A Taste of China IP In The New Year

There continue to be various thrusts and feints in these early days of the Trump administration on Chinese IP related matters.  Here’s  a quick rundown.

Tim Trainer, a friend and former colleague, who is also the President of Global IP Strategy Ctr, P.C. & Galaxy Systems, Inc. has  drawn attention to several China IP-related developments including a Trump executive order that involved IP theft, a bill introduced by Congressman Steve King of Iowa that targets China’s theft of intellectual property (February 14, 2017), and the effect of TPP withdrawal on China’s free trade agenda.

The Executive Order notes the following:

It shall be the policy of the executive branch to:

(a) strengthen enforcement of Federal law in order to thwart transnational criminal organizations and subsidiary organizations, including criminal gangs, cartels, racketeering organizations, and other groups engaged in illicit activities that present a threat to public safety and national security and that are related to, for example:

(ii)  corruption, cybercrime, fraud, financial crimes, and intellectual-property theft . . . .

This order from February 9 clearly puts IP theft on the radar.  While China is not singled out by name, it is worth reflecting that the term “theft” appears 7 times in the text of Dr. Peter Navarro’s book Death By China.  Of these seven times, “intellectual property theft”  appears  twice, and technology theft appears three times.  The term “intellectual property theft” is specifically indexed. Navarro, of course, is a leading advisor to the President on trade policy.

Continuing the theme of IP theft, Congressman King’s bill would, according to Trainer “require the imposition of duties on Chinese origin goods in an amount equal to the estimated losses from IPR violations suffered by US companies if enacted into law.”  This early stage bill is found here

Regarding TPP withdrawal and its effect on IP and China China’s Regional Comprehensive Economic Partnership agreements,   a recent Congressional Research Service report has noted that the RCEP agreements are “unlikely to include commitments as strong on issues from intellectual property rights to labor and environmental protections”.  As I have previously noted, “China’s  FTA  experience has thus far focused on a limited range of issues, most of which are not ‘core’ IP.”

Apart from Tim Trainer’s blog, the media has also reported extensively recently on several trademark decisions in China in President Trump’s favor.   However, China’s trademark examination standards contain provisions that prohibit use of the names of political leaders.   Moreover, unlike most other presidents, Trump was not a political leader until he was elected president.  The Chinese trademark examination standards prohibit trademarks that hurt social morality or have other ill political effects.  Amongst the enumerated bad political effects are trademarks that are identical or similar to a country, region or international organization’s leader’s name.

九、有害于社会主义道德风尚的或者有其他不良影响

二)具有政治上不良影响的

1.与国家、地区或者政治性国际组织领导人姓名相同或近似的

Postscript February 20, 2017:

While  I have no opinion on the merits of any case, I hasten to note that the great grandson of Teddy Roosevelt, Tweed Roosevelt, might have an opinion on whether rooseveltpolitical officials should be granted trademarks.  His company, Roosevelt, Tse and Company, owns several trademarks, many of which involve his eponymous restaurant in Shanghai, and some of which include the family crest (see below).   He also seems to have been the victim of some individuals filing using the family name.

Living political leaders have also had their names misused.  Three trademarks applications with the name of Barack Obama in 2008 by a company in Wuhan, China were refused registration by 2010.  There are several trademarks and trademark applications of varying status with the name Merkel.   A quick database search also showed up 7 applications with the Reagan name in English, one granted as recently as 2015 (Registration Number: 13981276) (for electrical goods).  There is one registration for Fidel Castro for use on travel bags, filed  by a natural person in Hebei 于锁群 (6792546).   Did Fidel authorize this?

Of course, trademarks are not only the names of people.  Several marks “In God We Trust” have been refused by the Chinese Trademark Office.  One is still pending (21508789).  It was filed by a company from Zhejiang.

