Loyola/Berkeley/Renmin Program Highlights Recent US-China IP Developments

On Friday November 7 I attended and spoke at the US-China IP Summit at Loyola (https://chinaipr.com/2014/09/07/loyola-los-angeles-hosts-us-china-ip-summit-november-7/). Here are some highlights:

Prof. David Nimmer (UCLA) talked about whether there is a need to reintroduce a concept of formalities in copyright again, in order to deal with problems in determining rights and better utilize information technologies.

Dean Liu Chuntian of Renmin University, argued that China’s true economic constitution should be a civil code. He took issue with those that argue the Antimonopoly Law is China’s “new economic constitution.” In addition he expressed concern that IP shouldn’t depart from the civil law. Prof. Liu also reiterated his long-standing opposition to administrative enforcement in civil law matters and also argued that copyright law reform issues should focus on matters of economic importance. Copyright protection of sports broadcasting in China was singled out as such an economically important issue.

Regarding specialized IP courts, Dean Liu also noted that several “10’s of members” of the NPC Standing Committee dissented from the NPC decision. Prof. Luo Li noted that the Beijing Specialized IP Court was established last week, just before APEC. Prof. Luo noted that the jurisdictional divisions of the courts were quite complicated, due to differences in adjudication amongs civil, criminal and administrative jurisdiction. Computer software cases (piracy?) would also be heard by the specialized IP Courts.

I raised concerns in this discussion on the courts about how foreigners would be treated by these specialized courts, in light of evidence that suggests foreigners may fare less well in appellate specialized IP tribunals (see: https://chinaipr.com/2014/08/22/specialized-ip-courts-about-to-launch-in-three-cities-and-are-they-good-for-foreigners/)

Prof. Merges of UC-Berkeley described AIA post grant proceedings as a kind of “quiet harmonization” with foreign practices, including with SIPO. As with China, there is no mandatory stay of civil proceedings during these administrative proceedings.

Prof. Zhang Ping of Peking University discussed the Huawei/InterDigital Corporation case as a pioneering effort on the part of Chinese courts to deal with global standardization crises, including by determining appropriate royalty rates for standards essential patents.

Prof. Huang Wushuang of East China University of Politics and Law discussed current efforts at trade secret legislative work. He noted that he had submitted proposed revisions on the Antiunfair Competition Law regarding trade secrets, by expanding the current one article to 10. His discussions focused on several issues, including what constitutes reasonable precautions to protect trade secrets and the role of non-compete agreements and how to strike a balance between rights of employers and employees. He noted that he did not think it reasonable for injunctions in trade secret matters to be permanent, since every trade secret has its own life span. Regarding damages, he thought that a traditional hierarchy should apply by basing calculations on the plaintiff’s loss, the defendant’s profits, reasonable royalty and statutory damages. He also noted that there were few cases in China which showed a causal relationship between damages and infringing cases.

The last panel discussed trans-border cases and was one where I participated. There was an especially lively discussion on issues involving recognition of judgments and the timely implementation of Hague Convention requests for evidence. Various speakers noted efforts to settle global IP disputes such as by suspending cases in favor or one or more venues, using Hong Kong arbitration for cases involving Chinese entities, and the need for means to resolve increasingly more complicated trans-border disputes.

There were many more great speakers — my notes are hardly complete. Hopefully a transcript or summary of the presentations will be compiled shortly. Kudos to the organizers, including Prof. Song of Loyola, for another great program.

SPC Publishes Revised Judicial Interpretation on Patent Infringement Litigation for Public Comments

On July 16, the Supreme Peoples Court published a public comment draft of proposed revisions to its “Decision of the SPC Regarding Questions of Application of Law in Adjudication of Patent Cases”, 最高人民法院关于审理专利纠纷案件适用法律问题的若干规定. Comments are due by August 15, 2014. Comments may be emailed to: zhuanliyijian@163.com。 The last revision to this document was in 2013, when a provision was inserted to give jurisdiction to designated basic courts to handle patent cases.

Of particular note in this short set of revisions are provisions regarding providing an appraisal report for utility model patents to the court if such a report had been requested by the plaintiff of SIPO, as well as provisions which appear to provide more flexibility in calculation of damages by the court, consistent with the 2008 patent law.

Many of the changes appear self-explanatory – such as those which track changes in relevant statutory provisions.  However, in light of the efforts to amend the patent law, experiments in specialized IP courts, calls for more deterrent damages and more extensive commercialization of IP rights, some additional explanation would be helpful regarding the reasons for any changes in policy that may be implicit in these revisions and any further changes that may be contemplated.

Earlier USG comments on the patent law revisions are found here.

Once I receive a full translation or comparison of prior drafts from any reader, I will post it on line. Readers are encouraged to send in their translations, suggestions and comments. For now, the full Chinese text of the proposed revisions with my own initial bilingual observations are attached.

