Antitrust and Licensing on June 3, plus Standards, Data and E-Commerce: Plenty for Everybody

The US-China trade war began with disputes over the transfer of technology to China, including forced technology transfer.  How much has the licensing environment improved for the foreign business community? How will China’s developing antitrust regime affect foreign businesses seeking to monetize their IP in China?  Considering joining us at next week’s webinar (June 03, 2020, 4:30 – 5:45 PM PST) (previous posting had a typo!).  The speakers are Hao Yuan (Tsinghua Law School/Berkeley Law); Stuart Chemtob (Wilson Sonsini); Deng Fei (Charles River Associates); David Dutcher (Western Digital) and Robert Merges (Berkeley Law). Here is the link to the series description, and to the registration. This series/program incurs a charge, except for students/media/BCLT and other benefactors.

In another licensing-related development, on June 16, 2020, from 12-1pm EDT,  I will be speaking along with Jim Harlan, Senior Director, Standards & Competition Policy, InterDigital, Inc on the US Department of Commerce’s Bureau of Industry and Security’s (BIS) ban of Huawei and its effect on global Standards Developing Organizations (SDOs). This program is sponsored by the American Intellectual Property Law Association’s Standards and Open Source Committee.  Non-AIPLA members may join this open event.  Call: +1 (347) 991-7204, passcode 251151532.

A video of the recent webinar we hosted at Berkeley on “Following the Data: What the Latest Research Says About China’s Legal and IP Environment” with Ben Liebman, Tobias Smith, Fei Deng, Melissa Schneider and Robert Merges is found here.  China Daily’s reporting on the IP Aspects of that program is found here.

Finally, I recently was interviewed by Pinduoduo on e-commerce regulation in China and IP.  Here is a link to the podcast on Spotify.

First in the Series: Upcoming Webinar on Pharmaceutical IP Issues in China

On May 27, 2020, Berkeley Law will be hosting the first in a seven-part series on Chinese IP.  The series will provide CLE credit.  Attendees are also eligible for a certificate upon completion of the series.  You can choose to attend individual classes without the certificate, or the series ($50.00/$299.00).  Here is the information on the pharma program:

Session 1: May 27, 2020 – Pharmaceutical IP Issues / 4:30 P.M. (PT) – 90 min.

Pharmaceutical IP protection was a big “winner” in the Phase 1 Trade Agreement. How is China planning on implementing its commitments to improve protection for innovative chemical compounds and biologics? 

Speakers:

  • Chief Judge Randall Rader (ret.)
  • He Jing, Anjie Law Firm
  • Zhao Xu, East China University of Politics and Law
  • Tony Chen, Jones Day
  • Karen Guo, Novo Nordisk
  • Moderator: Mark Cohen, Berkeley Law

$50 single session registration fee
Register here

There will also be a separate round-table scheduled for June 8 on patent linkage in conjunction with this event (no additional fee).  Details to be announced on Wednesday.

The Webinar series will cover some of the “hottest” topics in China IP issues including trade secret protection, abusive trademark registrations, developments in copyright law, pharmaceutical IP developments, enforcement issues, licensing and antitrust, trade secrets, and the emerging different in patent prosecution practices in AI, software-enabled inventions and diagnostics.  Speakers include faculty from Berkeley Law and other institutions, former Chief Judges Rader and Michel, former USPTO Director Kappos, along with many other experts.    

RIPPLES IN STILL WATER: RECENT DEVELOPMENTS ON IP IN CHINA


Ripple in still water / When there is no pebble tossed / Nor wind to blow  (Robert Hunter)

The Chinese IP environment continues to pursue its own domestic needs-driven agenda.  Criminalization of trade secret matters, while an area of concern to the United States, is also important to China’s development of an innovative economy.  Certain improvements in China’s criminal trade secret regime are also contemplated in the coming year, including a lowering of criminal thresholds, as required  by the Phase 1 Trade Agreement (Art. 1.7) and  the SPC’s judicial interpretation plans for the year.   

It is not surprising, then, that a recent Nanshan (Shenzhen)  criminal trade secret case involving employee misappropriation of 5G-related technology from ZTE has caught the attention of the media, including Aaron Wininger and Jacob  Schindler (behind a paywall), as well as the Chinese press.   As Western reporters have noted, how much is such a case a harbinger of changes to come?

There are three significant concerns with reading this case as an example of criminal trade secret reform in China: (a) it took place in Shenzhen; (b) it involved an SOE as a victim (ZTE); and (c) it involved an important technology to China (5G).

