Further Trade-Responsive IP Legislative Developments May Be In the Works…

“When a stranger lives with you in your land, do not mistreat him. The stranger living with you must be treated as one of your native-born. Love him as yourself, for you were strangers in Egypt.” (Leviticus, Vayikra וַיִּקְרָא) .

He Jing of the Anjie law firm brought to my attention today an article in the April 21 Legal Daily which identifies proposed amendments to the Trademark Law, Anti-Unfair Competition Law and Administrative Licensing law that appear to be responsive to United States concerns over unfair treatment of Americans, “forced technology transfer” and IP protection in the current trade war.   Here is a copy of the Legal Daily article.

While we wait for the actual draft, I will place these proposed changes in context.

In my posting on good faith in IP-related trade issues,  I identified several issues which this legislation attempts to address, including warehousing of bad faith trademark registrations without intent to use; and  the removal of “employee” as a covered party (经营者) in China’s revised trade secret law (Anti Unfair Competition Law) which facilitates bad-faith employee behavior.   Actually, I am relieved that China may now be understanding how tolerance of bad faith behavior has had a wide spread impact on foreign perceptions of China’s willingness to protect IP.  These are important new steps.

Other provisions this legislation attempts to address also appear to address long-standing US concerns, such as requiring the destruction of counterfeit goods or materials and tools used for their manufacture.  The destruction of semi-finished counterfeit goods and materials and tools was a subject of DS-362, the China IP enforcement case, particularly regarding Customs’ disposal of goods outside the channels of commerce and the role of semi-finished goods in calculating criminal thresholds.

Other concerns raised in the legislation have been raised bilaterally.  Bad faith trademark registrations had long been discussed bilaterallyProtecting confidential information submitted by foreigners in administrative licensing has also been a long-standing concern of the United States and has been the subject of several JCCT discussions.

Although these changes are positive, I am reluctant to enthusiastically endorse them in the absence of corresponding measures ensuring their implementation.  As previously noted, newly amended provisions in the new Foreign Investment Law prohibiting forced technology transfer are likely to have little impact absent effective complaint and legal challenge procedures, such as the creation of a foreign investment ombudsman and/or appeals to the newly established IP court.  The inclusion of a non-discrimination position in administrative licensing procedures is also welcome news, although it may be similarly difficult to monitor and enforce.

China’s existing trademark law shows the limitations of forcing changes in behavior through legislation.  The trademark law and civil law have had provisions requiring “good faith” behavior, yet there has been little demonstrable impact on the flood of bad faith applications, which had increased to 7.3 million applications in 2018.  Chinese-origin bad faith and fraudulent applications are also causing USPTO to revise its own rules regarding pro se trademark applications from overseas.

As other examples, providing for treble or quintuple damages in patent or trademark proceedings is only useful in those still rare proceedings where statutory damages are not being used to calculate damages.  Similarly, the burden of proof reversals in IP cases, such as trade secrets can be useful but only if they are appropriately and effectively utilized and if motion practice in the courts is observable through online publication. Increasing penalties in administrative trade secret cases sound good on paper, but foreigners little use administrative trade secret enforcement proceedings.  Such proceedings have traditionally been an IP enforcement backwater.  According to the 2011 SAIC Yearbook (p. 855), there were only 57 reported administrative trade secret cases in that year, with an average 77,543 RMB average value and only 1,430,000 RMB (less than five thousand dollars) in fines.  The greatest focus of these cases were individuals, as 26 cases involved natural persons.  The data suggests to me that these cases largely involve employer/employee disputes over trade secret misappropriation, which should be resolvable in the courts.  Perhaps even more striking was the 35% decline in criminal trade secret prosecutions in 2017 to only 26 cases, which was also accompanied by a significant decline in criminal IP cases generally since 2012.   To address tolerance of trade secret theft (and IP infringement) by Chinese society, the most effective approach will be a commitment to criminal trade secret enforcement and an even greater commitment to civil remedies.  The proposed legislation only addresses part of this need.

Substantive changes can only be as effective as they can be monitored.  With respect to changes in substantive trademark and trade secret law, it would be especially useful if the full court dockets and more final cases were published.  If the data cannot be observed, it cannot be monitored for compliance.

While these legislative developments are underway, there is also word that the State Council continues to solicit opinions from the foreign business community on how IP issues are handled on their behalf.  This may also lead to welcome news.

There have also been two separate, non-IPR developments, which may have some bearing on the negotiations over the resolution of the trade war.  According to Bloomberg, the European Union is said to have won a dispute brought by China at the WTO seeking recognition of China’s market economy status (“MES”).    A similar case is pending involving the United States.  The lessons from these cases for IP should be that both the US and the EU should encourage more comprehensive and systemic treatment by China of IP as a private right if China is ever to achieve full MES.

In another development, a WTO panel ruled in favor of Russia in a dispute brought by Ukraine that the “national security” exception afforded by the WTO was not completely self-judging. The case could be read as a warning that the United States does not have unbridled discretion in deciding what constitutes a threat to its national security.  Taken together both cases affirm the WTO’s desire to remain relevant to changing circumstances in China and a changed perspective on international trade of the United States.

I wish everyone a happy Passover, Easter or spring holiday.

Buddha

 

RIP VAN WINKLE RETURNS FOR THE TRADE WAR

A Modern Illustrated Political Fable By an Anonymous Folklorist

ripvanwinkle

Rip Van Winkle VIII, Esq, the great US government intellectual property and trade lawyer and descendant of the Hudson Valley Van Winkles,  fell asleep on December 12, 2001, the day after China joined the WTO.  He woke up earlier this year to find a changed country, engaged in a trade war that undercut all his prior hard work.   He was disappointed at how the US had handled the legacy of China engagement that marked the period before WTO accession.  He had a Yogi Berra-like moment of “Deja-vu all over again “, and felt he had to reach out to the American people to tell his story.  These are my interviews with him.

