I will be speaking on February 20, 2019 at Berkeley Law at 12:50 in a Fashion and IP discussion and screening with my former Fordham colleague Prof. Susan Scafidi. We will be screening the recent film Fashion and IP.
The program is free and open to the public.
China is developing a robust commercial privacy and cybersecurity framework. A cybersecurity law took effect in 2017, multiple agencies are issuing guidelines, and a new e-commerce law with privacy and cybersecurity provisions just entered into force on January 1, 2019. Further privacy legislation is being drafted, as China may be looking to develop a companion to the comprehensive privacy law of Europe. (Meanwhile, the US has no comprehensive privacy or cybersecurity law; Congress will debate the issue this year, but the outcome is quite uncertain.)
This raises a number of provocative question: In terms of the relationship between consumers and corporations, is China becoming more privacy-protective than the US? How should we understand the overall privacy and cybersecurity trends in China? How well does China’s overall legal environment support the implementation of the new and proposed laws?
To try to answer some of these questions, the Berkeley Center for Law & Technology is organizing a one-day conference in San Francisco on March 1. The agenda is here; registration is here.
Much of the focus will be comparative, with an emphasis on interoperability and cross-border compliance: Given the rapid developments in privacy and cybersecurity law in China and Europe, how can innovative companies that want to offer their goods and services worldwide comply? Topics will include the definition of reasonable cybersecurity standards under the laws of China, the EU and the US; corporate data governance strategies in the face of overlapping requirements; and enforcement.
The event is co-sponsored by Peking University, The EastWest Institute, The United States Information Technology Office (USITO), The Asia Society, JD.com, and New America.
Although many of the proposed changes in China’s patent law amendments are welcome, the draft amendments also present a difficult choice in two key areas: (a) patent administrative enforcement and (b) punitive civil damages.
(A)The draft, if enacted, would enhance patent administrative enforcement through national coordination of large cases (Art. 70), expanding authority of administrative enforcement for infringement (Art. 69), and enhanced fines of five times illegal earnings or up to 250,000 RMB (Art. 68). These efforts should be seen against the background of a huge ramp up in administrative enforcement in patents, that has now eclipsed administrative enforcement of trademarks (77,000 to 31,000 cases). Moreover, there appears to be a continuing interest of the Chinese government in special campaigns to deal with patent infringement, such as in a recently announced MOU with NDRC, and in a proposed campaign to deal with infringement issues faced by foreigners at the beginning of the current 301 investigation.
How much will these efforts help foriegn business people? The record on special campaigns is that most improvements are short-lived and perhaps focus too much on “rounding up the usual suspects” by local enforcement agencies (Casablanca). Enhancements in administrative patent enforcement are also an about-face from the prior dominant role that trademarks played in administrative IP enforcement and the relatively minor role that patent administrative enforcement traditionally played in China. Also of concern is that administrative trademark enforcement had uniquely been frequently utilized by foreign entities as complainants/victims. For example, there were 17,022 administrative trademark enforcement actions taken by SAIC on behalf of foreigners in 2011. This was nearly 14 times the number of all foreign-related civil litigation involving all types of IP rights that were disposed of by the China courts in that year (1,321). In addition, as the Apple design patent case demonstrated in Beijing, foreigners may easily end up on the defensive side in these administrative patent cases that are typically brought by local government officials. It is therefore uncertain how much, if at all, enhanced administrative patent enforcement will benefit foreigners.
(B) The proposed draft would also provide for punitive damages upon a judicial finding of willful patent infringement (Art. 72), with a maximum of 5x damages. To many this may appear to be a welcome improvement. Punishing willful IP infringement is currently a policy that both the US and Chinese leaders share. On the US side, the term IP “theft” appears 119 times in the Section 301 Report, while civil damages and compensation appear hardly at all. On April 9, 2018, President Trump tweeted that he is “Defiant” and that he “Will End …Massive I.P. Theft” by China. Premier Li Keqiang apparently shares some of this enthusiasm. He had noted in his annual report on the work of the government, that China needs to “improve IP protection, and implement a system for punitive damages against infringement “加强知识产权保护，实行侵权惩罚性赔偿制度” .