 

State Council Legislative Affairs Office Releases NCA Draft of Copyright Law for Public Comment

On June 6, the State Council Legislative Affairs Office (SCLAO) released the entire draft and explanation  of the copyright law revision that had previously been submitted by the  National Copyright Administration (NCA) to the SCLAO for public comment.

This presumably is the draft that had been submitted to the SCLAO in late 2012, although no public comment period was offered for this revision at that time.

After State Council review and draft it has cleared will of course need to be submitted to the Standing Committee of the National Peoples Congress for its consideration.

The immediately prior draft had received over 1800 comments when NCA made it available for public comment.   See: https://chinaipr.com/2012/04/03/nca-releases-draft-of-proposed-amendments-to-the-copyright-law-for-comment/; https://chinaipr.com/2012/06/10/who-is-commenting-on-the-copyright-law-revisions/).

Overall, this is likely a welcome effort to move along what some had perceived as a stalled drafting effort.

Comments on this draft are due at the State Council by July 5, 2014.  The weblink for the draft and explanation of the draft is: http://www.chinalaw.gov.cn/article/cazjgg/201406/20140600396188.shtml.

 

 

Ministry of Commerce IP Program in DC December 5

Chen Fuli, IP Attaché at the Chinese Embassy in Washington, DC the morning of December 5.   The program is free of charge, but seating may be limited.   You should RSVP at: lishuai@mofcom.gov.cn.

The topics are all ones that I have actively followed in this blog.  Here is the tentative agenda:

International High Level IPR Cooperation Forum

Dec 5,  Georgetown Holiday Inn

2101 Wisconsin Ave, NW, 20007, Washington DC

 9:00-9:20  Opening remarks, by Both China and U.S. Representatives

 9:20-9:40   New developments in IP enforcement in China, by Director Jing Zhang from the Office of Fighting Against IPR Infringing and Making or Selling Counterfeit and Shoddy Products under the State Council

9:40-10:00  New amended Chinese Trademark Law, by Deputy Director General Qing Xia from CTMO

 10:00-10:15 Q & A

 10:15-10:30 Coffee Break

 10:30-10:50  Amending of Chinese Copyright Law by Deputy Director Ping Hu from NCAC

10:50-11:10  Amending of Chinese Patent Law and Regulation on Service Invention by director Yanhong Wang from SIPO

11:10-11:30  New practice of IP trials after the amendment of Chinese Civil Procedure Law by Judge Yuanming Qin from SPC

11:30-11:50 Q & A

11:50-12:00 Closing Remarks

—————-

12:00-13:30                    Lunch (hosted by China for all the participants)

In addition to the speakers noted above, there will also be Chinese official participants from public security, Customs, procuratorate, AQSIQ and other agencies, which should help make for lively discussion and interaction.  I hope to see you there!

China IP Time and The New York Minute

China’s rapidly growing economy and equally rapidly evolving IP regime shows how different concepts of “time” can be from the United States. Continue reading

New State Council Opinion on Improving Administrative/Criminal IPR Enforcement Coordination

On September 12 the State Council Standing Committee, chaired by Wen Jiabao, passed a new “Opinion on Concerning How to Improve The Work of Coordinating Administrative and Criminal Enforcement in Striking At IP Infringements and the Manufacture and Sale of Fake and Shoddy Goods”  关于做好打击侵犯知识产权和制售假冒伪劣商品工作中行政执法与刑事司法衔接的意见”.  The full text of this Opinion will likely need to await its gazetting in the State Council Gazette.  However, there have been plenty of press reports, and it seems possible at this point to construct a rough summary of what we will find in it: Continue reading

Au Revoir (Zaijian) – Nam Ngô Thiên and Welcome (Huanying) – Jared Ragland

I sat down with Nam Ngô Thiên (Chinese name: 吴天南, Wu Tiennan) (picture above) on Sept 15 in Beijing, fortunate to catch him on a recent visit back to Beijing since his August 1 relocation to Singapore. Nam represented both the French Patent Office and the European Patent Office in Beijing since 1999. He was with the European Patent Office working on IPR-1, the first-round European IPR technical assistance program in Beijing from 1999-2003, when I first met him. At that time he was ably assisted by Ms. Teri Dunphy and by Yang Guohua, from the Ministry of Commerce, amongst others.   He  came back to China in 2004 with the French Industrial Property Office (INPI), staying until 2012. Nam is a dear colleague and friend and will be difficult to replace.
There is also one recent diplomatic arrival in China: Jared Ragland, from USPTO, who is posted to a new office in Shanghai. Jared came over from USTR to USPTO.  He also has a solid scientific background that will likely be valuable to the R&D community in Shanghai. The contact information for Jared can be found here.
I wish Nam and Jared the best in their new postings!