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.
In the first part of this blog, I talked about unilateral steps that the United States and China have been taking during the ‘trade war’ to address concerns regarding forced tech transfer. In this section I look at bilateral steps that can be taken. I begin by looking at what the US and China should not do (“Do No Harm”), and then I focus on 5 areas for legislative reform: trade secrets, licensing, good faith, patents and litigation. I conclude with confidence building steps.
Do No Harm:
There are some bilateral steps taken from playbooks of the past that China and the US should not do:
- Political campaigns, particularly to address patent or trade secret infringement. These actions are great for politicians, but they offer no prospect of durable relief.
- Accepting Chinese political statements or enactment of normative documents (inferior to State Council “regulations” 法规） that have no binding effect.
- Permitting two different fact sheets in Chinese and English to emerge from discussions – Diplomatic discussions should not be a “Rashomon” (羅生門) (see picture below) – subjective explanations of a common experience. We have already differing interpretations of recent negotiations. For a formal document, that generally means that an agreement needs to be reached several days before a due date in order to ensure there is a harmonized text.
- Entering into an agreement that is not verifiable or that the US government doesn’t have the resources to verify.
In his June 9, 2010 testimony before the Congressional Security Commission, USTR’s Lighthizer, then a private attorney, noted that “China’s commitment to the rule of law is very much in doubt, and the U.S. government continues to express major concerns about China’s failure to respect U.S. IPR.” Given the investments to date in effecting change in China, I hope that USTR seeks durable legal changes that have too often been atypical.
The prognosis, however, is not positive. Willingness to “horse trade” ZTE sanctions and Huawei extradition for trade concessions is one indication of US willingness to bend its rules. Similarly, Xi Jinping apparently suggested at Buenos Aires that he would approve the NXP merger with Qualcomm at this time. Many countries, including the US have extended bilateral science and technology cooperation agreements with China without necessary legal changes to China’s licensing regime in place that would definitively facilitate sharing of improvements between the countries. The administration’s reluctance to bring trade cases involving IP against China is another sign that negotiation, rather than durable legal changes, may become the dominant means of resolving the current impasse. However, if we accept extra-legal commitments from China, how can we expect China to make structural changes in accordance with rule of law?
Nonetheless, it isn’t too hard to develop a range of possible legal outcomes that would help address US concerns over the IP issues identified in the Section 301 Report, provided they are carefully monitored. Here is my initial positive list:
China adopts a unified, stand-alone trade secret law. This law would address the problem of scattered trade secret laws, insure that criminal trade secret cases are prosecuted, and that employees are treated as subject of trade secret protection and as actors in trade secret infringement, provide appropriate burden of proof reversals (e.g., for “inevitable disclosure” or in proving aspects of misappropriation), establish punitive damages, provide for referral mechanisms from administrative or civil proceedings to the courts, etc. China previously rejected the idea of a stand-alone law in revising its current Anti-Unfair Competition Law, yet many leading Chinese IP authorities still consider it to be a useful concept.
China might also follow recent Korean legislative practice criminalizing overseas trade secret misappropriation with the intention to benefit a domestic entity, and imposing aggravated penalties in such circumstances. Such a provision, if enforced and monitored, could help address US concerns about Chinese indifference to overseas trade secret thefts, as well as set the stage for greater cooperation in transborder trade secret theft.
Technology import/Export Regulations and Licensing:
The Chinese government is already seeking to revise the Catalogue of Foreign Investment in China, and is considering a Foreign Investment Law to provide greater protections against forced technology transfer, including, hopefully, provisions regarding Joint Venture ownership of foreign licensed technologies. These positive steps are still not enough, due to pervasive national and local incentives in China at this time to acquire new technologies and the difficulties in tracking forced technology transfer. As one additional step, China should vest jurisdiction in disputes over such forced technology transfer in the newly established circuit IP tribunal of the Supreme Peoples Court, in order to insure a consistent, high-level focus and opportunity for redress, including expanding its jurisdiction over decisions to approve or deny joint venture registrations.
China has also shown no interest to date in revising the Administration of Technology Import/Export Regulations (TIER). Chinese intransigence in this area is harmful to China. Until China amends its law, I suggest that the US consider enacting legislation imposing reciprocal treatment on Chinese licensors of technology to the United States, as ITIF has also suggested.
