The Federal Circuit Bar Association and USPTO announced on July 17, 2017 that they are hosting a webinar on the latest research and developments in standards essential patents (SEPs) in China on July 25, 2017 from 9:00 to 11:30 AM, EST. The draft agenda and suggested reading materials are available via the link here. Registration is free and is required to participate in the program. Some of the speakers will also be discussing live at USPTO, for which registration is also required. The focus of the program is on developments and research in patent prosecution and injunctive relief for SEPs.
Here are three upcoming China IP-related programs hosted by academic institutions.
On the West Coast, the Tusher Center for the Management of Intellectual Capital at the Haas School of Business, UC-Berkeley will be hosting a workshop on Standards Setting and IPR: United States and China on March 28, 2016. The program includes speakers from the Standardization Administration of China and the China National Institute of Standards.
From March 31-April 1, Fordham University will be hosting its annual IP Conference. I will be speaking along with David Kappos, Benjamin Bai, He Jing and others in a sunrise session April 1 on Chinese IP issues.
On April 14, the USPTO in conjunction with George Washington University will be hosting a half day program in the afternoon. The program will be held at the USPTO, and will include two roundtables on IP Issues Related to US Companies in China and IP Issues Related to Chinese Companies in the US. I will be co-moderating this program along with George Washington University Dean for Intellectual Property Law Studies John Whealan. We expect to have the participation of several Chinese judges and IP officials in the program. Here is the link to register, and a draft Agenda.
Updated: March 15, 2016 with GWU link and agenda.
Attached is the November 23, 2015 decision in Unwired Planet v Huawei and Samsung, which was heard in the England and Wales High Court (Patents),  EWHC 3366 (Pat). In this case, Mr. Justice Birss held that the asserted patent is valid and is infringed by wireless telecommunication networks which operate in accordance with the relevant LTE standard. Thus patent EP (UK) 2 229 744 “Method and arrangement in a wireless communication network” claimed a priority date of January 8, 2008, based on a US application US 61/019,746.
These patents in suit had apparently been acquired by Unwired Planet from Ericsson, and this is the first case involving these patents. It was advanced by Unwired Planet that the patent in this decision was essential to an LTE standard, and that accordingly it was infringed through compliance with that standard in devices produced by Samsung and Huawei. Further technical trials in relation to five other patents from this portfolio are set for 2016. A non-technical trial to determine FRAND and competition issues is also scheduled to take place following the conclusion of the technical trials.
A more detail analysis is found on the website of Carpmaels & Ransford.
Here are the IP outcomes of the 26th Joint Commission on Commerce and Trade, concluded early in November 2015 in Guangzhou. The IP-related outcomes appear primarily in three different places in the JCCT outcome document, under “Competition”, “Intellectual Property Rights” and “Cooperative Dialogues and Exchanges.”
I have repeated below the outcome language in full, without the annotation that appears in the US Department of Commerce release on the subject, followed by my own “references” on the outcome to compare the text with recent developments in these areas.
The Chinese government version of the outcomes follows the US outcomes.
China’s anti-monopoly enforcement agencies are to conduct enforcement according to the Anti-monopoly Law and are to be free from intervention by other agencies.
China clarifies that commercial secrets obtained in the process of Anti-monopoly Law enforcement are protected as required under the Anti-monopoly Law and shall not be disclosed to other agencies or third parties, except with a waiver of confidentiality by the submitting party or under circumstances as defined by law.
Taking into account the pro-competitive effects of intellectual property, China attaches great importance to maintaining coherence in the rules related to IPR in the context of the Anti-monopoly Law. China clarifies that any State Council Anti-monopoly Law Commission guidelines will apply to the three anti-monopoly law enforcement agencies.
The Chinese side clarifies that in the process of formulating guidance related to intellectual property rights in the context of anti-monopoly law, it will solicit comments from relevant parties, including the public, in accordance with law and policy.