I asked Rip about the 301 report on Chinese forced technology transfer. “You mean, the report that launched the trade war”, he remarked with a wry smile.  He said that he was surprised by the tactics that the President pursued.   The US “pressured China without imposing tariff sanctions in the 1990s and with considerable success.  For example, China agreed to have a trade secret law back in 1995 or so.  No administration in the 1990s had to pull the tariff trigger on China, although we had a clearer legal basis in international law to do so since China was not yet a WTO member.  We also had the statutory authority to revoke MFN on human rights issues but didn’t do that either.  Now our imposing these sanctions risk dismantling the global trading system.  I understand the frustration about China’s WTO compliance, but I don’t understand why we haven’t more aggressively pursued WTO remedies.”

wto

I asked Rip, “Was it because the issue back in your day was one of China’s compliance with the laws, rather than enforcing than the laws as written? After all, it is hard to bring a case on how adequately a country is enforcing its laws.  There are lots of flexibilities built into the TRIPS Agreement.”

Rip pensively pulled on his long Van Winkle beard and noted ”Back then the efforts were not simply legislative.  China’s enforcement of IP was weak too, and some progress was made: for example, there was a special Customs regime on exports, which is TRIPS+, which survives to this day.  Specialized IP tribunals were also something that he had worked on ‘back in the day.’  There were also a number of special campaigns, task forces, and other efforts.   In fact, people had even been complaining that some of the enforcement had gotten too tough when China launched a ‘strike-hard’ campaign against some of this activity.”

“But, “ I added “today we have high tech issues in addition to counterfeiting and piracy issues.  We have AI, and IOT, and 5G, and genetic engineering, online businesses, plus all the counterfeiting and fake goods.  These are new issues!”

“All true,” said Rip, “and you have other new things that are also fake,” Rip smiled, “fake news and–,” he added sarcastically, “this President.”  Rip appeared puzzled that a reality TV show actor could also become President.

“But I am not surprised by all the fake goods originating from China that are sold throughout the world,”  he continued.  “After all, that was the problem with regional trade in the 1990s.  It was to be anticipated – that was the reason we asked China to control infringing exports in the ’90s. “

“As for technology, we had those challenges as well.  There was the ‘great subsidy’ compilation CD exported from China that infringed on multiple business software copyright owners,”  Rip mused. “That was a high-tech problem.  We found solutions working in Taiwan and China.  And what about the submarine they discovered in Hong Kong to haul counterfeit DVD’s? That was also a high-tech problem.”

Rip pulled out a beaten photo of a diagram of the submarine that was captured by Customs authorities in Macau:

macaucustoms

Photo by Mark Cohen from an original diagram at Macau Customs.

“I don’t get it though” Rip snorted. “Why did the US file a WTO case in 2007 against China’s export of counterfeit goods, DS362?  We all knew that this was not a WTO issue, but one that depended on external pressure on China.  China was only obligated to have Customs remedies on imports. Yet we haven’t yet filed a case against how ineffective China’s IP remedies are, which is a specific WTO requirement?  I expected more, from China’s carefully crafted WTO accession package and from the US and the WTO itself.  We worked so hard on that package.”

“As best we could, we foresaw many of these problems in the 1990s and created the roadmap for legal strategies.  Sure, it wasn’t perfect.  It was a crystal ball exercise.  But look at China’s WTO commitments.  China’s obligations had no grace period.  There was a special safeguard measure.  China was subject to a range of extra commitments as a non-market economy under our dumping law.  China was also subject to extensive new transparency obligations.  Moreover, China’s trade regime was subject to a 15-year annual review.  Its IP regime should now be the subject of WTO cases.”

Rip shook his head: “Only a few weeks after WTO accession in 2001, China implemented a discriminatory technology licensing regime called the Technology Import/Export Regulations, which discriminated against foreigners.   Why did we wait until March 23, 2018 for the US to file a  case against this regulation?  Who else was asleep when I went to sleep? Did someone put sleeping pills in the water?”

It is true, as the press reported, that when Donald Trump met Rip Van Winkle, they both agreed that nothing had changed on China IP.  However, the media once again generated some fake news around that meeting.   Rip disagreed that Trump’s strategy made sense, or that the US should indeed feel like it had exhausted its patience.  After the meeting, Trump tweeted that “Rip Van Winkle is a BAD man”.

djt

That was indeed their only meeting.  Trump referred Rip’s personnel dossier to OPM for further investigation to see if he had been collecting salary during the past 18 years when he should have been on leave without pay or whether he was simply AWOL.

After the incident with Trump, Rip went to Beijing.  He noticed that things had changed.  The street vendors of DVD’s, counterfeit Beanie Babies, and all another manner of fake goods were largely gone.  When he talked to average Beijingers, they seemed to know a great deal about patents, trademarks, and copyrights – perhaps more than the average American.  He was shocked to see that the patent and trademark offices had grown to the largest in the world.  He was pleased to see that China had a system of multiple intellectual property courts, with specialized judges.  He met many American-trained lawyers working in Chinese law firms, in companies, and in government.  This looked very much like the kind of system that the US might have imagined for China back when he was negotiating.

