ABA Comments

Recent Translations and Comments on Laws and Cases

Here are some translations and legislative comments that have been made for further distribution. As usual, all translations are unofficial. Please check against the Chinese original before relying upon any translation posted on this website.

  1. The IPO submitted comments on September 22, 2021,  to the China National Intellectual Property Administration (CNIPA) offering suggestions to improve CNIPA’s Draft Revised Patent Examination Guidelines. The comments noted that IPO especially welcomes “the increased attention being directed to both partial designs and GUI designs.” Prior comments on examination guidelines are found at attachments A , B and C.  I also previously blogged about IPO’s earlier comments on CNIPA examination guidelines.
  2. The American Bar Association also made available its comments on a draft judicial Interpretation of the Anti-Unfair Competition Law (Sept. 17, 2021)
  3. China has published a draft of a new Seed Law for public comment. The new Seed Law authorizes certain improvements in plant variety protection.   A comparison chart of the old and proposed Seed Law has been provided to us by USPTO (Aug 20, 2021).  The blog has already published comments on the new judicial interpretation (JI) on plant variety protection.  A USPTO translation of the March 23, 2021 draft SPC JI for public comment has also been made available.   
  4. A partial translation of China’s revised Trademark examination guidelines has been prepared by the USPTO (Chapters I, II, VI, VII, VIII and IX) (144 pages). Comments were due by July 31, 2021.
  5. On a less happy note, several sources in China have told me that a draft of the Implementing Regulations to the recently amended patent law is reportedly currently circulating in China.  The problem posed by a lack of implementing regulations was the subject of an earlier blog.  I have also been told from several “reliable sources’ that there is no current plan to solicit public comments on this draft, notwithstanding that State Council regulations normally require a 30-day comment period.
  6. To conclude it all, I have attached an unofficial translation of SPC Ruling on Jurisdictional Objection Appeal in OPPO v Sharp (dated August 19, 2021).  There is already considerable commentary around this case, but few commentators have considered the oddities of the timing of the decision and its relationship to its content.   

The August 19 decision was, dated a few weeks before the September 7, 2021 Chinese submission in response to the July 6, 2021 EU request at the WTO to produce additional document concerning certain SEP cases, including the Shenzhen court decision in this matter.    It appears from a variety of media sources that the case was not actually released until a few days before the September 7 response, perhaps around September 2.  China may have intentionally delayed responding to the EU request until the Oppo v Sharp case was released.  The EU had requested a response within eight weeks, but this was not a legally binding request.  China responded one week later than the due date, on September 7.  China’s responded that “there is no such obligation under the TRIPS Agreement for China to respond.” However, in a sense China already provided one response in the SPC opinion.

In its July 6, 2021, request, the EU specifically asked that China “clarify what the Shenzhen court [in OPPO v Sharp]  gave as a legal basis for it to have jurisdiction to set worldwide license rates.”  In addressing the jurisdictional issues, this SPC case holds that the use of the negotiation situs for a SEP license is one jurisdictional basis for a global license adjudication, thereby answering the EU’s request.  This response however opens up a range of other concerns.  China’s Civil Procedure Law does not specifically set forth the negotiation situs as a jurisdictional basis.   Rather, if a SEP matter is a contract dispute, the Civil Procedure law authorizes jurisdiction in the defendant’s domicile or place of performance.  If it were a tort, it should come under the jurisdiction of the defendant’s domicile or the place where the tort was committed.   The court does state that violating good faith obligations in negotiating SEPS is a general civil tort, which might suggest a tort (or infringement) based jurisdiction for the court.    

Negotiators Beware: If, indeed, the place of negotiation is aggressively used in China as a basis for jurisdiction for global rate setting of a SEP, parties concerned about litigating in China may wish to consider avoiding negotiating there.  Moreover, what constitutes bad faith negotiation may be quite different from other jurisdictions, and could include delays in responding to inquiries, timeliness in delivery of claim charts, what constitutes a reasonable royalty rate, etc.  The lesson of Oppo v Sharp may be that negotiating with a party in China — including via zoom or telephone — could lead to a compromised global licensing program.

Thank you to AIPLA, ABA, USPTO and others for sharing their comments and translations.

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