Huawei Sues Samsung in California, Shenzhen

Huawei has recently sued Samsung for patent infringement in Shenzhen, China and in California.   Samsung also announced it would countersue Huawei.  A copy of the California complaint is attached here

Huawei sued T-Mobile in the ED of Texas earlier in the year, and of course there was the earlier, much reported case against ZTE in Europe previously.  The ED Texas case seemed to be following the case of T-Mobile vs. Huawei, in Washington State, which was a theft of trade secrets matter.  In addition, the litigation against Samsung follows quickly on the recent news that Apple is now paying Huawei patent royalties.  There were also media reports earlier this year that Huawei and Ericcson renewed their patent license agreement.  

While these cases seem like continuing milestones in the patent smartphone wars, I believe there is another new development.  Press releases about Huawei asserting its patents in litigation and collecting royalties on its patents, also suggest that China’s stated plans to increase its IP royalty revenue have taken off.  It is not surprising that one of China’s leading overseas patent filers, Huawei, should be at the forefront of these efforts.

Interested in licensing?  Sign up for the forthcoming technology licensing program at USPTO with George Mason University on June 8.

IP Vacancy at USTR

USTR has recently posted a job announcement in its IP and Innovation office.  Knowledge of Chinese would be a helpful plus to a potential candidate.  The closing date is June 3, 2016.

Position:         Policy Analyst ( Trade)  

Grade level:     GS-13/14/15 

Opened:          Monday May 23, 2016

Closes:            Friday, June 3, 2016 at 11:59 pm EDT

 Please see below for links to each of the vacancy announcements for this position:

1)Announcement open to ALL sources / members of the public:  DE – https://www.usajobs.gov/GetJob/ViewDetails/439144600

2)  Announcement open ONLY to current or former Federal employees who have attained career status:   MP – https://www.usajobs.gov/GetJob/ViewDetails/439864400

Please note,  it is very important that those who wish to apply submit their application to the correct vacancy announcement, and that they submit all required information.  If a potential applicant is unsure which announcement is appropriate and the closing deadline is near, it would be safest to apply to both.

If anyone has any questions at all,  or needs any guidance,  contact the USTR Office of Human Resources at 202-395-7360.

Program on Trademark Strategy For Chinese Companies Investing Overseas

·         Location: Chengdu, Qingdao, Shenzhen, Tianjin and Wuhan

·         Dates: 01 Jun 2016 to 08 Jun 2016

IP Key (the European IP technical assistance/exchange program) is organising 5 half-day Trade Mark strategy seminars in Chengdu, Qingdao, Shenzhen, Tianjin and Wuhan between the 1st  – 8th June.  The following is from their news release:

The purpose of the trade mark IP strategy conference is to support Chinese companies and legal representatives on IP issues as they internationalise their business. Experts will discuss the importance of an IP strategy and the tools available to support its successful implementation. Two EU experts, Mr. Christophe Gimenez, EUIPO, IP Attaché for the EU Delegation to China and Mr. Martin Beckman, Project Manager, EUIPO will share their knowledge and expertise on how to create an IP strategy with the support of international databases.

 The seminars are a good opportunity for Chinese companies who are doing businesses abroad, or are planning for international expansion, as well as trade mark agencies and specialist to learn more about the international tools that can help them be more strategic in their approach to protect and register trade marks abroad.

Simultaneous Interpretation in English and Chinese will be available at the conferences.

Agenda for each city is available online on the IP Key website:    

http://www.ipkey.org/en/activities/upcoming-activities/item/3976-trade-mark-ip-strategy-conference

 To register for the seminar, email the partner in the corresponding city:

Date

Time

City

Venue

Contact Person

Email

June 1st 2016

13:30 – 17:30

Chengdu

The Jinjiang Room, 5/F Century City International Convention Center, Chengdu, China

Finja Zhang

finja_zhang@eupic.org.cn

June 3rd 2016

13:30 – 17:30

Qingdao

The Blue hall, Sino-German Ecopark, No. 2877 Tuanjie Road, Huangdao District, Qingdao 