While punishment is an important tool, the more pervasive problem is that basic civil remedies are too weak. Actual damages are in fact rarely imposed by Chinese courts and, have been the outlier. Courts impose statutory damages in over 90% of all patent cases as well as in other IP areas. In the Beijing IP Court median damages awarded for patent infringement in 2016 were only 112,500 RMB, or less than 20,000 USD. Rather than unduly emphasizing punishment, a better structural place to start is in improving the civil system to achieve maximum compensatory deterrence.
Intellectual property is fundamentally a private right (TRIPS Agreement, preface), and adequate civil remedies should therefore be the priority. Using remedies that are not at the core of a healthy IP system based on private rights (administrative remedies/punitive damages) are not a substitute for predictable, compensatory private remedies. In fact, the administrative system affords no private compensation to victims. Punitive and administrative remedies are also often left to the discretion of the enforcement agencies, which can result in unpredictable enforcement. In 2017 for example, despite the pressure on China to address trade secret theft, criminal cases declined by 35%.
By focusing on deterrent civil remedies that are fairly administered, the US will find common cause with many Chinese officials. The issue was addressed by Justice Tao Kaiyuan of the Supreme People’s Court who similarly believes that the civil patent system is the primary enforcement mechanism for private patent rights. Justice Luo Dongchuan, who is now in charge of China’s new appellate IP circuit court, also underscored the importance of the IP courts in advancing rule of law in a visit to the US. In an article I wrote, with former PTO Director David Kappos and Chief Judge Rader (ret), we also underscored that China’s administrative system is fundamentally unlike the judicial mechanisms of the USITC, and that better recourse to improved patent enforcement can be had with the courts.
Moreover, these punitive and quasi-legal remedies could easily be turned against the foreign community. Consider, for example, that due process for foreigners has been a long-standing concern in Chinese IP matters, well before the current concerns over retaliation over the proposed extradition of Huawei’s CFO. Moreover, several cases have demonstrated that foreigners are often the test cases for “improved” enforcement mechanisms in IP, such as in Chint v. Schneider (high patent damages), Iwncomm v Sony (injunctive relief in a SEP case), AMEC v Veeco (preliminary injunctions in patent infringement matters), antitrust cases involving licensing and even the first publicized criminal copyright case, in which the principal defendants were two Americans (Guthrie and Cody).
I believe that China needs to focus its patent enforcement resources on the courts, and especially to give the new national appellate IP court a try in providing balanced and fair enforcement of IP rights, both foreign and domestic. Both the US and China might try to focus more on much delayed and long overdue improvements in the civil system, some of whic are contemplated by the patent law amendments. A rhetoric based too much around punishment may in the end prove to be self-defeating in the absence of necessary legal guarantees such as improvements in awarding compensatory damages, greater procedural due process, and improved transparency in the courts and administrative agencies.
Bottom photo of the author in front of a Nanshan District Shenzhen IP Office sign “Create the Most Strict IP Protection Pioneering District” (Jan. 2019). The opinions expressed in this blog are the author’s own. Please address any corrections or improvements to: chinaipr@yahoo.com
It is impossible to talk about structural issues in China’s IP regime and its impact upon foreigners without addressing the lack of a comprehensive approach to “bad faith” activities in all its forms in China. This issue has likely undermined more of the credibility of the Chinese government than any other in IP, and it has affected the greatest number of US companies. Chinese officials may not realize it, but every medium to large sized company I have met in the US has been affected by it.
Any lawyer who has counseled a US company on doing business in China knows the drill: before you enter the market there are likely to be trademark squatters, bad faith patent registrants, difficulties in protecting trade secrets used by trusted employees, amongst others. Even the President has been a victim with squatting on the Trump mark.
China has generated its own vocabulary around bad faith activity. “IP theft”, a term that has been promoted by the Trump administration, reflects an overarching concern about Chinese tolerance of state-sponsored or willful infringement. Another similar concept is “forced technology transfer.” The history of these terms goes back decades. “Patent hijacking” refers to behavior before 2008 of misappropriating designs and other inventions based on China not requiring absolutely novelty as a condition for patent grants. A “Naked Bolar” regime refers to a regime which grants an exemption from certain forms of patent infringement without providing a counterpart benefit to an innovator for the erosion of its patent rights (this may be corrected in the proposed patent law revisions). “Ambush marketing” and “trademark squatting” may not be new to China, but China remains a focus of these concerns. China also has some vocabulary of its own which often do not make it into English, such as “旁名牌” (saddling along famous brands) and patent “cockroaches” (instead of patent trolls).