I also encourage formation of a bilateral non-governmental commission (“Bilateral Commission”) to review progress in forced technology transfers. If necessary, the US could reimpose sanctions if sufficient progress is not made. This Commission should also require that China regularly publish reliable licensing data on the quantity of legitimate technology transfer occurring between China and other countries, including technology transferred as part of a joint venture formation. This information could support better data-driven discussions on technology flows between China and other countries.
China’s patent law reform offers the possibility for concrete changes that should not be missed. Of particular concern, is the absence of a patent linkage regime in the current draft. USTR might consider requiring China to make necessary changes in its patent and food and drug laws to fully implement a modern pharmaceutical patent linkage regime, including data exclusivity and patent term restoration.
The Section 301 report also hardly addressed potential issues involving discriminatory treatment in patent prosecution, such as has been alleged from time to time in China. As examples, low rate of patent grants in pharmaceuticals, and disparate treatment in granting of SEPS have been the subject of academic and industry concern. Consideration of discriminatory treatment, or lack thereof, should be the focus of any future collaboration between the US and China (such as my proposed Bilateral Commission).
This issue of bias need not be “tip-toed” around. China fired what was likely the first salvo when it alleged unfair treatment by USPTO regarding an IWNCOMM patent application at the USPTO during a JCCT meeting (a “Rashomon” meeting, where there was a different U.S. outcome sheet). USPTO data, however, generally shows that Chinese patent applications in the US are treated as well if not better than US applications, according to my former colleague Larry Lian (see, e.g., slide 14 above and the accompanying deck). China has not produced similar data on American applications in China or refuted the research to date in this area.
The United States and other countries might also look at temporal studies to see if there is any link between changing industrial policies and behavior of China’s patent office towards foreigners. One promising area of research that one of my students undertook in my Chinese IP class this year suggests that there could be temporal differences in patenting behavior over a multi-year period: as China increasingly focuses on national policies to stimulate indigenous innovation, bias rates may be affected.
The US should also push China to reform its metrics driven approach to patent filings, which wastes resources and distorts markets.
Good Faith/Bad Faith:
One of the discrete trends in China’s domestic IP environment is an increasing focus on the role of good faith / bad faith in a range of IP-related activities. Elevating the legal consequences of bad faith actions could lead to structural changes in China’s IP regime. Good faith has been an increasing factor in dealing with bad faith trademark registrations, in Guangdong IP court guidance on SEP negotiations, as well as in trust-losing patent behavior in the recent NDRC MOU providing for coordinated interagency action involving patenting behaviors, and will likely play a part in consideration of punitive damages for patent infringement in the proposed patent law reforms. It could be extended further to impose a duty of candor on patent and trademark applications, provide for deterrent penalties against frivolous IP litigation, address contempt of court, etc. Despite my concerns regarding the social credit system, it can also be tasked to monitor bad faith behavior in IP and non-IP related areas, to support claims for enhanced damages or referrals to criminal prosecution. The courts can take an initial look at this area across a range of judicial sectors.
China’s efforts to publish cases and increase transparency over the past several years are laudable, but the work is not complete and confidence in the judicial system thereby suffers. The courts should insure that, wherever possible, all cases are published. Cases involving national or trade secrets could be expunged of confidential information but otherwise be made public. The current data on trade secret theft is especially incomplete. Complaints and other motion papers, including dismissals due to settlements, should be made available to the public, along with preliminary and interim injunctions. Generally speaking, China’s transparency efforts are vulnerable to claims of selection bias, which undercut the utility of these efforts for comprehensive trade negotiation purposes. Transparency has the potential to create and support structural change, and it should be exploited for that purpose.
Assuming that the US and China can get past this 90 day milestone, efforts to improve the environment for high tech also need to be established There were some efforts underway in the Obama administration that can create incentives for improvement in China’s IP regime (e.g., accession to the TPP), and positive environments for technology collaboration (e.g., the US-Clean Energy Research Center). There is a tremendous upward potential for collaboration between the US and China if the right frameworks can be developed.
One thing is clear: real accomplishments, not conferences and dialogues, are needed. As I often reminded my Chinese colleagues over the years, reform in China should not be an entirely self-serving process. The world needs better scientific collaboration to address many of the looming global challenges we face. If China plays its cards correctly it can emerge as a balanced global stakeholder and welcome partner in innovation. Otherwise, I fear that the trend could be ever downward.