References: SAIC’s IP Abuse rules, NDRC’s draft IP Abuse rules. Importantly, this outcome specifically recognizes the pro-competitive nature of promoting IP. As I said in my comments on the NDRC’s IP abuse guideline questionnaire, “Rather than seek to minimize IP rights through euphemisms such as “balance” perhaps a better approach would be how to optimize the patent system to foster long term innovation and competition and insure that the competition system supports and does not retard such development.”
INTELLECTUAL PROPERTY RIGHTS
Standards and Intellectual Property
The United States and China affirm the beneficial role of standards in promoting innovation, efficiency, and public health and safety, and the need to strike an appropriate balance of interests of multiple stakeholders.
The United States and China commit that licensing commitments for patents in voluntary standards are made voluntarily and without government involvement in negotiations over such commitments, except as otherwise provided by legally binding measures.
The United States confirms that Chinese firms participate in the setting of voluntary consensus standards in the United States on a non-discriminatory basis, consistent with the rules and procedures of the relevant standards organizations. China welcomes U.S.-invested firms in China to participate in the development of national recommendatory and social organization standards in China on a non-discriminatory basis.
With a view to enhance mutual understanding and trust, the United States and China agree to hold dialogues over issues under this topic.
Here are some other blogs on this important topic.
The United States and China are committed to providing a strong trade secrets protection regime that promotes innovation and encourages fair competition. China clarifies it is in the process of amending the Anti-Unfair Competition Law; intends to issue model or guiding court cases; and intends to clarify rules on preliminary injunctions, evidence preservation orders and damages. The United States confirms that draft legislation proposed to establish a federal civil cause of action for trade secrets misappropriation has been introduced in relevant committees. Both sides confirm that IP-related investigations, including on trade secrets, are conducted in a prudent and cautious manner. The United States and China agree to jointly share experiences and practices in the areas of protecting trade secrets from disclosure during investigations and in court proceedings, and identify practices that companies may undertake to protect trade secrets from misappropriation in accordance with respective laws.
References: Note that the reference in the trade secret provision to a degree mirrors that of the Competition outcome, regarding protecting confidential information in administrative proceedings. Proposed revisions to the AUCL were previously discussed here.
Geographical Indications (GIs)
The United States and China will continue our dialogue on GIs. Both sides reaffirmed the importance of the 2014 JCCT commitment on GIs and confirmed that this commitment applies to all GIs, including those protected pursuant to international agreements. China will publish in draft form for public comment, and expects to do so by the end of 2016, procedures that provide the opportunity for a third party to cancel already-granted GIs.
The United States and China agree to protect original recordings of the images, or sound and images, of live events, including sports broadcasts, against acts of unauthorized exploitation, including the unauthorized retransmission of such broadcasts over computer networks, in accordance with their respective laws and regulations. The United States and China agree to discuss copyright protection for sports broadcasts and further cooperate on this issue in the JCCT IPR Working Group and other appropriate bilateral fora.
References: Copyright protection for sports broadcasting has been discussed elsewhere in this blog, and is of increasing important to China as it prepares to host the Winter Olympics and wants to develop its sports leagues. In addition US courts have granted copyright protection to Chinese sports broadcasts in a recent case. Tencent has also signed an important licensing deal with the NBA to make content available online.
Enhanced Enforcement Against Media Boxes and Unauthorized Content Providers
Noting the challenges posed by new technologies to the protection of copyright, China and the United States will continue discussions and share respective experiences and practices on combating the unauthorized online distribution of audiovisual content made possible by media boxes. China clarifies it is to enhance enforcement against such media boxes and the providers of unauthorized content in accordance with its laws and regulations.
Reference: A recent US media box case involving Chinese content is discussed here.