However, there were other ominous changes for the US.  The Chinese patent office was now several times the size of the US patent office, as was the Chinese trademark office.  Moreover, domestic filers dominated in both those offices, as they did in bringing suits to the courts.  In areas such as information technologies, where the US was once the dominant manufacturer and developer, the leading role had been ceded to China.  China now produced 25 to 30% of the world high tech products, supplanting both the US and the EU.   During a southern excursion on this trip, he saw that Shenzhen had grown to a high-tech mecca, well beyond even his dreams.

shenzhen

Rip was amazed to see that the Chinese IP system by some measures at out-paced the US.  The Chinese courts now handled about 280,000 IP cases in 2018, up 40% from 2017, while US domestic patent cases were declining.  Chinese courts handled over 100 times more copyright cases than US courts.  It was also an IP system that didn’t merely serve big state-owned companies.  The percentage of individual filers of patents as well as patent litigants in the Chinese courts were higher than in the US.  Moreover, in areas like software, business method patents and genetic patents, where the US had a lead “back in the day,” the Supreme Court of the US had made it harder to obtain patent rights.  China, however, was making it easier.  And this eBay case decided by the US Supreme Court in 2006 – why did the US decide to make it harder to get an injunction for an IP dispute, thereby weakening the system even further?”

Rip wondered, was there some kind of reverse alchemy at work – were we turning our IP system of “gold” into one of “lead”, and China was now getting the magic touch?alchemy

“It isn’t quite that simple” tweeted Mr. Trump when he heard of Rip’s reporting on the matter.  “We are pursuing structural barriers!!!”

“Well, we had the Structural Impediments Initiative with Japan back when I was in the government– sounds pretty similar to me.” Rip reported, closing an op-ed he wrote by asking the President: “Have you been asleep too?”

Rip thought that it was not surprising that China would benefit from being a low-cost manufacturer and joining the WTO.  The expectation was that China would also continue to make necessary economic reforms, and the US would monitor these reforms.  After the Tiananmen incident, the Western world was also greatly concerned about China’s commitment to liberal political and economic values.  The current regime in China may be pushing back on the legacy of Deng Xiaoping, but that should have made a WTO case that much easier today, by showing that China had reneged on some of its fundamental WTO commitments to bring about economic reform and institute certain minimum rule of law and transparency obligations.  These kinds of cases would also elicit support from many in China and from our trading partners.”

“Why didn’t you learn your lessons?  Is that the reason you brought back Lighthizer to USTR?  I hadn’t seen Bob for decades.  Did he fall asleep for even longer than me, maybe thirty years?” Rip joked, half-heartedly.

”The Japanese tried to persuade us that the reason there was a trade deficit with Japan was because of our lack of knowledge of their system.  Japanese snow, they said, was different from US snow so we couldn’t sell our skis there.  We all know however that this was a sorry excuse for market barriers set up to protect their industries.“

Mtfuji

Japanese snow by Mount Fuji.  Does it look different?

“With China, we knew there were a host of other, more problematic non-market barriers including possible security issues with Taiwan.   When we worked on the TRIPS Agreement,” Rip recalled, “we made it pretty clear that this was an agreement for market economies.  There was a transition period in the TRIPS Agreement for-state controlled economies, and we had extensive provisions around civil remedies, which reflects the private law orientation of TRIPS.  When we went ahead in our own domestic laws to define what constitutes a non-market economy we didn’t even tackle the role of intellectual property, perhaps because we hadn’t thought through the problem of how a non-market economy could exploit IP in its own interests.  The problem we face today is due to an unanticipated turn by China, that it would ease up on economic reforms and not reject IP but instead incorporate IP its state planning mechanisms.”

“Look at the preamble to the TRIPS Agreement,” Rip fumed. “It says intellectual property is a ‘private right.’ As I recall, the Hong Kong delegation put that into the TRIPS Agreement – they anticipated what was going to happen just a few years later in the 90s when they would be reunited with the mainland.”

“We know that IP is a private right and we knew that Chinese state is interfering in markets. We knew China had technology goals, and that the state was not letting individuals maximize their interests in private property rights.  We knew that addressing these issues was core to the success of China’s WTO accession.  We put in a host of other provisions in the TRIPS Agreement – national treatment, most favored nation treatment, due process in IP cases and IP antitrust cases, right to an independent counsel and an independent lawyer, injunctions and preliminary injunctions, the right to a decision based on evidence  — yet, the only WTO case the United States brought against China on IP until 2018 occurred back in 2007 and it involved asking for greater control by China of those markets – for improvements in China’s criminal and Customs IP remedies, as well as its censorship regime.”

“It doesn’t stop there either.  Our antitrust authorities entered into training and other programs that have further enhanced the role of the state by working with China’s former State Planning Commission and others, so that they can further diminish the value of these rights – rights that our companies have a hard time trying to enforce – and that further strengthen the role of the state.  You can’t have IP abuse unless you have IP use….”

“So having lost this 2007 case,” Rip asked “the US government decided it wasn’t worth filing another WTO case for 10 years or so?  What were we asking for – the Chinese government to step in and do more to control property rights?” Rip snorted.   “I don’t like Mr. Trump, but then again I can’t blame him for lousy strategies of 10 years ago.”

“Maybe the US went astray because you bought into the rhetoric of the 1990s which saw intellectual property as a foreign concept to China, one that was inconsistent with Chinese Confucian culture and that was not susceptible to change due to US pressure alone.  These misunderstandings were promoted by academics and Chinese officials, often over the objections of Chinese scholars.  By almost any measure, their assumptions were flawed, and they could not have predicted China’s wholesale and disruptive embrace of intellectual property into its innovation ecosystem. “

“Of all those assumptions, the one that China would not protect IP until it has IP of its own to protect, is the ‘old wives tale’ that…”

I corrected him: “’Old spouse’s tale’–we don’t use this sexist terminology now, and even that is ageist.”