Shenzhen has long been a center of criminal trade secret litigation, with a typical scenario involving a well-connected local Chinese company suing its ex-employees for theft of trade secrets.   I recall a meeting I had with the Shenzhen police department many years ago, where their case statistics suggested that they may have investigated as many as one fourth of the total number of criminal trade secret cases in China that year.  My back of the napkin calculation at that time seems to have been accurate.  For example,  during the period from mid-2013 to -2014, Shenzhen courts heard 23 criminal trade secret cases involving 25 people.  By comparison, in 2017, the total number of criminal trade secret cases handled nationwide by the courts was 26

Whatever the current number, the police department from Shenzhen is proactive in that area.  It has brought several cases on behalf of local companies.  The Shenzhen police even polls companies on how they manage trade secret concerns.  Moreover, as with the recent cases, and  China’s administrative enforcement mechanisms for trade secrets, defendants are typically SME’s or individuals.  

Concerns have also been expressed in the past about excessive criminalization of trade secret cases in China.  If there are high damages where there is adequate proof or other measures to compel evidence (such as under recent revisions to the Anti-Unfair Competition Law), civil cases should also be brought, and might thereafter be referred to criminal prosecution by the civil judge as suggested by Prof. Huang Wushuang 黄武双 . Prof. Huang is a leading Chinese academic in this area;  34 of his recent lectures on trade secretion protection in Chinese are found here.  . 

How much of a “ripple in still water,” without any durable impact, is this recent case? One important test will be whether a foreign victim of trade secret theft involving a priority technology for the Chinese government would have similar access to criminal trade secret enforcement resources, particularly if the defendant is an important local Chinese company. 

 I will discuss a few other potential “ripples in still water” in forthcoming blogs…

Resources for the Week of May 18, 2020

On May 20, 2020 (4:30 PM PST), Berkeley will be hosting the next in our China series: Following the Data: What the Latest Research Says about China’s Legal and IP Environment. The webinar will cover data-driven research on Chinese legal developments and how these tools can provide strategic insights.  The speakers include: Benjamin Liebman, Columbia University; Tobias Smith, UC Berkeley; Melissa Schneider, Darts IP; Robert Merges, UC Berkeley; and Fei Deng, Charles River Associates.  I will be moderating.

On May 13, Berkeley hosted a book warming for Mara Hvistendahl’s The Scientist and the Spy: A True Story of China, the FBI and Industrial Espionage concerning a Chinese economic espionage case involving hybrid corn seed.  We had a lively discussion among the author, the former FBI agent in charge of the case (Mark Betten), the Dupont IP lawyer representing the victim (Jennifer Johnson), Jim Pooley, and myself involving IP and competition issues, racial profiling, criminalization of trade secrets issues and other issues. Here is the link to the recording.

Attendees are also invited to attend a series of webinars on IP-related issues in China which will include such topics as pharmaceutical IP matters, trade secret issues, licensing and antitrust, ‘101 issues in China, and abusive trademark registrations.  Please consult the website for fees for further information on the program, CLE credit, and the possibility of earning a certificate from Berkeley Law after completion.  We begin on May 25 with a discussion on the important pharma-related IP developments in China, many of which were agreed to in the Phase 1 Trade Agreement, and will include several speakers from the US and China who have been tirelessly working on these issues.

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Some China IP Resources While Sheltering in Place

An unofficial translation of the proposed Copyright Law amendments that have been made available for public comment, is available here.  Thanks to Prof. Jiarui Liu for sharing his translation! All translations are unofficial and are being provided for the convenience of non-Chinese readers, with no representations and warranties whatsoever.

The next event in our series of webinars is with Mara Hvistendahl, author of The Scientist and the Spy: A True Story of China, the FBI, and Industrial Espionage. Although Ms. Hvistendahl has already appeared in several interviews,  this one promises to offer different perspectives on the book.  She will be joined in this webinar by Mark Betten, an FBI agent who is chronicled in the book, Jennifer Johnson, DuPont’s attorney who was also involved in the investigation, as well as Jim Pooley, who teaches trade secrets at Berkeley Law and me.   The webinar will be held on May 13, 2020, at 10:30 AM (PST).   The registration page is here.

A video recording of our successful May 6  webinar, with Amb. Craig Allen, Wendy Cutler and Warren H. Maruyama on The Phase 1 Agreement and its Implementation is also now available here.

All of the above are being provided free of charge.