In order to address the civil, administrative and criminal enforcement challenges caused by the rapid development of e-commerce, as part of the JCCT IPR Working Group, China and the United States will enhance engagement and exchanges between U.S. and Chinese government IPR policy and enforcement officials, IP right holders, business representatives and online sales-platform operators, among other relevant stakeholders. This engagement will cover current and anticipated challenges in protecting and enforcing IPR online by sharing respective practices, discussing possible improvements in each country’s systems, facilitating information exchange and training between our two countries, and increasing cooperation on cross-border enforcement. The goal of this effort is to enhance existing legal and cooperative regimes among businesses, rights holders and governments in civil, administrative and criminal online IPR enforcement. Appropriate criminal matters will be referred, if necessary, to law enforcement agencies through the Joint Liaison Group (JLG) IP Criminal Enforcement Working Group or domestic law enforcement officials.
COOPERATIVE DIALOGUES AND EXCHANGES
Searchable Database for Intellectual Property (IP) Cases
The United States welcomes that the Supreme People’s Court has established a database for searching intellectual property-related court decisions. In order to increase the understanding of each other’s legal systems, the United States and China agree to dialogue and to share experiences on their respective databases containing IP cases.
References: Whether or not China is developing “case law with Chinese characteristics,” understanding how Chinese courts handle cases can help guide sound business decisions.
Bad Faith Trademark Filings
Given the importance of addressing bad faith trademark filings, both sides agree to continue to prioritize the issue of bad faith trademark filings, and to strengthen communication and exchange on this issue through existing channels.
References: This is a continuation of earlier efforts.
The United States and China are to continue exchanges on the development of their respective copyright laws. China clarifies that its Copyright Law is in the process of amendment and useful principles and interpretative guidance from the Supreme People Court’s 2012 Judicial Interpretation on Internet Intermediary Liability will be considered in the law, if appropriate and feasible.
Exchange on Intellectual Property Rights Legislation
Recognizing the success and experience of recent exchanges on IP legislation through the JCCT IPR Working Group, programs under the Cooperation Framework Agreement and other fora, as well as the desire of the United States and China to further understand recent developments in this area, the United States and China agree to exchange views on their legislative developments in IP and innovation including on pending reforms in copyright law, patent law, trade secret law (anti-unfair competition law), science and technology achievement law, etc., with relevant legislative bodies.
References: This is a broad commitment, with much legislative activity planned in China in areas such as trade secrets, copyright, patents and related regulations.
Protection of New Plant Varieties
The United States and China agree to hold exchanges on the protection of new plant varieties through bilateral meetings and other means to be determined.
References: China and Switzerland agreed to extend plant variety protections in the Swiss-China FTA.
Here are the outcomes involving IP fromon the Chinese side, from the MofCOM website(http://www.mofcom.gov.cn/article/i/jyjl/l/201512/20151201200026.shtml). I have translated the title of the outcome only.
“特别301”报告 SPECIAL 301 REPORT
恶名市场 NOTORIOUS MARKETS
知识产权有效和平衡保护 EFFECTIVE AND BALANCED IP PROTECTION
知识产权合作 IP COOPERATION
加强在打击网络盗版方面的合作 STRENGTHENED COOPERATION IN DEALING WITH ONLINE PIRACY
通过中美双边合作加强知识产权在企业中的利用和保护 USING BILATERAL COOPERATION TO STRENGTHEN IP UTILIZATION AND PROTECTION IN ENTERPRISES
深化和加强中美知识产权刑事执法合作 DEEPENING CRIMINAL ENFORCEMENT COOPERATION IN IP
中美共同打击网络销售假药 JOINT SINO-US COMBATTING OF ONLINE COUNTERFEIT MEDICINE SALES
Updated: December 2 and 3, 2015
Four sections of the American Bar Association, including the Sections of Antitrust Law, Intellectual Property Law, Science & Technology Law, and International Law submitted comments on the Draft Template for Intellectual Property Rights (IPR) Policies in Industry Standards Organizations (Draft Template) issued by the Electronic Intellectual Property Center (EIPC) of China’s Ministry of Industry and Information Technology (MIIT). The comments represent the view of the Sections and may not represent the view of the ABA as a whole.
While these comments commend EIPC for its efforts to offer a template for standard development organization (SDO) IPR rules, the Sections “respectfully recommend against issuance of a single template to serve for all SDOs and circumstances, particularly on highly disputed issues that are best left to individual SDOs and their members to decide. There are many complexities involved in SDO IPR rules, different views and interests involved, and many different approaches that a particular SDO might validly choose to take. In addition, and importantly, because several issues addressed by the Draft Template remain under active debate among policy makers, SDOs, and market participants in several jurisdictions around the world, there is a substantial risk of conflict that could deter innovation and the efficient operation and success of SDOs in China, undermining EIPC’s stated objective.” The Sections also raise concerns that this policy, by itself, may “unduly influence” standards setting organizations, as it would be promulgated by an institution sponsored by a government agency, namely the EIPC – highlighting the sometimes difficult situation faced by Chinese Government-Organized NGO’s.
This draft Template has been the subject of some controversy. I have been advised by an official at MIIT that this Template should not be construed as an MIIT policy.
Nearly every week there is a new development somewhere in the world on IP and standards. China has been no exception. I already blogged about several of them of them, including EIPC MIIT’s recent program in Beijing, EIPC MIIT’s Template for IP Policies in Industry Standards Organizations,. and most recently the JCCT in Chicago. The JCCT covered many standards-related issues, including licensing, antimonopoly law, and judicial practices in IP. The fact sheet for the JCCT described the specific bilateral commitment on standards and IPR as follows:
China and the United States recognize that standards setting can promote innovation, competition and consumer welfare. They also reaffirm that IPR protection and enforcement is critical to promote innovation, including when companies voluntarily agree to incorporate patents protecting technologies into a standard. Both sides recognize that specific concerns may exist relating to the licensing of standard essential patents that are subject to licensing agreements. China and the United States commit to continue engaging in discussion of these issues.
We might expect continuing interest by MofCOM on these important topics of standards and IP, as Dr. ZHANG Xiangchen, who currently serves as Assistant Minister and principal negotiating partner on the JCCT with DOC and USTR, also played an active role in the debates over standards and IP when he was Director General in charge of WTO affairs in Geneva. Those debates date back to at least as early as 2005, when China proposed that the WTO TBT Committee look at the issues posed by IP in standardization.
What else is new?
On December 15, the Information Technology and Innovation Foundation released a report: The Middle Kingdom Galapagos Island Syndrome: The Cul-De-Sac of Chinese Technology Standards, by Stephen J. Ezell and Robert D. Atkinson. This document is the latest in several reports over the years that have highlighted China’s “techno-nationalist” approach to standards and IP. The central thesis of this report is that China’s focus on the development of indigenous technology standards, particularly for ICT products, risks engendering a “Galapagos Island” effect, isolating its ICT technologies and markets from global norms and creating a recipe for failure. Taking a page from similar Japanese efforts and recent Chinese failures in the ICT sector (p. 15), the report argues that even the size of China’s domestic market by itself will not achieve the economies of global scale that are necessary to survive in today’s integrated global ICT economy. This report also identifies the important linkage of these policies with China’s IP plans. As the report notes, “a core component of China’s strategy is to remove or change key portions of international standards for the purpose of creating China-unique standards. Why does China do this? … The answer in many cases is that China is essentially trying to strip others intellectual property from these standards in order to avoid paying royalties.” (p. 14).
Meanwhile on December 15, China’s Caixin published a revealing article on the waste incurred by these “galapagos standards.” The article, “China Mobile’s Dead End on the 3G Highway,” describes a wasted effort involving about 2 billion RMB to develop TD-SCDMA.
In the continuing SEP litigation wars, China’s Xiaomi in December was reportedly banned from selling its smart phones in India after a court issued an injunction in favor of Ericcson by reason of Xiaomi’s unwillingness to take a license for Ericsson’s standards essential patents. Ericcson’s spokesperson described this as a classic patent hold out situation:
“It is unfair for Xiaomi to benefit from our substantial R&D investment without paying a reasonable licensee fee for our technology. After more than 3 years of attempts to engage in a licensing conversation in good faith, for products compliant with the GSM, EDGE, and UMTS/WCDMA standards Xiaomi continues to refuse to respond in any way regarding a fair license to Ericsson’s intellectual property on fair, reasonable and non-discriminatory (FRAND) terms. Ericsson, as a last resort, had to take legal action”
Of course there are also other battles brewing. Most notably, NDRC’s investigation of Qualcomm, according to various press reports, appears to be continuing.
It will certainly be a busy 2015 in this important area.
Update: For an update on Xiaomi’s patent portfolio in 2016, see this article from December 9, 2016 in IP Analytics.
EIPC MIIT’s Conference on Intellectual Property Standards and Anti-Monopoly Law convened on December 10 and 11 in Beijing. The conference brought together about 150 international and Chinese experts, including lawyers, judges, academics, diplomats, and other professionals to the Wanshou Hotel in the Haidian District, Beijing. There were over over 30 speakers. The initial speakers set the tone for the conference by concentrating on one theme: China’s anti-monopoly regime had entered a new phase from theory to enforcement. Further, this transition period is characterized by the need to balance anti-monopoly law and IP rights, regulation and innovation.
One example of the struggle for balance is the debate over the prevalence and importance of holdouts, or the practice of standards implementers engaging in conduct intended to drive royalties down royalties for Standards Essential Patent (SEP) holders to lower than F/RAND levels. Dina Kallay, Director of Intellectual Property and Competition at Ericsson Ltd. argued the problem of hold outs was real. David Wang, Director of Standards and IPR Strategy, Intellectual Property Rights Department of Huawei Technologies Co., argued that that there is no evidence of real life hold outs. His opinion comes in light of Huawei’s recent litigation with IDC, in which a court ruled that IDC should compensate Huawei for excessive pricing and tying practices.
Many speakers addressed current and future reforms. Yang Jie, Director of the Anti-Monopoly and Anti-Unfair Competition Enforcement Bureau at SAIC, explained new revisions to its forthcoming rules on abuse of dominance and exclusionary relief (presumably, SAIC’s IP Abuse guidelines or rules). Since August, SAIC has modified seven articles. First, Yang Jie said that SAIC has maintained the “essential facilities” doctrine in the new version, however with some modifications. The doctrine will apply when an intellectual property right cannot be easily substituted in the relevant market, other players want to be part of the market, a refusal to deal would restrict competition or innovation in the relevant market, it harms the public interest, and the licensing of the patent would not negatively or unreasonably harm the interests of the patentee.
Yang Jie also explained that SAIC has adopted a narrow interpretation of refusal to deal for players in a dominant position. It will only apply when the intellectual property right constitutes an essential element for production. Moreover, a violation only occurs when the behavior limits competition. Additionally, in abuse of dominance, “abuse” must be considered parallel to other elements and the behavior must harm the public interest or consumer behavior.
Concerning guidelines for the standard setting process, Yang Jie explained that the rules do not include a special provision for horizontal agreements in the standard setting process, because this is covered under the provision for anti-monopoly agreements. Furthermore, Yang Jie divided monopolistic behavior in the standard setting into standard setting procedures – for instance if a firm fails to say something in a patent application – and standard implementation, which would include violations of F/RAND commitments. Yang Jie said that the standards clarify the “what should have been known” standard for the standard setting process. For standard implementation, the guidelines add the requirement of restricting or limiting competition. Additionally, the new guidelines will treat intellectual property rights the same as other property rights. In other words, SEP holders are not automatically deemed to have market dominant positions. Instead, a case specific analysis must show that a firm is “dominant” within the meaning of relevant provisions of the Anitmonopoly Law.