“This old assumption” Rip said looking hopelessly at the sky, “that China needs more IP of its own in order to protect US IP should have been discredited only a few years after I went to sleep – because it was around 2005 that the Chinese trademark office grew to be larger than the US trademark office, and that Chinese TM owners were the dominant applicants.  And that trend has spread to nearly every other sector or indicator – patents, plant varieties, copyright registrations, litigation…. “

“As for this indigenous innovation problem, or Made in China 2025, or Strategic and Emerging Industries, or Medium and Long Range Scientific Plan, or 1000 Talent Program, or High and New Technology Industries, or indigenous innovation, or techno-nationalism, or self-strengthening, or China ‘breaking the IP paradigm’,   or China’s Galapagos-style  for local technical standards – whatever you want to call it  — it is also shocking that you didn’t read the signals from the 1970s and 1980s. “

“It was the science and technology people that were negotiating IP issues with us back then – even through the 90’s – including most notably Vice Premier Wu Yi, a petroleum engineer.  Ma Xiuhong, who I understand later became Vice Minister, was an engineer with the People’s Liberation Army.  My IP negotiating counterpart was Duan Ruichun, from the State Science and Technology Commission.  We sent our lawyers, and they sent their engineers and Ph.D.’s!  Did any of you fellows every study Chinese history and look at how China safeguarded its own technology, like sericulture, from the Romans? Have you read Joseph Needham’s Science and Civilization in China….They knew early on the value of technology!”

“Forced Technology Transfer?!”, Rip added, “How about this language from the Office of Technology Assessment Report (OTA) report on Technology Transfer to China in 1988 that I worked on: ‘Although most U.S. firms approach the China market with the intent to sell products, many find they must include technology transfer if they wish to gain access to the China market.’”

“We were also aware when we wrote that report that China was modernizing with military goals in mind,” Rip noted: “‘Our report went on: ‘If China is to become a major power, it will be through developing its own capabilities throughout the economy. Thus, in the long term, technology transfer will have a great military effect if it spurs innovation, modernized thinking, research and development, and economic growth generally.’”

“This isn’t a state secret!” Rip showed me a picture he was given from the Ministry of Science and Technology website that says “indigenous innovation” next to a Chinese missile.

zizhuchuangxin

“To save the situation of the United States, you might want to look at ourselves.  OTA was closed after that report, as was the Technology Administration of Commerce, and the Office of Science and Technology Policy in the White House was also defunded from engaging in China.”

Rip pulled out his perfectly preserved copy of the OTA report from 1988:

ota

“By the way,” Rip asked “Are there any foreign commercial service officers posted overseas that have technology promotion as an export goal? Has the US census changed its antiquated reporting system where it reports technology transfer as exports of ‘industrial processes’– whatever that means…”   Rip was getting agitated. “I would have thought that the US would at least take steps inside our own government to improve  our knowledge and engagement on these issues.”

Rip scratched his beard, told me that he felt like Diogenes looking for a good man by the light of his lantern in ancient Greece.  Rather than looking for an honest man,  he had no idea where to find anybody who understood technology trade in a US government agency in DC.

diogenes.jpgPainting of Diogenes looking for an honest man

“There are WTO cases that could have been filed.  In addition to investigating whether China has an ‘adequate or effective’ IP regime under the TRIPS Agreement, and all the other general requirements of the TRIPS Agreement I talked about,  there might also be cases about the role of the state as infringer and misappropriator of trade secrets and the state’s role as a cyber-spy,  China’s watering down of IP rights through antitrust and denying due process to US lawyers, and there’s always the possibility of a ‘non-violation’ or ‘situation’ complaint.  I understand there is a moratorium in the TRIPS Council on these generalized ‘non-violation’ complaints, but it still might be worth pursuing them.  We could also look at other remedies, such as using the countervailing duty law that China is using subsidies to undercut what we reasonably expected by China’s accession to the Information Technology Agreement.  Hell, he said, “even our lawyers can’t function well in China because the market is so restricted and they are paying higher taxes on their China revenue than Chinese lawyers, even though they are often providing the same kind of advice on Chinese law or foreign law.  That seems to be a national treatment violation of the GATS to me….”

“Many of these cases would be fact-intensive and difficult,” I said.  “They might also invite retaliation…”

“Difficult? You think you have it bad?” Rip asked indignantly. “China has finally gotten around to publishing its cases, and its patent and trademark databases are pretty transparent.  Back in the day, you had to hire a Chinese lawyer to look at the few databases or books that were only available to them.  The trademark classification system was a secret.  Moreover, most judges didn’t have legal training so judgments might not be well-worded.   In fact, back then lawyers would sit around a table exchanging information about the little pieces of information they had about the “nei-bu” (internal)  laws that were governing their clients’ investments.  We had to bring a 301 case just to get China to publish its laws and regulations.  Now you not only have more information, but you also have Chinese lawyers trained in the US system and US lawyers that have graduated from Chinese law schools.  This is a lot better than the random shots we were taking without much information to improve China’s legal environment.”

“Moreover, now the government actually publishes draft laws and regulations for comment, as well as the laws and lots of the enforcement data.  In fact, the Chinese government has been promoting open government platforms, including publishing of cases.  Today you have more data and much more transparency.  Has anybody looked at the licensing data?  Has anybody looked at how the patent office and courts treat foreigners and whether full national treatment is available?  If you want to avoid retaliation against companies, just use the data….” Rip fumed, “we would have died for this kind of information back in the 1990s.  Youse guys don’t know from difficult. ”  Rip’s New York accent was manifesting itself.

“I also don’t understand why US companies don’t bring many cases to the Chinese courts! I understand about 1% of the IP litigation in China today involves foreigners. That is really pathetic. Companies have kept on running to the US government on the same issues but often didn’t pursue the legal remedies that we negotiated.  Not only do Chinese companies file far more cases, but they also bring cases against their own government if the facts support it.  One group of Chinese citizens actually sued the Supreme People’s Court on a land use matter some years ago.  I think those people had more to fear from retaliation than some American companies.    Some of us seem to be scared of our own shadow.”