DING Ling

zdzscqzx@163.com

June 6th 2016

8:30 – 12:30

Shenzhen

6/F Landmark Building, 4028 Jintian Road, Futian District, Shenzhen, China

CUI Can

cuican@szfetsc.com.cn

June 7th 2016

9:00-13:00

Tianjin

37/F Tianjin World Financial Center, Tianjin Tower

LI Yinghong

cft801@163.com

June 8th 2016

13:30-17:30

Wuhan

Wuhan International Cooperation Chamber of Commerce, 489 Zhongshan Road, Wuhan, China

Ellena Du

ellenadu@126.com

 For more information about this activity or for general information about IP Key, please contact Jaspal Channa jaspal.channa@ipkey.org

Anticounterfeiting Roundup

This is the fourth in a series on IP enforcement developments.  I previously blogged on judicial developments, online copyright, Customs enforcement, and now I am writing on anticounterfeiting, particularly trademark counterfeiting.

There has been much happening on anticounterfeiting in China the past several weeks, including the much-reported dramas of the annual meeting of the International Anticounterfeiting Coalition, with  Alibaba being denied membership­­­, US Ambassador Baucus speaking at the IACC annual meeting,  and Jack Ma meeting President Obama.  On top of this drama, there had also been data out of China from IP Week (April 26), as well as the availability of other reports, such as USTR’s Special 301 report, which also singled out China’s online environment.

There have also been several high profile cases, typically involving allegations of bad faith trademark acquisition.  One such case is the IPhone trademark dispute.  Another case that may be in the making between Under Armour and Uncle Martian.   These two disputes came on the backs of a hearing on the Michael Jorrdan / Qiaodan trademark dispute which was heard by the Supreme People’s Court on World IP Day, (April 26, 2016).

Despite the adverse publicity for China’s IP system, there is plenty of enforcement taking place.  Alibaba reported through news outlets that the company has identified 3,518 groups selling fake goods on its platforms in 2015. It helped the police seize counterfeit goods worth $125 million and nail 300 suspects.  In addition, surveys conducted by 91% of AmCham China respondents in a recent survey believed that that IPR enforcement had improved over the past five years, a view that was generally shared by USCBC [US-China Business Council] respondents (38% reported some improvement over the past year).

The sense of improvement may be due in part to the high level attention being given to long standing enforcement issues, particularly in the online environment.  Towards the end of April 2016, the State Council released the outline of the Outline for the Work Plan for 2016 for the National Anti-IP Infringement and Anti-Manufacturing and Sales of Substandard and Counterfeit Goods (April 19, 2006).  This Work Plan contains numerous provisions that address on-line and transborder enforcement.  The first action item in this plan is to “strengthen control of infringement in the online environment. (Sec. 1.1)”  Product sectors targeted include:  food and pharmaceuticals; agricultural chemicals, household electronics, building materials, car parts, and childrens’ toys.  Exports by post and express services are to be targeted.   The Work Plan notes that there will be a 12thSword Network” campaign against online copyright enforcement.  Cooperation with large online platforms is to be intensified, and supervision over them is to be strengthened.  An e-commerce law is to be drafted (Sec. 3.10).  International cooperation between law enforcement is also underscored (Sec. 7.26).

On May 4, SAIC announced its own on line enforcement campaign for 2016 (2016网络市场监管专项行动方)(May 4, 2016, for action until November).   The campaign calls for SAIC to take a leading role in “combatting online trademark infringement and other illegal activities. Each region’s AICs/ market supervision departments should intensify the legitimate rights and interests of the network of sale of counterfeit famous trademarks, should increase their efforts to deal with foreign trademarked goods, and safeguard the rights of consumers. They should investigate and punish the network abuse, fraudulent, counterfeit agricultural products of geographical indications.   As for large-scale, cross-border complaints by trademark rights holders and consumer complaints involving centralized network typical cases of trademark infringement and counterfeiting, SAIC shall strengthen its attack on the production, sales of registered trademarks and other aspects of the work of the whole manufacturing chain.”

