Translations of Civil Trade Secret and Criminal IP JI’s Available

The Gen Law Firm (己任律师事务所) has graciously provided us with translations of two recently released judicial interpretations with red-lining to compare with the prior public comment drafts. 

The civil trade secret judicial interpretation was released on September 11, 2020.  I blogged about it here.  

On September 13, a criminal IP judicial interpretation, which also includes criminal trade secrets, was released by the Supreme People’s Court and Supreme People’s Procuratorate (最高人民法院  最高人民检察院 关于办理侵犯知识产权刑事案件具体应用法律若干问题的解释 [3]).

These translations are very timely in light of the recent USPTO conference on trade secret developments in China.

Please send me any comments that you may have prepared on these or other laws, regulations, rules, judicial interpretations released for public comment with a note regarding whether the comments can be shared on this blog.

New SPC Guiding Opinion on E-Commerce and IP

On September 12, 2020, the Supreme People’s Court issued its new “Guiding Opinion on the Trial of Civil Cases of Intellectual Property Rights Involving E-Commerce Platforms”  关于审理涉电子商务平台知识产权民事案件的指导意见 (the “Guiding Opinion”).

This Guiding Opinion explicitly references China’s E-Commerce law.  A translation is available here. I previously discussed the drafting of that law here.  As best I can tell this document was not anticipated in the SPC’s JI drafting agenda of earlier this year.    That is likely because strictly speaking a “Guiding Opinion” is not a judicial interpretation.  As one observer has noted: “These notices and opinions encourage judges to make decisions, or local courts to explore new mechanisms based on their attitudes. The SPC will sometimes formulate official judicial interpretation based on the judicial practice after these documents are published.”

The Guiding Opinion should further help implement obligations set forth in Section 1 (E) of the Phase 1 Trade Agreement regarding “Piracy and Counterfeiting on E-Commerce Platforms”, although It is not a specifically enumerated “deliverable” in that Agreement.  The Phase 1 Agreement does include a number of specific reforms that the US and China agreed to, including “extend to 20 working days the deadline for right holders to file a judicial or administrative complaint after receipt of a counter-notification”; “ensure validity of takedown notices and counter-notifications, by requiring relevant information for notices and counter-notifications and penalizing notices and counter-notifications submitted in bad faith” and  that “China shall provide that e-commerce platforms may have their operating licenses revoked for repeated failures to curb the sale of counterfeit or pirated goods.”  These reforms may be reflected in other legislative or judicial acts.

In the absence of a complete translation, I offer here one provision regarding implied knowledge of infringement by an e-commerce platform in the Guiding Opinion ,which is likely intended to help implement Arts. 38, 41, 42 and 45 of the E-Commerce law:






“The People’s Court may determine that an e-commerce platform operator ‘should be aware of’ the existence of infringement under the following circumstances:

1) Failure to perform legal obligations such as formulating intellectual property protection rules and reviewing the operating qualifications of operators on the platform;

(2) Where there is no review of the proof of rights of operators whose store types on the platform are marked as “flagship store”, “brand store”, etc.;

 (3) Failing to adopt effective technical means to filter and block infringing product links containing the words “high imitation” and “fake goods”, and links to infringing products that are re-listed after the complaint is established; and

(4) Other circumstances where reasonable review and care obligations are not performed.”

What constitutes “effective technical mean to filter and block” or  “reasonable review and care” are key issues in the Guiding Opinion and for the future.  This Guiding Opinion offers some concrete examples. As technology evolves in such areas as machine learning and recognizing of fake products and fake product purveyors, the concepts of “effective” and “reasonable” may necessarily evolve.  These changes in technology could impose greater technical and financial obligations on e-commerce platform operators. As I recall, the evolving nature of these technologies was discussed about a decade ago by the late Prof. Guo Shoukang and hosted by AmCham on e-commerce liability, and it remains true today. 

Terms such as “effective” and “reasonable” in the Guiding Opinion offer an opportunity for the courts to flexibly address newly emerging challenges as they arise.  These general concepts are also in synch with a trend towards greater flexibility by the Chinese courts in addressing emerging legal and technical challenges in China.  As with the definitions of “bad faith” which are also described in the Guiding Opinion Arts. 6, 8 and 10 for platform business operators  and rights holders providing notifications and counter-notifications of infringement, the concept of “implied knowledge” is part of a broader effort to incorporate “good faith” -type obligations into Chinese IP and civil law generally. 

Please send in any corrections or comments.

Supreme People’s Court Releases Trade Secret JI

On September 11, 2020,the SPC released its trade secret JI on civil enforcement of trade secrets.  Here is a link to a Chinese text comparing the final version with the draft released for public comment.  The USPTO unofficial translation of the prior draft is available here.

While we wait for the translations and commentaries, Article 14, which is newly inserted, caught my eye:

“第十四条  通过自行开发研制或者反向工程获得被诉侵权信息的,人民法院应当认定不属于反不正当竞争法第九条规定的侵犯商业秘密行为。



A rough translation is:

“14. When the alleged infringer obtains information developed its own R&D or through reverse engineering, the People’s Court shall determine that these are not violations of trade secrets pursuant to the provisions of Article IX of the Anti-Unfair Competition Law.

 Reverse engineering referred to in the preceding paragraph refers to the disassembly, mapping, analysis, etc. of products obtained from public channels through technical means to obtain relevant technical information of the product.

When the alleged infringer obtains the right holder’s business secrets by improper means, and thereafter claims that the business secrets have not been infringed on the grounds of reverse engineering, the People’s Court shall not support [this defense].”

This language replaces proposed Article 8: “Where the alleged infringer asserts that it has obtained the alleged infringing information by means of research and development, transferee, license, reverse engineering,
inheritance, etc., the alleged infringer shall provide evidences to prove so.”

The more thoughtful approach in this final text should reduce the viability of defenses based on changes to technology made by the alleged misappropriator which had subsequently given rise to overly broad reverse engineering defenses in China.  A similar case was presented in an earlier case: Chongqing Long Life Xinxieli Chemical Company Ltd vs. Hu Xiantang et al. (重庆长寿新协力化工有限公司等诉胡宪堂等侵犯商业秘密纠纷案). The court noted in that case that “the illegal obtaining of trade secrets and its subsequent modification still is a trade secret infringement.” (本院认为,首先,被告东荣公司通过非法手段获取了涉案商业秘密,不管其是直接实施还是略加改进后再实施,其行为的侵权本质并未改变。即非法获取并实施商业秘密是侵权行为,对非法获取的商业秘密进行改进同样是侵权行为。) (2010) 渝一中法民初字第00055号).  US law tends to focus on unauthorized access rather than use of the unauthorized information.  Adoption of this change may also bring China a step closer to US practice.