“We have to acknowledge some of the recent positive changes too.   I like it that China has a new foreign investment law that says the government can’t compel tech transfer as a condition of investment approval, and they finally discarded their tech transfer regime.  I wish you good luck on supervising those, however, particularly if you don’t do the data-driven analytics.  I also like the new appellate IP court.  It is like our own CAFC, and they are increasing damages in the courts, and have increased transparency and are experimenting with case law. I don’t think the US should be pursuing punitive damages in China however, as much as compensatory actual damages.  We have to let the civil system fulfill its role as the primary arbiter of disputes around private property rights.  You guys in the government should be all over this.  In fact, you should be sharing your views with industry, including your comments on draft laws,  rather than treating your comments and engagements as some kind of secret negotiations.  These are important reforms that could have wider consequences.  And you don’t have to be in a trade war to talk about them with China or with our own industry.”

“But there have also been negative developments, and it seems like you have been ignoring both the good and the bad. Today, it is harder to get a pharmaceutical patent in China than back in 1995, when we finally got China to grant patents for new pharmaceutical compounds.”

“Moreover, back around 20 years ago, I saw that the likelihood that a US company would get a patent granted for a semiconductor patent in some classes was nearly 100%.  By 2014, the grant rate drops dramatically to between forty and sixty percent.” Rip looked around sheepishly on that one: “Are you certain I wasn’t the only one asleep?

“The reasons for these changes are pretty obvious.  China needed foreign investment or international recognition back then.  Motorola’s semiconductor plant was the big foreign investment project in the 1990s when I was getting ready to fall asleep.  We left you with a pretty good, improving track record then on pharma and semiconductor issues.  Now China believes it doesn’t need to offer the same protection.  We wrote the TRIPS agreement to promote private property rights and transparency.  We brought China into the WTO with multiple additional commitments, possibilities for review of China’s IP regime, and to ensure there was no discrimination against industrial sectors in patent grants, litigation, and other areas.  How are those projects going?”

I told Rip that I was unaware of any such projects.

“If you started looking at the data, you might have a different view of what is really going on and how to use the WTO.  For instance, I know many in the US were upset when China didn’t need to change its criminal IP laws in 2007 as a result of a split decision on a WTO case.  But in the next several years the number of criminal IP cases in China went up dramatically.  It seems the US ultimately identified a real problem to China.  You could also say the same thing about US efforts to get China to publish its IP cases in 2007.  Today China has public databases with most cases available online.  You don’t need to win the dispute in a written decision in order to make a difference. ”

”I know the data is incomplete.” He added.  “ I noticed, for example, that not all the cases were being published.  There is lots missing.  But the missing data is also instructive.  Back then, we had real China watchers.”

For a moment, Rip looked like the Wizard from the Wizard of Oz giving a heart to the Tin Man, knowing that he already had one: “These China watchers looked for what was missing in China in the reports, not what China told us about its system.  They learned their lessons from the old Soviet Union, that is, they learned to look at what is missing in a photograph of Red Square or an economic report.”

Tinman

“As for this Confucius Institute problem, I see that the Modern Language Association reports that Chinese language studies are dropping in this country (13% between 2013 and 2016).  Are we supposed to rely on China to teach us about China? I guess that doesn’t matter, since even that pathetic effort is under attack.”

confuciusinstitute

“By the way, I heard that these problems of Chinese misappropriation of US technology might even affect private and public US science and technology collaboration, where China was entitled to own all improvements to technology licensed to China.  I would hope that the US government and industry would share any information that they have on this so that we can learn from it, and we could have a data-driven discussion around it…!”

Rip was feeling exhausted.  “When I first woke up, I thought this had to be a Sputnik moment.  The US would need to get back on its feet, revitalize its competitiveness and invest in science and science diplomacy.  I was wrong.  This is more of a Pogo moment than a Sputnik one.  We are forgetting technology, misunderstanding China, eroding our IP system, and not utilizing the tools we put into place.”

POGO

“You see, the problem isn’t that China has become the new Japan, nor is the problem that China doesn’t protect IP,” Rip concluded. “The problem is that the US forgot the significance of two elements of IP in China: (a) the Chinese economy is state-controlled and includes economic plans involving IP, and  (b) IP is a private right.”

He sighed, “I recognize that there are other trade issues, but having a foreign state adopt socialist-style economic plans on innovation is a recipe for government intervention into the markets to the disadvantage of foreigners, and for frustrated trade negotiations on IP or innovation.  These should have been addressed consistently and head-on.”

As we closed the interview, Rip looked increasingly exhausted.  He took me on a slow stroll past Lafayette Square in Washington, DC and gave me one final suggestion.  “Why don’t you try and bring back some of the old team, like the folks who worked on the OTA project  – some of those folks are still around – gee, even that greenhorn Craig Allen is now the President of the US-China Business Council, isn’t he?  He was just an intern when we worked together at OTA.  My old friends who worked on that OTA report, the China lawyer Stan Lubman and the China innovation expert Pete Suttmeier, are still around.  They didn’t have the benefit of a twenty-year beauty nap like me, but then again, I would hope they hadn’t fallen asleep at the wheel like the rest of you.”

And with that, Rip looked wistfully at the White House, thinking of his little family hamlet in the Hudson Valley, and the historic sacrifices of his family for his country since the founding of the Republic.   He tucked himself into some worn bedding and closed his eyes to the traffic and tourists.  If you travel to Washington, DC you may still hear him snoring gently near the White House gates.

Don’t think of him as just another homeless person.  He is really waiting for the right moment for the country to wake up again.

whitehouse

 

 

 

 

 

 

 

 

 

How to Monitor an IP Trade Agreement with China

The following observations are drawn from a recent talk I gave at the US-China Business Council, which was called “IP in the Trade War: Strategies for a New Normal.”  A video recap of part of those discussions is available here.  In that presentation, I talked extensively about available data sources on China’s IP environment and how they can be leveraged to shape both government trade strategies and corporate strategies.