The courts have also not been shy at tackling difficult issues.  One of the most important decisions affecting exports of counterfeit goods in 2015 was the PRETUL decision at the SPC (Nov. 16, 2015).  This case held that unauthorized use of a mark in China constitutes infringement only if it can serve as an indicator of source of a product or service in the Chinese market. In appropriate circumstances, export sales by an OEM may not constitute infringement of the Chinese rights owner rights.

I welcome your comments and corrections!

US and China Customs Data Compared

The following are some reflections on what Customs-related enforcement activity in the US and China last year.   The data generally shows the continuing problem of a high level of exports of counterfeit goods from China, difficulties in addressing online and border measures for patents, and the need to work with Customs officials to secure enforcement.

Both US and Chinese data generally showed an increase in Customs activity, especially in Sino-US trade, for 2015.  According to US  Fiscal Year 2015 data, the number of IPR seizures increased nearly 25 percent to 28,865 from 23,140 in FY 2014.  The total estimated manufacturer’s suggested retail price (MSRP) of the seized goods, had they been genuine, increased 10 percent to $1,352,495,341.  China and Hong Kong together at 87% of seizures, versus 88% for 2014.

China Customs also released its data in late April 2015.  Chinese data shows that the United States rose from the number 5 slot to the number one slot in terms of destination of batches of shipments.  However, the US was number 29 in numbers of seized items (suggesting a relatively small quantity in each batch of seizure for export to the US).   Postal shipments accounted for 84% of overall seizures, an increase of 2.7% from last year.  There was however a drop in seizures upon export from 23,019 to 22,000, which is contrary to the US experience – since increasing on-line sales in particular should likely result in more seizures, presumably at less value.

Iran was the export destination from China with the most goods seized, holding the number one place in 2014 and 2015.  As discussed last year, 2014 showed a diversification in destinations of China’s export destinations for counterfeit goods, which continued for this year.

There was also a change in the mix of China and Hong Kong origin seizures coming into US ports.  China origin seizures by US Customs dropped by 11% in 2015 and Hong Kong picked up the slack (10%).

Why was there such a dramatic “migration” of counterfeits to Hong Kong?  One other odd trend is that trademark litigation in Southern China (Guangdong)  actually dropped by 4.11%, according to data from the Guangdong High Court.   Any downward trend in Chinese IP statistics is often a warning sign – by comparison, the Supreme People’s court noted in its 2015 White Paper that national civil TM cases increased nationwide by 13.14% during this time frame to 24,168 cases.   The data might suggest that Guangdong is becoming less important as a place for enforce trademarks and/or that transshipment through Hong Kong is becoming more important, but it is too early to tell.

US data shows that the three largest categories by numbers of seizures were wearing apparel, consumer electronics and pharmaceuticals/personal care for 2015.  China reported that cosmetics, tobacco products, and machinery were amongst the major categories of seized products.  Cosmetics, jewelry, medical devices, and watches showed the greatest levels of increases in Chinese seizures.

Chinese Customs data also shows that the number of articles seized based on ex officio actions dropped dramatically (65% vs. 98%) comparing 2015 to 2014, suggesting the need for increased engagement by rightsholders with Chinese Customs to alert them to suspected infringing shipments.

Interestingly, China reported a noticeable increase in seizures on behalf of its domestic IP rights owners, which included 1939 batches with a value of more than 55,900,000 RMB.

As with the United States, Chinese Customs’ emphasized seizing trademark infringing goods over other rights.   In 2014,  TM’s occupied 96.86% of total items seized, with only 1.94% related to patent.  In 2015, TM related seizures increased to 98% of total items seized; copyright and patent combined were about 2% of the items seized.

US Customs reports that there was also a big increase in exclusion orders issues and enforced on behalf of the International Trade Commission, typically involving patents, with a 13-fold increase in shipments seized from 2 to 26.   In China, on-line enforcement against articles that infringe patents is also attracting more attention from Chinese regulators, with the Chinese patent law amendments also looking at an increased scope of liability for online service providers (Art. 63).

While on-line enforcement is getting more attention,  the Federal Circuit decided last year in ClearCorrect v. Align that the USITC Section 337 jurisdiction over the importation of “articles that infringe” does not extend to the “electronic transmission of digital data”, which may reduce the ITC’s role in the digital environment, particularly those involving patents.  This otherwise appears to be a trend that is contrary to an increased focus on on-line infringement.