January 2， 2019 Update： A translation of the draft Foreign Investment Law, which is now open for public comment is available at the NPCObserver website.
(Note: Please feel free to add your suggestions! Also, I am indebted in this blog to the work of my students in my Chinese IP class at Berkeley this year, many of whom prepared papers on some of the suggestions in this blog).
Movie poster for Rashomon, below:
O ye who read this truthful rime From Flanders, kneel and say:
God speed the time when every day
Shall be as Christmas Day.
(Frederick Niven, “A Carol from Flanders”, regarding the WW I Xmas truce)
We are in the middle of the 90-day trade war truce, which was announced at the G-20 in Buenos Aires. Is there, however, an opportunity for a lasting trade peace? Let’s look at developments to date…
Shortly after the Buenos Aires G-20 meeting on December 1, 2018 at which the 90 day truce was agreed to, USTR Robert Lighthizer gave an interview on Face the Nation where he hinted at the pathway forward, noting: “We have had conversations ongoing. We have had conversations ongoing for over a year.” Lighthizer went on to say that we need structural changes and market opening “on this fundamental issue of non-economic technology transfer.” Lighthizer’s focus was three-fold: forced technology transfer, cyber theft and state capitalism. Lighthizer noted that tariffs will be raised in March unless a satisfactory solution is found. In fact, USTR has announced on November 19 a deadline of March 2, at which time tariffs will be raised. March 2 is 90 days after the December 1 meeting.
Notwithstanding LIghthizer’s assertions of on-going discussion, there have been several significant developments which suggest that there may not have been much real communication. Typically, a new administration needs one to two years before adequately coming to terms with how China negotiates on IP and what may be the “low hanging fruit” in IP improvements that could have a durable impact. This administration and China have not had anything approaching a “honeymoon” period. It is not surprising, therefore, that some of the developments during this past year, as well as during the truce period appear, to be missing the mark.
If we dial back to the period when the 301 investigation was on-going, China failed to publicly disclose data on civil trade secret cases for 2018, and actually reduced its criminal trade secret prosecutions by approximately 35% to only 26 cases in that year. China’s revised trade secret law (Anti Unfair Competition Law) (eff. 1/1/18) also weakened trade secret protections by expanding the ambiguity around protections and procedures, where a non “business operator”, such as an employee, misappropriates trade secrets.
The United States also did not always engage comprehensively during this period. Although the United States filed a WTO case against China on March 23, 2018 (the day after the Section 301 Report was released) regarding compulsory licensing terms, the complaint does not specifically call out trade secrets (undisclosed information) as a form of technology licensing. The European complaint, by contrast, more thoughtfully notes that “China imposes a different set of rules on the import of technology, including industrial property rights, other intellectual property rights and undisclosed information (“intellectual property rights”).”
Other recent efforts undertaken by China suggest that there may also have been some lack of understanding of US interests, including perhaps an undue emphasis on patent licensing. NDRC, China’s powerful state planning agency, announced a special Memorandum of Understanding/campaign mechanism involving 38 government agencies to address six types of “dishonest conduct” by patenting enterprises and individuals. The “MOU For Cooperation for Joint Disciplinary Actions Against Subjects of Serious Mistrust in the Field of Intellectual Property (patents).” 关于对知识产权（专利）领域严重失信主体开展联合惩戒的合作备忘录 is dated November 21 (before the G-20), but was published on December 2 (immediately after).
How effective will this MOU be? For some time, the academic data has suggested that such special campaigns have rarely brought any durable progress. In fact, China suggested a special campaign for three months at the beginning of the 301 investigation. My response on the record to that suggestion was:
“Many scholars think that these short campaigns have limited duration and effect . . .. So, I’d like to know why is this particular program any different from other ones before it? Why not extend it or make it permanent? Or perhaps should the focus be on judicial reform or other areas?”
The data also shows that foreigners rarely use the administrative patent system and, as I have pointed out, along with former Chief Judge Rader and former PTO Director Kappos, vesting the administrative agency in charge of granting patents with the ability to bring infringement actions and special campaigns may not be conducive to independent adjudication of rights.
Another “truce-responsive” legislative effort appears to be in the works from China’s National People’s Congress, where a first reading of a new “Foreign Investment Law” is reportedly now under consideration. The law would combine existing laws regarding foreign investment into one statute and is intended to insure that foreigners are accorded national treatment and can participate in government procurement and standards setting, as well as insure that transfer technology is on voluntary terms. It hopefully may address some aspects of forced technology transfer that have been identified by USTR in its 301 Report.