China has also created global precedent over willful (bad faith) behavior in DS/362, the WTO case involving China’s criminal IP enforcement regime. As the WTO panel indicated in that case:
“[T]he word “wilful” … precedes the words “trademark counterfeiting or copyright piracy”. This word functions as a qualifier indicating that trademark counterfeiting or copyright piracy is not subject to the obligation in the first sentence of Article 61 unless it is “wilful”. This word, focussing on the infringer’s intent, reflects the criminal nature of the enforcement procedures at issue.”
Good faith may be an underperforming concept in China, but it is also a low-hanging fruit for trade negotiators. It is in Article 4 of the General Principles of the Civil Code as well as Article 6 of the Contract Law. It was incorporated into Article 7 of the revised Chinese Trademark law. The Supreme People’s Court recently found that warehousing trademarks without intent to use is a basis for invalidating marks, albeit not under Article 7. It is part of the Guangdong High Court Rules on SEP disputes in telecommunications (good faith in negotiations). It is also part of the guidance from the Beijing High Court for handling of patent validity matters.
The problem isn’t that good faith doesn’t exist in China’s IP regime, but that it is selectively applied. In addition to the examples already cited, it is under consideration in the proposed Patent Law revisions in terms but only for good faith litigation, and it is an underlying concept in punitive damage provisions in the Trademark Law and the proposed Patent Law Revision. The concept has not yet appeared in substantive copyright or trade secret law. Companies like Taobao are using a determination of “good faith” in facilitating take-downs
Selective application of “good faith” concepts is evident from its inconsistent application across various IP laws. Why must trademarks be prosecuted in good faith, but not patents? Why is bad faith patent litigation a concern in the proposed patent law revisions, but why not trademark, trade secret, copyright or other IP-related litigation? The concept needs to be utilized to address such difficult issues as the epidemic of low quality patents and bad faith trademarks. It should not be used to resolve other, easier challenges such as extracting more rents from foreigners in patent litigation as in the Guangdong rules on SEP disputes. In fact China back-slid in applying good faith concepts while this trade war was brewing. The removal of “employee” as a covered party （经营者） in China’s revised trade secret law (Anti Unfair Competition Law) facilitates bad-faith employee behavior.
Adjudicating what constitutes good faith need not involve inquiries into subjective attitudes. Courts and agencies can rely on objective indicia from China’s data-rich environment: companies that file multiple trademarks that they don’t use them; trademark registrations than use others’ prior rights; on-line merchants that routinely infringe IP rights; serial violators of injunctions; patents that are routinely invalidated and/or filed based on others’ designs; comprehensive data that shows foreigners that are being treated fairly drawn from China’s new judicial databases; willful violators of non-compete agreements, and others.
Bringing good faith into full play would be a triple win: good for China’s IP system, good for US rights holders, and good to help re-establish trust between China and other countries. Trade negotiators may wish to consider it being a part of any “structural” commitment from China in the current trade dispute It can be implemented by China’s National People’s Congress as a legislative interpretation or as an amendment to China’s civil law, and in specific laws now under consideration (patent law, copyright law). The SPC at an appropriate time might prepare a judicial interpretation articulating its application in specific circumstances. It also has the added advantage of being easily monitored, as data analytics can be harnessed to determined if real progress is being made in a wide range of areas.
It is time to bring good faith more directly into China’s IP system.
As reported by zhichanli, CNIPA (the new agency formed from SIPO, SAIC and AQSIQ’s – IP authorities within the State Administration for Market Regulation) held a news conference on January 10 to report on statistical developments for 2018. Here are some of the highlights:
Explosive Patent Growth Continues: 1,542,5000 invention patent applications were received by CNIPA, an increase from 2017 when it was 1,381,594. 432,000 patents were granted. Of these 346,000 were domestic patent applications (2017: 326,970). This leaves 86,000 foreign applications for 2018 (2017: 93,174). There was therefore an increase of 5.8% to 19,030 in Chinese domestic patent grants in 2018, while foreign grants appear to have dropped by 7.7% to 7,174. Any drop in a growing economy and IP system can be indicative of a problem of some type.
