In the first part of this blog, I talked about unilateral steps that the United States and China have been taking during the ‘trade war’ to address concerns regarding forced tech transfer. In this section I look at bilateral steps that can be taken. I begin by looking at what the US and China should not do (“Do No Harm”), and then I focus on 5 areas for legislative reform: trade secrets, licensing, good faith, patents and litigation. I conclude with confidence building steps.
Do No Harm:
There are some bilateral steps taken from playbooks of the past that China and the US should not do:
- Political campaigns, particularly to address patent or trade secret infringement. These actions are great for politicians, but they offer no prospect of durable relief.
- Accepting Chinese political statements or enactment of normative documents (inferior to State Council “regulations” 法规） that have no binding effect.
- Permitting two different fact sheets in Chinese and English to emerge from discussions – Diplomatic discussions should not be a “Rashomon” (羅生門) (see picture below) – subjective explanations of a common experience. We have already differing interpretations of recent negotiations. For a formal document, that generally means that an agreement needs to be reached several days before a due date in order to ensure there is a harmonized text.
- Entering into an agreement that is not verifiable or that the US government doesn’t have the resources to verify.
In his June 9, 2010 testimony before the Congressional Security Commission, USTR’s Lighthizer, then a private attorney, noted that “China’s commitment to the rule of law is very much in doubt, and the U.S. government continues to express major concerns about China’s failure to respect U.S. IPR.” Given the investments to date in effecting change in China, I hope that USTR seeks durable legal changes that have too often been atypical.
The prognosis, however, is not positive. Willingness to “horse trade” ZTE sanctions and Huawei extradition for trade concessions is one indication of US willingness to bend its rules. Similarly, Xi Jinping apparently suggested at Buenos Aires that he would approve the NXP merger with Qualcomm at this time. Many countries, including the US have extended bilateral science and technology cooperation agreements with China without necessary legal changes to China’s licensing regime in place that would definitively facilitate sharing of improvements between the countries. The administration’s reluctance to bring trade cases involving IP against China is another sign that negotiation, rather than durable legal changes, may become the dominant means of resolving the current impasse. However, if we accept extra-legal commitments from China, how can we expect China to make structural changes in accordance with rule of law?
Nonetheless, it isn’t too hard to develop a range of possible legal outcomes that would help address US concerns over the IP issues identified in the Section 301 Report, provided they are carefully monitored. Here is my initial positive list:
China adopts a unified, stand-alone trade secret law. This law would address the problem of scattered trade secret laws, insure that criminal trade secret cases are prosecuted, and that employees are treated as subject of trade secret protection and as actors in trade secret infringement, provide appropriate burden of proof reversals (e.g., for “inevitable disclosure” or in proving aspects of misappropriation), establish punitive damages, provide for referral mechanisms from administrative or civil proceedings to the courts, etc. China previously rejected the idea of a stand-alone law in revising its current Anti-Unfair Competition Law, yet many leading Chinese IP authorities still consider it to be a useful concept.
China might also follow recent Korean legislative practice criminalizing overseas trade secret misappropriation with the intention to benefit a domestic entity, and imposing aggravated penalties in such circumstances. Such a provision, if enforced and monitored, could help address US concerns about Chinese indifference to overseas trade secret thefts, as well as set the stage for greater cooperation in transborder trade secret theft.
Technology import/Export Regulations and Licensing:
The Chinese government is already seeking to revise the Catalogue of Foreign Investment in China, and is considering a Foreign Investment Law to provide greater protections against forced technology transfer, including, hopefully, provisions regarding Joint Venture ownership of foreign licensed technologies. These positive steps are still not enough, due to pervasive national and local incentives in China at this time to acquire new technologies and the difficulties in tracking forced technology transfer. As one additional step, China should vest jurisdiction in disputes over such forced technology transfer in the newly established circuit IP tribunal of the Supreme Peoples Court, in order to insure a consistent, high-level focus and opportunity for redress, including expanding its jurisdiction over decisions to approve or deny joint venture registrations.
China has also shown no interest to date in revising the Administration of Technology Import/Export Regulations (TIER). Chinese intransigence in this area is harmful to China. Until China amends its law, I suggest that the US consider enacting legislation imposing reciprocal treatment on Chinese licensors of technology to the United States, as ITIF has also suggested.
I also encourage formation of a bilateral non-governmental commission (“Bilateral Commission”) to review progress in forced technology transfers. If necessary, the US could reimpose sanctions if sufficient progress is not made. This Commission should also require that China regularly publish reliable licensing data on the quantity of legitimate technology transfer occurring between China and other countries, including technology transferred as part of a joint venture formation. This information could support better data-driven discussions on technology flows between China and other countries.