There have also been two other significant developments that could affect the landscape for technology transfer and IP protection in China that have a longer history and could be helpful to foreigners facing IP issues in China. One of these is China’s proposed draft patent law amendments which have also been submitted to the NPC and have gone through its first reading. The draft offers some improvement on judicial procedures and remedies (including discovery for calculation of damages, and improved damage calculations). This latest draft also strengthens administrative enforcement, and extends the term for design patents to 15 years (in anticipation of accession to the Hague Agreement on the International Registration of Industrial Designs), provides for enhanced protection of patents in e-commerce, extends patent term for innovative pharmaceutical patents by five years. However, it may also have weakened protections for pharmaceutical patents, as press reports thus far omit any reference to patent linkage, continuing a trend since this past August.
In my estimation, the most positive development is the establishment of a new specialized appellate circuit IP tribunal attached to China’s Supreme People’s Court and under the direction of long time IP judge, Luo Dongchuan, now Justice of the SPC. The new circuit tribunal will have national jurisdiction over technologically complex IP cases and will open for business January 1, 2019. This court could also have an important impact on technical trade secret cases, patent disputes in key areas, such as semiconductors and pharma cases, appeals from China’s patent office, in insuring consistency of decision making across various intermediate courts, and in other areas.
Interestingly, none of these changes address Lighthizer’s other goals of addressing cyber theft and state capitalism.
There have been other changes in how the US engages with China that suggest some modifications in the bilateral relationship are permanent. US companies have now begun wondering how they can take advantage of US Customs rules regarding determinations of country of origin of products with Chinese content, to minimize the potential application of 25% punitive tariffs. They are busy revisiting Customs doctrines regarding “substantial transformation, including the progeny of cases and rulings since the landmark decision in Anheuser Busch v. United States 207 U.S. 556 (1907), in order to see how they might restructure manufacturing in China through conducting more assembly or finishing outside of China. For Customs lawyers this must be a boon period. At the same time, the US Department of Commerce has published new, potentially restrictive rules on “foundational” and “emerging” technologies, which may be targeted towards China, and the Treasury Department/Committee on Foreign Investment in the United States is conducting a pilot program that could restrict “passive, non-controlling” foreign investments in technology. Meanwhile, Huawei’s CFO was arrested pending extradition to the United States, and Fujian Jinhua is banned from acquiring US technology, as it has been determined to be a threat to US national security. It is clear to me that even if this stage of the trade war were to end, a new normal in trade relations with China has emerged and significant steps will need to be taken to reestablish trust.
My next blog will offer some ideas for reducing the bilateral temperature.
Christmas Day, 2018 (rev. 5:00 PM).
The China Patents and Trademarks journal has now made publicly available the article I wrote late last year with former USPTO Director David Kappos and former Chief Judge Randall Rader (ret.) “Faux Amis: China-US Administrative Enforcement Comparison”, in both English, and Chinese (形似神异：中美专利行政执法制度对比). Kevin Lu 吕行 of USPTO also assisted in researching the article.
The article discusses the differences between administrative enforcement of patents in the United States International Trade Commission (Section 337) and by SIPO in China and notes that the comparisons of China’s administrative patent system to the USITC system are misleading, as the two systems are different both qualitatively and quantitatively.
The opinions in the article are of course strictly the authors’ own.
A string of recent events suggest that there is increasing confidence by the foreign community in China’s antitrust and licensing regime and that some of the aggressive posturing in the past by the Chinese government on the ”hegemony” of foreign ownership of SEP’s countries, or (more recently) the abuse of dominance of foreign SEP owners (in cases like Huawei vs Interdigital and NDRC v Qualcomm), is shifting to a more balanced view. Hopefully, policy developments in this new phase will also facilitate China’s efforts to become a global innovator and technology exporter.
One of the more hopeful signs of faith in the Chinese legal system was Qualcomm’s filings against Meizu, Since its initial court filings in China, Qualcomm has filed 17 complaints against Meizu. In addition, Qualcomm announced in October 2016 that it launched a 337 action against Meizu in the United States, and is pursuing litigation in Germany and France.