In total 93.3% of the domestic invention patents were service inventions, which is one indicator of possibly increasing quality. Huawei remained the lead domestic filer with 3,369 invention patent applications.
CNIPA had a busy year examining 808,000 invention patents, 1,874,000 utility model patents (an increase from 1,687,593), and 667,000 design patents (an increase from 420,144). The PRB heard 38,000 cases, resolved 28,000 and invalidated 5,000 patents.
Comparative data on 2017 is drawn from this report.
Trademarks Too, on Overdrive: CNIPA received 7,337,1000 trademark applications (2017: 5,748,00) and registered 5,000,7000. Of these, 4,797,000 were domestic applicants. In aggregate, there were 18,049,000 trademarks registered in China (2017: 14,920,000). The good news is that the rapid growth in TM applications is slowing. In 2017, there had been a year-on-year increase of 55.7% in trademark applications. In 2018, the increase was “only” 31.8%.
Patent Administrative Enforcement Continues to Be the Focus: CNIPA reported 77,000 administrative patent cases, with an increase of 15.9% over the previous year. 35,000 cases involved patents disputes, of which 34,000 involved infringement (an increase of 22.8%). 43,000 cases involved counterfeit patents, with an increase of 10.9%. There were also 31,000 cases involving illegal trademark activities. This was an increase from approximately 30,000 the year before, which was itself a decrease of 5.1% from the prior year. The apparent administrative enforcement realignment to patents thus continues, despite recent moves to improve the civil patent system, including the establishment of a specialized IP court at the SPC level, and the relatively high historic utilization of the administrative trademark system by foreigners.
Another odd development: 2018 marked the launch of the first administrative case involving infringement of a registered semiconductor layout design.
TM’s Remain Number 1 in Geographical Indications: There were 67 sui generis GI registrations approved, presumably under the former AQSIQ system, and 961 GI trademarks registered. The trademark-based GI system thus appears to be occupying a dominant role.
Cross-border Trade In IP – is it Growing: CNIPA also reported that “usage fees” for IP rights in cross border trade increased to 35 billion USD. Comparative data to prior years and breakout data with individual countries would be especially useful, in order to do year-on-year comparisons and to also compare with US data on licensing revenue. As reported in an earlier blog, according to official Chinese statistics for 2013, technology import contracts into China were reported at 41 billion dollars, with patent licensing contracts constituting 15.4% of that total. I don’t have comprehensive data to make even preliminary comparisons at this time – and such data would be highly useful.
Summary: Altogether, the report shows a rapidly growing huge IP system, with active government involvement, encouragement and planning. The report also suggests that there may be a diminishing foreign role, relative and/or absolute, in certain areas. Finally, this report is the first hint of how the combined CNIPA may report on its joint activities in patents, trademarks, semiconductor layout designs, GI’s and administrative enforcement. Additional data is usually released around IP Week of each year (April 26).
Thanks to the Anjie Law Firm, attached please find an unofficial line-by-line translation of the draft patent law amendments, which were briefly discussed here. Comments are due February 3, China time.
The National People’s Congress has released a public comment draft of the long-awaited revised patent law on its website . Here is the draft itself, and here are the official explanations on the draft , along with other laws released by the NPC. The comments are due by February 3, 2019.
The NPC Observer’s summary of the legislative history to date is here. Based on a quick read, the biggest disappointment remains the absence of a patent linkage regime, as was noted of the State Council draft. The inclusion of patent term restoration (five years) for pharmaceuticals is however, a plus. There are also provisions on 5x punitive damages, extension of term for design patents (15 years), on-line infringement, expanding administrative enforcement, dealing with “counterfeit” patents, reversals of burden of proof for information on damages caused by the infringer, and an extension of the statute of limitations to three years, amongst other positive aspects. There is also a good faith requirement to deter abusive patent litigation, but not one for prosecution of patents (e.g., a duty of candor).
In addition to filing comments electronically, commentors can use snail mail, by writing to NPCSC Legislative Affairs Commission 全国人大常委会法制工作委员会. Instructions may be found at the NPC Observer website.
The draft may have been expedited in order to show a package of reforms that adddress US concerns in light of imminent trade discussions between the US and China, and as such appears to be part of larger package – perhaps even including the establishment of the new SPC IP Court.
I welcome readers to submit any translations of the proposed law and any comments they file to this blog for further publication.