A recent Washington Post article,  noted that China is a country where “faking foreign brands has long been a profitable business practice.”  The article refers back to the Qiaodan case as one important milestone in changing practices.  As any reader of this blog knows, there have been several important steps in recent years to address  abusive trademark practices. 

tweedroose

2017 Opens with More Positive Trademark Developments

The SAIC has announced that it has  amended its TM review and examination standards (“Trademark Review and Examination Standards”).  The revised standards, with a date of December 2016, are available here. The revisions incorporate revisions to Articles 19, 50, 15.2, 1and 10 of the Trademark Law.

In addition, the Supreme People’s Court published a judicial interpretation on Certain Issues Related to Trials of Administrative Cases Involving the Grant and Confirmation of Trademark Rights 最高人民法院关于审理商标授权确权行政案件若干问题的规定.  A public comment draft of the JI was circulated as early as 2014; the final version was released at a press conference on January 11, 2017.   The JI clarifies the application of “adverse influence” in Article 10(1)8 and “other improper means” in Article 44(1) of trademark law and provides details on prior rights of Article 32  including copyright, naming right, trade name,  amongst other provisions.   The Financial Times has suggested that the JI is linked to the Qiaodan case , although as the Chinese media as noted, Qiaodan may also be seen as one of a series of cases providing more expansive relief against abusive registrations and recognizing more extensive related rights, such as naming rights and even merchandising rights.  In an unrelated development, the SPC on January 7, 2017 listed the Qiaodan case  as one of the top 10 civil and administrative cases for 2016.

 The 2016 JCCT obligated China to “take further efforts to address bad faith trademark filings”, according to the recently released Joint Fact Sheet. The amended examination guidleines, JI, and related case developments, including the development of case law in IP,  should help implement this commitment. 

SIPO Publishes Proposed Revisions to Patent Examination Guidelines

On October 27, 2016, the State Intellectual Property Office (SIPO)  published the  Draft (For Public Comment) of Revisions to the Patent Examination Guidelines .  The Chinese text is available here. Comments on the draft should be submitted before November 27.

 In the important area of post filing data supplementation for pharmaceutical inventions, the proposed revisions clarify that such supplementation is permissible where “the technical effect to be proved by the supplemental experimental data shall be that which can be obtained in the contents of the [original] application disclosure by one who is ordinarily skilled in the art.” 对于申请日之后补交的实验数据,审查员应当予以审查。补交实验数据所证明的技术效果应当是所属技术领域的技术人员能够从专利申请公开的内容中得到的。

 The examination guidelines also loosen the standards for obtaining business method patents if there is a technical element to the novel business method.  Presumably these inventions were previously denied patentability on the basis that they were intellectual rules or methods under Article 25 of the Patent Law.  The proposed guidelines state:

 Claims related to business methods that contain both business rules and methods and technical characteristics, shall not be excluded from the possibilities of obtaining patent rights be Article 25 of the Patent Law. 涉及商业模式的权利要求,如果既包含商业规则和方法的内容,又包含技术特征,则不应当依据专利法第二十五条排除其获得专利权的可能性。

The examination guidelines also appear to loosen the standards for obtaining software enabled inventions:

In the second line of Part II, chapter IX, section 5.2, paragraph 1, the third sentence of the Patent Examination Guidelines are amended from, “and describe in detail which parts of the computer program are to be performed and how to perform them” to provide that “The components may not only include hardware, but may also include programs. 将《专利审查指南》第二部分第九章第5.2节第1段第3句中的并详细描述该计算机程序的各项功能是由哪些组成部分完成以及如何完成这些功能修改为所述组成部分不仅可以包括硬件,还可以包括程序”.

Postscripts (Nov 18 and 28, 2016):

1.  Here’s Jacob Schindler’s October 31, 2016 commentary in IAM on this blog, and  here’s another blog comparing US and Chinese software patent developments. 

2.  Here are AIPLA’s comments on the proposed revisions to the patent examination guidelines (Nov. 25, 2016 – bilingual).