In another sign of confidence Canadian NPE, Wireless Future Technologies Inc, a subsidiary of Canadian PIPCO WiLAN, filed a patent infringement lawsuit against Sony in the Intermediate People’s Court of Nanjing. The choice of the Nanjing court, rather than one of the specialized IP courts has been a source of some speculation, with the media suggesting any of three factors: faster litigation times, local contacts and even, perhaps, anti-Japanese sentiment. Two other reasons: Jiangsu’s efforts to use actual or implied royalties to assess damages, rather than the low statutory damages that applied in the vast majority of cases in China. Damages in a “model case” for patent infringement in 2014 using a royalty based calculation that was first adjudicated by the Nanjing Intermediate Court, were 3,000,000 RMB, relatively high by Chinese standards. See 江苏固丰管桩集团有限公司 vs宿迁华顺建筑预制构件有限公司, 南京中院（2014）宁知民初字第00108号 , 江苏高院（2015）苏知民终字第00038号. Finally, and perhaps, most importantly, Sony’s phones are made by Arima in Wujiang, Jiangsu Province.
The Financial Times has written on the Arima case, noting that “A new corporate era beckons in which a Chinese judge could conceivably cut off the lifeblood of some of the world’s most valuable companies. It was not so long ago that China’s legal system just did not factor into the risk calculus of most global companies.”
Chinese companies are also showing confidence overseas by bringing cases brought against foreign competition. Earlier this year, Huawei brought SEP-related litigation in the United States against Samsung in both the United States and China, and against T-Mobile in the Eastern District of Texas.
China’s growing SEP portfolio may be contributing to this change in perspective. As Dina Kallay of Ericcson noted at the recent Fordham Antitrust conference: “Of the ten largest contributors of technology to cellular standards — and we like to measure it by accepted technical contributions, so it’s not just measured by the number of patents, which arguably you can play with — but by how many of your technical contributions were accepted into the standard, …Three … are Chinese — Huawei, ZTE, and CATT (Datang). No other nation has as many companies in the Top Ten list.” Considering China’s increasing investments in the United States and its rapidly improving patent portfolios, might a Chinese company soon be a complainant in a Section 337 litigation?
By the way, Huawei’s website impressively identifies their contributions to IP in standards as follows;
Huawei has filed over 57,800 patent applications in China, U.S., Japan, European Union, South Korea, and Brazil, as well as other countries and districts, of which approximately 15000 are in the area of wireless communications.
Huawei has 2,137 essential patents in the area of wireless communications…
In the area of wireless communications, Huawei has submitted approximately 20,009 proposals to international standard organizations … 40% of which have been adopted.
Huawei’s extensive experience in standards setting and its own investments in IP have likely contributed to its opposition to some of the mandatory disclosure / mandatory licensing standards-related aspects of the proposed revisions to China’s patent law (eg., Article 85). Interestingly, Huawei objected to this provision due to the the complexity of international regulation of standards setting organizations, and because it alleged that foreigners do not participate in the development of Chinese domestic standards; therefore this provision might primarily be applied by Chinese against Chinese. Nonetheless, its rejection would be a positive step by avoiding an unfortunate precedent for SIPO and reducing overregulation of standards setting bodies.
One can also point to other recent factors, such as government to government engagement, and the pressure of overseas litigation in Huawei vs ZTE (ECJ), Sisvel vs Haier (Germany), Unwired Patent vs Huawei and Samsung (United Kingdom) and Vringo vs ZTE (SDNY and other jurisdictions) as other informative experience and perhaps sources of pressure for greater international conformity.
These changes in IP ownership, standards participation, litigation experience and maturity due to increased engagement are likely having their effect on domestic policy. Within China, early this year draft IP abuse guidelines of NDRC recognized that ownership of an SEP does not automatically confer market dominance. In July of 2015, the State Council announced its plans for China turning into a “strong IP economy”, and identified several projects involving standards. One of the projects identified by the State Council calls for the development of rules on standard essential patents that are based on FRAND licensing and “stopping infringement”, with the involvement of AQSIQ, SIPO, MIIT, and the Supreme People’s Court (Art. 38). As the focus of this task is on stopping infringement, rather than “abuse of dominance”, this suggests to me that a more rights-holder friendly approach.