Data-driven approaches that are now available have considerable potential value to US and Chinese negotiators thinking over how to monitor and enforce an agreement to settle the US-China trade war and help avoid the problems of continuous government oversight.  One alternative to traditional government monitoring is to empower the companies and individuals that are affected by IP and tech policies to conduct their own “bottom-up” monitoring and evaluation.  This has the added benefit of reorienting trade negotiations from governmental control to a commercial, rights-owner focus that should be its principal orientation for protection of a private right such as IP.  In addition, a bottom-up approach helps create a greater global community interested in compliance, which could also include rights holders in third countries.

What are the key elements in a trade agreement to empower rights holders to monitor an agreement? Here are four critical elements to the trade commitment:

  • The first trade commitment is that the requested conduct of the foreign state must be observable. There must be a degree of transparency associated with the conduct that permits a third party to provide reasonable analyses of the conduct, including any deficiencies in the data being disclosed.  A good example of observable data would be the publication of court cases about patent protection in a given country.
  • The second trade commitment is that the observable information must be accessible, usually by online publication or database compilation with available tools to search for data relevant to the trade commitment. A comprehensive public database of patent cases would an accessible information source, with available search tools for issues of concern.
  • The third trade commitment is that there are clear standards to which the foreign country is committed. A hypothetical example of such a commitment might be that “China agrees not to favor domestic companies litigating patent disputes in technologies that are identified in Made in China 2025, including patent classifications X, Y, and Z”.  The parties might then further agree on a statistically standard to measure compliance with the standard.
  • Finally, the trade agreement itself must have an enforcement vehicle for rights holders to raise violations of the applicable standard based on the application of the standard to the observable and accessible data. Example of an enforcement vehicle would be an investor-state dispute settlement mechanism where affected companies might bring suits directly against the foreign country before a neutral body. Alternatively, a US government IPR case referral mechanism process might be re-established to bring specific cases to the attention of Chinese authorities.  Such a process existed in the years after China joined the WTO.   This would now be strengthened by the additional weapons of withdrawal of tariff concessions or other sanctions.    A less direct mechanism might occur when companies provide the information to a US government agency, such as USTR, such as through the 301 process or a WTO dispute.

In order to ensure that China’s civil enforcement is observable and accessible, China would need to publish all of its IP cases, including cases involving provisional measures, case filings and settlements as well as on enforcement of judgments.  Standards setting should not be too difficult either.  There are numerous areas where negotiators could establish standards, many of which have been identified in this blog including: granting of preliminary injunctions against US companies, patent litigation involving semiconductors and pharmaceuticals, challenges in targeted technology patent grants (pharmaceuticals, semiconductors and strategic emerging industries, difficulties in winning trade secret litigations, retaliation against foreign companies asserting their rights in China, and challenges in bad faith trademark litigation.

As an example of such an approach, China might agree to establish a patent linkage regime requiring that pharmaceutical regulatory approvals are not granted to products that would infringe an IP holders patent rights and to facilitate generic drug introduction into the market.  In order to make the data observable and accessible,  China would adopt an “orange book” to listing relevant patents for approved pharmaceuticals.  Relevant legal databases should also be made available to determine if China’s drug regulators are approving infringing generic drugs and if patent infringement cases are brought to appropriately permit or prohibit their approval.  US rights holders could bring violations to the attention of Chinese or US trade authorities, to Chinese regulatory agencies, or through the 301 process or a case referral mechanism.   Both new and prior commitments could be written to facilitate real-time monitoring.

Due to the difficulties in monitoring China’s complex IP environment, bilateral trade policy should adjust to the era of big data and provide timely and responsive avenues for companies to note compliance or violations of trade agreements.

 

 

 

 

A Statistical Snapshot of IP Prosecution, Admin. Enforcement and Monetization for 2018

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).

SO MANY CHINA IP CONFERENCES, SO LITTLE TIME…

markatjmls

Here’s a rundown of some past events, and some upcoming ones.  I will provide an update on some of the legal developments at a later date (I know I have been a bit remiss).

On October 4, 2018, I spoke about China at the University of Nevada Las Vegas’ program  on “Intellectual Property Enforcement at Trade Fairs.”   My observations: (a) China does not routinely great preliminary injunctions at trade fairs, despite heavy reliance on injunctive relief in final adjudication of IP infringements;  (b) The United States does have robust preliminary injunction/temporary restraining order trade fair remedies; (c) the use of sui generis administrative or quasi-administrative enforcement mechanisms for trade fair enforcement in China may be one reason that judicial remedies are not that common; (d) trade fairs do afford other opportunites – they are excellent evidence gathering opportunities, their use can help satisfy use requirements for a trademark, and they may constitute infringing conduct as an “offer for sale” under the patent law.  Please look through my  power point and tell me if you have any comments.

On November 2, 2018.  John Marshall Law School (JMLS) convened its 62nd annual IP conference I chaired a great breakout session on international developments, with Kira Alvarez, Peter Yu, Cynthia Ho, Tobias Hahn and Prof. Dennis Crouch.   The session discussed the state of global IP and China-specific IP negotiations in the Trump administration.   Kira Alvarez noted the success of the administration in negotiation trade secret commitments in the revised NAFTA.  The panel, along with the audience, also discussed the role of soft diplomacy, rather than trade disputes, to resolve IP-related trade conflicts.  Prof. Dennis Crouch attributed many of the changes in civil litigation globally to the work of former Chief Judge Rader “who was really using his gregarious nature to reach out and become close friends with the leading jurists around the world.”  This point was restated by many during the conference and thereafter.  The photo above is from the JMLS international IP panel with Kira to my right.