China’s patent law reform offers the possibility for concrete changes that should not be missed. Of particular concern, is the absence of a patent linkage regime in the current draft. USTR might consider requiring China to make necessary changes in its patent and food and drug laws to fully implement a modern pharmaceutical patent linkage regime, including data exclusivity and patent term restoration.
The Section 301 report also hardly addressed potential issues involving discriminatory treatment in patent prosecution, such as has been alleged from time to time in China. As examples, low rate of patent grants in pharmaceuticals, and disparate treatment in granting of SEPS have been the subject of academic and industry concern. Consideration of discriminatory treatment, or lack thereof, should be the focus of any future collaboration between the US and China (such as my proposed Bilateral Commission).
This issue of bias need not be “tip-toed” around. China fired what was likely the first salvo when it alleged unfair treatment by USPTO regarding an IWNCOMM patent application at the USPTO during a JCCT meeting (a “Rashomon” meeting, where there was a different U.S. outcome sheet). USPTO data, however, generally shows that Chinese patent applications in the US are treated as well if not better than US applications, according to my former colleague Larry Lian (see, e.g., slide 14 above and the accompanying deck). China has not produced similar data on American applications in China or refuted the research to date in this area.
The United States and other countries might also look at temporal studies to see if there is any link between changing industrial policies and behavior of China’s patent office towards foreigners. One promising area of research that one of my students undertook in my Chinese IP class this year suggests that there could be temporal differences in patenting behavior over a multi-year period: as China increasingly focuses on national policies to stimulate indigenous innovation, bias rates may be affected.
The US should also push China to reform its metrics driven approach to patent filings, which wastes resources and distorts markets.
Good Faith/Bad Faith:
One of the discrete trends in China’s domestic IP environment is an increasing focus on the role of good faith / bad faith in a range of IP-related activities. Elevating the legal consequences of bad faith actions could lead to structural changes in China’s IP regime. Good faith has been an increasing factor in dealing with bad faith trademark registrations, in Guangdong IP court guidance on SEP negotiations, as well as in trust-losing patent behavior in the recent NDRC MOU providing for coordinated interagency action involving patenting behaviors, and will likely play a part in consideration of punitive damages for patent infringement in the proposed patent law reforms. It could be extended further to impose a duty of candor on patent and trademark applications, provide for deterrent penalties against frivolous IP litigation, address contempt of court, etc. Despite my concerns regarding the social credit system, it can also be tasked to monitor bad faith behavior in IP and non-IP related areas, to support claims for enhanced damages or referrals to criminal prosecution. The courts can take an initial look at this area across a range of judicial sectors.
China’s efforts to publish cases and increase transparency over the past several years are laudable, but the work is not complete and confidence in the judicial system thereby suffers. The courts should insure that, wherever possible, all cases are published. Cases involving national or trade secrets could be expunged of confidential information but otherwise be made public. The current data on trade secret theft is especially incomplete. Complaints and other motion papers, including dismissals due to settlements, should be made available to the public, along with preliminary and interim injunctions. Generally speaking, China’s transparency efforts are vulnerable to claims of selection bias, which undercut the utility of these efforts for comprehensive trade negotiation purposes. Transparency has the potential to create and support structural change, and it should be exploited for that purpose.
Assuming that the US and China can get past this 90 day milestone, efforts to improve the environment for high tech also need to be established There were some efforts underway in the Obama administration that can create incentives for improvement in China’s IP regime (e.g., accession to the TPP), and positive environments for technology collaboration (e.g., the US-Clean Energy Research Center). There is a tremendous upward potential for collaboration between the US and China if the right frameworks can be developed.
One thing is clear: real accomplishments, not conferences and dialogues, are needed. As I often reminded my Chinese colleagues over the years, reform in China should not be an entirely self-serving process. The world needs better scientific collaboration to address many of the looming global challenges we face. If China plays its cards correctly it can emerge as a balanced global stakeholder and welcome partner in innovation. Otherwise, I fear that the trend could be ever downward.
January 2， 2019 Update： A translation of the draft Foreign Investment Law, which is now open for public comment is available at the NPCObserver website.
(Note: Please feel free to add your suggestions! Also, I am indebted in this blog to the work of my students in my Chinese IP class at Berkeley this year, many of whom prepared papers on some of the suggestions in this blog).
Movie poster for Rashomon, below: