Justice Tao Kaiyuan and the Role of the Judiciary

MadameTaoMichelleLee

Justice Tao Kaiyuan of the Supreme People’s Court, who had been to the United States in 2015 delivering important speeches on rule of law, has recently published an article on “Giving Full Play to the Leading Role of Judicial Protection of IP Rights“ 充分发挥司法保护知识产权的主导作用”(Dec. 31, 2015).  The article is receiving considerable attention in China, as it was published by Qiu Shi, 求是(“Seeking Truth”), a bimonthly political theory published by the Central Party School and the Central Committee of the Communist Party of China.  The publication of the article appears to be timed with the release of the recent draft of the Patent Law Amendments, comments for which were due the day after publication (January 1).  The proposed patent amendments would strengthen the role of administrative agencies in IP enforcement, to the possible detriment of the judiciary.

The author of the article is no less important than its contents.  Madame Tao knows patents.  She was the former Director General of the Guangdong Patent Office and therefor once had “vertical” reporting responsibility to SIPO (see picture above taken by me of Madame Tao [on the right] with USPTO Director Michelle Lee taken in 2015).  Although the article was authored in her name, many in China were speculating that the article was approved by higher authorities – perhaps Zhou Qiang, the President of the Supreme People’s Court, with Madame Tao serving as an appropriate messenger.

The concerns about this draft on patent law enforcement are not that different from those in the earlier (2012) draft when I blogged in “Why the Proposed Amendments to the Patent Law Really Matter … and Maybe Not Just For Patents” that “the changes strike me as a rather sudden about face in China’s march towards better civil protection of IP.” Madame Tao takes this several steps further.

Madame Tao’s article is divided into three parts: (1) The important meaning of giving full play to the leading role of the judicial protection of IP rights; (2) The key factors that constrain the leading use role of judicial protection of IP; and (3) Key measures in giving full play to the leading role of judicial protection of IP rights.   Here are some of the points she makes:

Madame Tao refers back to the National IP Strategy and related documents, such as the Third Plenum, the NPC’s decision to establish IP courts, and the Action Plan for the National IP Strategy to underscore the well-established, leading role of the courts in enforcing IP.

Her article compares certain key elements of judicial protection versus administrative protection.  In her view, judicial enforcement can curtail abuses of administrative enforcement.  It also has other advantages.  It has clear rules.  It is transparent.  It can help establish guidance for businesses by establishing clear standards for similar disputes (a possible nod to efforts at developing case law/guiding cases).  Moreover, civil enforcement comports with notions of private ownership and the development of markets and creation of a fair competitive environment in China.  Madame Tao especially underscores the role of the courts in supervising administrative agencies.  As I have noted, this is also an important part of the foreign IP docket in China.  Madame Tao states that the judiciary should also actively guide administrative law enforcement in investigation and review of evidence, and determination of infringements.

Madame Tao also calls for greater coordination in administrative and judicial roles in IP protection, noting that administrative enforcement played an important leading role in the beginning of China’s IP enforcement environment.  Administrative enforcement has “in a short time met the need for building effective IP protection.”  However, the “growing maturity” of the judicial system has caused increasing problems in the coordination process.

Madame Tao also calls for specific policy initiatives, many of which are already underway.  She calls for greater deterrent civil damages, including by revising patent, copyright and unfair competition laws based on experience of the trademark law revisions.   She also suggests that a discovery system should be considered.  Civil and criminal divisions in IP should be unified.  She suggests that a specialized national IP court should be researched and promoted, and she calls for the unification of technical appellate cases, perhaps like the CAFC.  She also notes that the division between infringement and validity determinations in the courts in patents and trademarks should be addressed, and calls for improvements in the availability of provisional measures.

She calls for greater improvements in judicial protective measures, including in obtaining evidence and the convenience and effectiveness of remedies.  Among other specific judicial reforms, she also suggests exploring intellectual property case law, improving judicial accountability and developing judicial professionalism.  Finally, Madame Tao also calls for expanding international awareness by IP judges to better protect national interests and to increase China’s IP influence.

Altogether, a tour de force.

Here’s what her speech looks like in a machine-translated wordcloud:taowordcloud

 

 

 

Translation of Draft Patent Law Amendment

Further to my blog earlier this month, attached are unofficial translations of the draft Patent Law Amendments, as well as the SIPO Explanations about Draft Amendment to the Patent Law.  Comments on the draft are due at the State Council Legislative Affairs Office by January 1.  The drafts are provided by the USPTO office in Beijing, should be compared against the Chinese original for any important concerns.

This draft may generally be said to elicit several different types of concerns. These include positive changes from the earlier draft in areas of concern.  An example of this might be limitations on proposed enhancement of patent administrative enforcement.  Another area of concern is negative changes from the earlier draft.  An example of this might be inclusion of antimonopoly law concepts regarding IP abuse into the patent law amendments. Another type of amendment is a positive change in an already positive direction.   An example of this might be improvements in civil enforcement and conduct of utility model appraisal reports.  Finally, there are issues that are not under consideration for revision in the patent law, which might be useful for Chinese law makes to consider.  Examples of these might include a more robust and longer grace period, and a longer statute of limitations.  There are also issues involving pharmaceutical regulatory procedures and patent protection that also implicate pharmaceutical regulatory procedures, such as patent linkage or patent term restoration which affected companies may wish to comment on.

Also importantly, the State Council Legislative Affairs Office website describes this draft as a SIPO draft , not an SCLAO draft to support further research by the State Council: “The Legislative Affairs Office of the State Council decided to publish the State Intellectual Property Office submission for consideration by the State Council of The Chinese Patent Law Amendment Bill (draft) and its Explanation, in order to solicit views of all sectors of society to conduct further research, and after modification to submit for consideration by the State Council.” “国务院法制办公室决定,将国家知识产权局报请国务院审议的《中华人民共和国专利法修订草案(送审稿)》(以下简称送审稿)及其说明公布,征求社会各界意见,以便进一步研究、修改后报请国务院审议。”

Also for reference, attached is the link to a translation of the prior draft, and comments of the ABA on that prior draft.