I also participated at the JMLS annual IP  conference in a plenary discussion on antitrust and IP developments, moderated by Prof. Hugh Hansen of Fordham with  Carlos Aboim, David Djavaherian, Suzanne Munck (FTC),  Prof. Ioannis Lianos, University College London and  Annsley Merelle Ward.   I looked at the evolution of Chinese judicial practice regarding SEPS, which are a remarkable set of steps in light of there being no substantive change in antitrust or patent law during this period, and likely reflect increased judicial experience as well as the impact of economic changes in China as an emerging licensor.  These developments were previously discussed in this blog.  I also discussed China’s historical reliance on civil law measures to deal with IP misuse, rather than remedies under the patent law or antitrust law, and how these compare with US practice.

On November 5, 2018, Dan Rosen (Rhodium Group) launched another path breaking paper “Missing Link – Corporate Governance in China’s State Sector” at the Asia Society of Northern California.  A copy can be found here.  The video of the launch can be found here.  The focus of my comments was on whether SOE’s can play a more active role in China’s innovation plans, and the awkward fit between SOE’s and global trading rules.  I believed that existing efforts to provide greater market accountability and transparency for SOE’s (and more broadly, China) have not achieved their intended outcomes despite  the extensive commitments negotiated with China at WTO accession.

I gave a talk at the IP Dealmakers Forum in NY on November 8, 2018 with several individuals involved in financing litigation, providing patent analytics, buying Chinese patents  – Roger Tu, Y. P. Jou,  Brian Yates, iPEL, and Bill Yuen.  Brian Yates’ company had just been the subject of a Chinese article regarding whether patent assertion entities will now be/should now be coming to China, that was posted by IPHouse.  I think many in the room shared my skepticism that China was now “ripe” for this type of activity, particularly for litigation by foreigners against Chinese.  There was however a general sense that the IP and litigation environment was improving.

In addition to these programs, here are some upcoming events;

November 12, 2018, I will be talking at NYU.  I have always greatly enjoyed the open discussions with Prof. Jerome Cohen (no relation), Ira Belkin and others, and I believe this upcoming event will be no different in my current role at UC Berkeley.

On November 13, 2018, I will be at Columbia University talking about “IP and the China Trade War: Long Overdue, a Pretext, or Both?”     I may be guided by the discussions around that topic at JMLS earlier in November, where many concurred that these actions on IP in China are both overdue and dwarfed by other concerns.

On December 2, 2018, I will be in Shenzhen. Peking University School of Transnational Law (“STL”) will be partnering with Berkeley to present an exciting program on “Legal and  Funding Issues for Successful Startups.”  Both the topics and speakers promise to make this an especially exciting launch event. Here’s the link to register.

On December 3, 2018, I will be at IPBC  Asia moderating a session on “China’s Mandate to Innovate” and its impact on IP commercialization. IPBC has constituted a great panel, including former SPC Chief IP Judge Kong Xiangjun, now Dean at Jiaotong University Law School, and Prof. Yang Guohua of Tsinghua Law School (former Chinese IP Attaché in the US, and DDG of MOfCOM), as well as Liren Chen, from Qualcomm, Eeva Hakoranta from Nokia and Roger Tu from Marconi.

On December 4, I will be at Tsinghua University speaking at the first annual Tsinghua/Berkeley conference on “Transnational IP Litigation: Opportunities and Challenges”.  A copy of the agenda (Chinese) is found here.   We will also have some great speakers for this launch event which focuses, non-exclusively, on US developments.  The speakers include several Tsinghua and Berkeley professors, and leading attorneys from practice in the US and China.  The program will cover a full range of issues including empirical data on litigation trends, venue, jury trials, Section 337 litigation, antitrust, the role of expert witnesses, and licensing strategies to mitigate risk.

I have some other events upcoming in Taiwan in December – but that will be another posting, along with some overdue updates on Chinese IP developments.

Draft of Data Exclusivity Rules Released by CFDA

CFDA just released on April 25, 2018 its Public Comment Draft of Pharmaceutical Data Exclusivity Implementing Rules  (provisional)  药品试验数据保护实施办法(暂行)征求意见稿 , available here (the web version is here) .  Comments are due by May 31, 2018 at yhzcszhc@cfda.gov.cn.

Article 5 proposes six-year data protection (which was China’s WTO commitment) for “innovative new drugs”.  “Innovative therapeutic biologics” are eligible for 12-year data protection (the previous May 2017 CFDA circular said 10 years).  The draft clearly encourages MNCs to include China in international multicenter clinical trials and to concurrently apply for market introduction in China (which can include other countries).  Full-term protection (6/12 years) is only available in this scenario.  Reduced Chinese data protection terms of one to five years may occur due to delays in introduction in China.  As a policy matter, this draft appears intended to help encourage conducting clinical trials in China as well as new product introduction into the Chinese market

Thanks to my friend and former student Jill (Yijun) Ge at Clifford Chance for bringing this to my attention and providing an initial review.  I welcome readers to submit English translations of this draft for me to post.

This is one of several exciting new developments in the pharma IP sector in China.  To help better understand the business implications of these changes, the Berkeley Center for Law and Technology is planning on hosting a half day roundtable discussion on pharmaceutical IP developments in China on May 30, one day before the comment period closes.  Seats are limited.  Please contact chinaipr@yahoo.com or mark.cohen@law.berkeley.edu for further information.

