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…