CATR’s Report on Copyright Enforcement in the On Line Enviroment

The China Academy of Telecommunication Research (CATR), at the request of the National Copyright Administration,  released a report on April 26, 2016 on Copyright Protection in the Online Environment.

The report noted that  there were 2,118 on line civil copyright cases in total, an increase of 28.3% from last year (this total number seems smaller than I would have guessed).  The SPC White Paper reported that overall there were 66,690 civil cases, an increase of 12.1% from 2014.  Regarding civil on line copyright enforcement, 44% of the online cases involved music and 18% involved audiovisual infringement.  Amongst the IP courts, Guangdong had the highest percentage of cases (39.5%), followed by Shanghai (33.5%) and Beijing (16.5).  However, the province with the most cases was Hubei (476), followed by Beijing, Guangdong, Zhejiang, Shanghai and Jiangsu) (see chart below).

graphofcivilcases

The report also notes several important legal and policy initiatives, including directives from the National Copyright Administration on online liability, and a revision to the Criminal Code, making it clear that on line technology providers can be held criminally liable for copyright infringement.  The report also singles out the release of a draft of  proposed rule on Copyright Administrative Enforcement. (著作权行政处罚实施办法 (修订征求意见稿)as well as new rules Concerning Specifications of the Copyright Order In Online Transmissions (关于规范网络转载版权秩序的 通知),  Stopping Online Music Service Providers Transmitting Unauthorized Content(关于责令网络音乐服 务商停止未经授权传播音乐作品 的通知)and the Rule Concerning Specifications of the Order of Cloud Driver Service Provider Copyright (关于规范网盘服务 版权秩序的通知).

Data on copyright administrative and criminal enforcement in the online environment was not made available in this report.   According to the SPC White Paper, there were 523 criminal copyright cases, involved 547 people.  Moreover, news reports accompanying its release reported the following data: during the Sword Network Campaign in 2015, there were 383 administrative enforcement actions, with fines of 4.5 million RMB, 59 cases transferred to criminal prosecution, and 113 websites closed.

Upcoming IPR and R&D Program in Nanjing

randd

SIPO and USPTO will be co-sponsoring a program on IPR issues of concern to conducting R&D in China.  The seminar will bring together government officials, senior IP and accounting experts, and corporate IP counsels to provide information of value to R&D centers in China.   The event will be held on May 31, 2016 at 8:30 a.m.-5:00 p.m. at the InterContinental Nanjing, address: 1 Zhongyang Road, Gulou District, Nanjing, Jiangsu.

A summary of the sessions are included below:
研讨会由如下7个主题构成:

Session 1: U.S.-China Current R&D and Collaboration Environments

主题1: 中美当前的研发和协作环境

Session 2: The Roles of IP in the Research and Development Process

主题2: 知识产权在研发过程中的角色

Session 3: Protecting Your IP: Discussion on IP Filing Strategies in U.S. and China

主题3: 保护你的知识产权:对中美知识产权申请战略的讨论

Session 4: Commercializing Your Innovations

主题4: 创新的商业化

Session 5: Drafting and Negotiating IP License Agreements – Domestic and Technology Imports; Intercompany Ownership and Transfers

主题5: 知识产权许可协议的起草和谈判–技术进口;公司间的所有权和转让

Session 6: High and New Technology Enterprises and R&D Tax Breaks

主题6: 高新技术企业和研发税收减免

Session 7: Panel Discussion of US and Chinese Experts on IP related opportunities and challenges for companies with R&D facilities in China

主题7: 圆桌讨论:中美专家就在华设立研发中心的企业面临的知识产权机遇和挑战的讨论

Please RSVP by May 24, 2016 to Aster CHEN at PTO_Shanghai_Office@trade.gov (Please include your name, title and company/organization).  Seats are limited to 100 on a first-come first-serve basis.

请在2016524日前回复陈书新 PTO_Shanghai_Office@trade.gov 确认出席,回复时请提供您的姓名、职务及单位/机构名称。100个席位,先到先得

Photo subject to creative commons license.  Source: http://www.lastampa.it.