Synergies and Contrasts Between The National IP Strategy Action Plan and Fourth Plenum (with contrasting wordclouds)

 

“””NIPS

Here is an unofficial translation of the English language translation of the Action plan of the National IP Strategy (2014 -2020) (NIPS), about which I previously blogged. A wordcloud from this English translation is above – with an obvious focus on “management,” “strengthening,” “promotion” and “enforcement” and some mentioning of the “market.”  As the NIPS was released just weeks after the Fourth Plenum, it make a useful point of contrast on where China is headed on IP, including IP-related rule of law. An annotated version of the Fourth Plenum decision is available here for comparison.   For those with short attention span, or a strong visual orientation a wordcloud of the Fourth Plenum decision is found at the end of this post.  In short, the Fourth Plenum is emphasizing the “market,” “law” and “enforcement.”  The NIPS, however, seems to be all about strengthening the IP system.

The NIPS contains some interesting general goals, particularly in terms of developing IP intensive industries, including developing Chinese patent pools and Chinese cultural industries. promoting IP services, integration of IP into state science and technology plans, and expanding cooperation.   Some sticky issues, such as involving China’s multiple track system of protecting geographical indications will be changed into a unified system of some kind.  The NIPS also calls for a Chinese-type Section 337 remedy, as was originally contemplated in China’s Foreign Trade Law, ie., to “carry out investigations on infringement of Chinese IPR by imported products and other unfair competition acts in import trade.”

Regrettably, the NIPS keeps some of the failed metrics of its first implementation in place.  Patent filings will increase from 4 per 10,000 people in 2013, to 14 per 10,000 in 2020.  This means that SIPO will be receiving in excess of 6 million patent applications per year. In an implicit recognition of the problem I have noted that patent maintenance  is at least as important as patent applications, the NIPS also wants to increase the average maintenance period for invention patents from 5.8  years to 9.0  by 2020.  However this data point doesn’t resolve the problem of low maintenance rates for utility models and designs and it is to be hoped that in all cases, maintenance rates expand due to growth in the market and not due to the kinds of artificial subsidies that already plague China’s patent applications.   Among the market oriented targets, export growth in IP rights is also slated to grow from 1.36 billion USD in 2013 to 8 billion USD in 2020.  Commercialization-related goals reflect the goals of the Third Plenum, to increase IP utilization generally.

Here’s what the NIPS says about the judiciary:

“Strengthen.. the criminal law enforcement and the judicial protection of IP. We will intensify the investigation of IP crime cases and supervise the handling of key cases; persist in the combination of fight and prevention to gradually bring special campaigns onto the track of normalized law enforcement; strengthen the linkup between the administrative law enforcement of IP and criminal justice and intensify the handover of cases of suspected crimes; strengthen the trail of IP-violating criminal cases according to law, intensify the application of pecuniary penalty to deprive infringers of the capability and conditions for committing crimes again; strengthen the civil and administrative trial of IP to create a good innovation environment; provide human, financial and material guarantee and support for the establishment and operation of IP court according to the plan for establishment thereof.”

The NIPS seems to be following the lead of other agencies in judicially-related efforts.  In administrative law, it also supports  the State Council’s effort to promote administrative transparency, including extending it to credit reporting systems:

“We will … solidly push forward the disclosure of information on cases of administrative punishment of IP infringement to deter law violators and, in the meantime, promote standardized, just and civilized law enforcement by enforcers; incorporate the disclosure of case information into the scope of statistical notification of the efforts of cracking down on infringement and counterfeits and strengthen examination; explore the establishment of the credit standard related to IP protection to include acts of mala fide infringement in the social credit evaluation system, disclose the relevant information to credit reporting agencies and raise the social credit level for IP protection.”

However, regarding IPR-related commercial rule of law, one needs to focus a bit more on the Fourth Plenum.  Here are some of the significant judicial reforms that will affect IP:

Reform systems for judicial organs’ personnel and finance management, explore the implementation of separating courts’ and procuratorates’ judicial administrative management affairs and adjudication or procuratorate powers.

The Supreme People’s Court will establish circuit courts, to hearing major administrative and civil cases that cross administrative regions. Explore the establishment of People’s Courts and people’s procuratorates that cross administrative districts and handle cross-regional cases…

Reform systems for court acceptance of cases, change the case filing review system to a case filing registration system, and in cases that should be accepted by the People’s Courts, ensure parties’ procedural rights by requiring filing when there is a case, and requiring acceptance where there is a lawsuit…

Perfect systems for witnesses and experts appearing in court, ensure that courtroom hearings play a decisive role in ascertaining the facts, identifying the evidence, protecting the right of action, and adjudicating impartially.”

More broadly, here’s what the Fourth Plenum says about IP:

“Perfect a property rights system and an intellectual property rights system that encourage innovation, and structures and mechanisms to stimulate the transformation of scientific and technological achievements. Strengthen the construction of a legal system for the market, compile a civil code, … stimulate the free circulation, fair exchange and equal use of commercial products and factors, strengthen and improve macro-level coordination and market supervision according to the law, oppose monopolies, stimulate reasonable competition, safeguard a market order of fair competition. ”

Conclusion: It should come as no surprise that the Fourth Plenum, although more general, may more greatly impact IP-related judicial / legislative issues.  Based on a recent trip to Beijing, I understand that work is already underway to draft IP provisions of a civil code.  The new chief judge of the Supreme People’s Court IP tribunal (Song), the new Chief Judge of the Beijing IP Court (Su), the new Vice President of the SPC with authority over the IP tribunal  (Tao) all have civil law backgrounds.  In addition, consideration is being given to the specialized IP courts having a circuit court type role.  New technology assessors in the IP courts will affect the way that evidence is considered and will likely enhance the independence and professionalism of the courts. 

Will the Fourth Plenum further push China towards a more market-oriented approach to IP?  I personally believe that for the NIPS to work effectively, the decisive factors has to be the market.  Metrics for IP creation are meaningless unless there is utilization of IP.  Hopefully the Fourth Plenum will push the NIPS implementation even further in a market orientation, which is a key factor of the Fourth Plenum, as this wordcloud shows…

Fourthplenum