Lastly, the guidelines no longer include a specific provision targeting copyright collecting societies for abuse of dominance or restricting competition. Yang Jie explained that the provision was cut because there was no real evidence of copyright organizations abusing their position. That being said, enforcement agencies can still pursue copyright organizations as they are not otherwise exempt from the law.
Yang Jie also said that the official version has not yet been promulgated. The regulations have been submitted to relevant bodies within the State Council for review (note from Mark Cohen: it is unclear to me if this is registration with the State Council, or review by the Antimonpoly Enforcement Agencies, or another process. If this document is an SAIC rule, then review by the State Council should be limited).
Zhang Yonghua, Deputy Director of No. 1 Division of the Legal Affairs Department of the State Intellectual Property Office of China (SIPO), provided details regarding the latest draft of the proposed patent law amendments. The new draft empowers judicial and administrative bodies with the right of investigation and evidence collection. It also allows administrative agencies to effectively settle infringement issues by compensation. Furthermore, the draft provides for punitive damages for severe infringements, a concept already employed in China’s trademark law. Additionally, protection for industrial design is extended to 15 years. The new draft also introduces a burden of proof shifting scheme in which the burden of proof shifts once the patentee has satisfied certain of its evidentiary burdens.
Zheng Wen, Deputy Director General of the Anti-Monopoly Bureau, focused on the need for improvement in the merger review process of MofCOM. Zheng Wen said that MOFCOM had received over 1000 cases since August 2008 and had finished over 900, imposing sanctions in only 3% of the cases. Zheng suggested that there was a need to impose more sanctions and to crack down on parties that illegally skipped merger review. Since November, MOFCOM has been publishing notices of sanctions on parties that did not report their proposed merger but should have. Zheng Wen also expressed the desire to set up a long term cooperation mechanism with the E.U. and U.S., especially for large scale transnational mergers.
Huang Yong, Vice Chair of the Expert Advisory Committee under the State Council Anti-Monopoly Commission, stated that allowing agencies the rights of investigation and suggestion would be a step in the right direction.
Concerning the new Specialized IP Courts, Jin Kesheng, Deputy Chief Judge of the IPR Tribunal and senior Judge of the Supreme Court said that we could look forward to a judicial interpretation regarding the role of the court’s “technology investigator” position. Additionally, Zhang Xiaojin, Chief Judge of the Second Tribunal in the Beijing Intellectual Property Court, expressed serious concern over the new court’s ability to handle their large caseload. For instance, the Beijing specialized IP court has 100 staff in total, only 22 of whom are judges and the court is expected to receive 15,000 cases annually. He expressed further concern over their ability to carry out judicial reform while so severely understaffed.
Finally, Shi Shaohua of EIPC MIIT spoke about feedback to EIPC MIIT’s own Template for IP Policies in Industry Standards Organizations, (which I previously wrote about here). Two criticisms were that the structure was too complicated and that courts do not have sufficient expertise to adjudicate F/RAND issues; injunctions and unwilling licensors; and reference factors for unreasonable licensing, including factors such as the smallest component or device, the total aggregate royalties of all potential SEPs, the influence of standards on patents, and the extra value that standards bring to a patent. EIPC MIIT also received comments concerning reciprocity requirements, for instance what standard should be employed and whether adding restrictions to SEP licensing will influence cross-licensing, market access, and reciprocity.
The conference also included presentations on Legal Issues of Competition in Internet Industry” and “Internet Based Information Security and Intellectual Property Protection” which unfortunately we were not able to cover.
Prepared by Marc Epstein of Fordham Law School with edits by Mark Cohen. A special thanks to EIPC MIIT and Shi Shaohua for allowing a Fordham student to attend this important conference! Please provide us with any corrections, additions or comments! As always, these comments are the authors’ own.