and interoperable industrial design protection systems. It through this approach that the ID5 will become the success we are all here to ensure.”

Bon voyage, ID5 – a continuing journey that I like to think began on Christmas Eve, 2006.

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