Another hopeful sign which I have been following are suggestions that China’s Technology Import/Export Regulations (“TIER”) may now be under revision, as was noted in the European Business in China Position Paper (2016/2017) . Some aspects such as ownership of improvements have been the subject of the TIER and also appear to factor into AML enforcement policy such as in the Qualcomm case. (see also QBPC’s paper on the TIER at “应允许当事人对后续改进的技术成果的权利归属进行自由约定”, attached here.[Chinese Language]).
What do you think? Please feel free to comment with your own experiences or examples (in favor or against) in this area!
Rev. Nov. 19, 2016
The following are some reflections on what Customs-related enforcement activity in the US and China last year. The data generally shows the continuing problem of a high level of exports of counterfeit goods from China, difficulties in addressing online and border measures for patents, and the need to work with Customs officials to secure enforcement.
Both US and Chinese data generally showed an increase in Customs activity, especially in Sino-US trade, for 2015. According to US Fiscal Year 2015 data, the number of IPR seizures increased nearly 25 percent to 28,865 from 23,140 in FY 2014. The total estimated manufacturer’s suggested retail price (MSRP) of the seized goods, had they been genuine, increased 10 percent to $1,352,495,341. China and Hong Kong together at 87% of seizures, versus 88% for 2014.
China Customs also released its data in late April 2015. Chinese data shows that the United States rose from the number 5 slot to the number one slot in terms of destination of batches of shipments. However, the US was number 29 in numbers of seized items (suggesting a relatively small quantity in each batch of seizure for export to the US). Postal shipments accounted for 84% of overall seizures, an increase of 2.7% from last year. There was however a drop in seizures upon export from 23,019 to 22,000, which is contrary to the US experience – since increasing on-line sales in particular should likely result in more seizures, presumably at less value.
Iran was the export destination from China with the most goods seized, holding the number one place in 2014 and 2015. As discussed last year, 2014 showed a diversification in destinations of China’s export destinations for counterfeit goods, which continued for this year.
There was also a change in the mix of China and Hong Kong origin seizures coming into US ports. China origin seizures by US Customs dropped by 11% in 2015 and Hong Kong picked up the slack (10%).
Why was there such a dramatic “migration” of counterfeits to Hong Kong? One other odd trend is that trademark litigation in Southern China (Guangdong) actually dropped by 4.11%, according to data from the Guangdong High Court. Any downward trend in Chinese IP statistics is often a warning sign – by comparison, the Supreme People’s court noted in its 2015 White Paper that national civil TM cases increased nationwide by 13.14% during this time frame to 24,168 cases. The data might suggest that Guangdong is becoming less important as a place for enforce trademarks and/or that transshipment through Hong Kong is becoming more important, but it is too early to tell.
US data shows that the three largest categories by numbers of seizures were wearing apparel, consumer electronics and pharmaceuticals/personal care for 2015. China reported that cosmetics, tobacco products, and machinery were amongst the major categories of seized products. Cosmetics, jewelry, medical devices, and watches showed the greatest levels of increases in Chinese seizures.
Chinese Customs data also shows that the number of articles seized based on ex officio actions dropped dramatically (65% vs. 98%) comparing 2015 to 2014, suggesting the need for increased engagement by rightsholders with Chinese Customs to alert them to suspected infringing shipments.
Interestingly, China reported a noticeable increase in seizures on behalf of its domestic IP rights owners, which included 1939 batches with a value of more than 55,900,000 RMB.
As with the United States, Chinese Customs’ emphasized seizing trademark infringing goods over other rights. In 2014, TM’s occupied 96.86% of total items seized, with only 1.94% related to patent. In 2015, TM related seizures increased to 98% of total items seized; copyright and patent combined were about 2% of the items seized.
US Customs reports that there was also a big increase in exclusion orders issues and enforced on behalf of the International Trade Commission, typically involving patents, with a 13-fold increase in shipments seized from 2 to 26. In China, on-line enforcement against articles that infringe patents is also attracting more attention from Chinese regulators, with the Chinese patent law amendments also looking at an increased scope of liability for online service providers (Art. 63).
While on-line enforcement is getting more attention, the Federal Circuit decided last year in ClearCorrect v. Align that the USITC Section 337 jurisdiction over the importation of “articles that infringe” does not extend to the “electronic transmission of digital data”, which may reduce the ITC’s role in the digital environment, particularly those involving patents. This otherwise appears to be a trend that is contrary to an increased focus on on-line infringement.