Fact and Fiction in the US-China IP Trade War

The Asia Society of Northern California is sponsoring a free webinar October 8 from 5-6:30 PM PST on “Fact and Fiction in the US-China IP Trade War” as part of its “Seek Truth from Facts” series on US-China relations.  The registration link is here.

I will be joined by some great thought leaders, including: Sharon Barner, General Counsel of Cummins and former Deputy Director of the USPTO; former Chief Judge Randall Rader of the Court of Appeals for the Federal Circuit; Jim Mendenhall, former Deputy US Trade Representative; and He Jing. a partner of the GEN law firm.

Past events on IP have brought a diverse and spirited audience reflecting West Coast perspectives. These programs also got many “hits” on the subsequent recordings. Please join us live and raise your questions as we discuss such tough issues as: whether foreigners win in the Chinese courts, was the Phase 1 Agreement on IP a “good deal”,  and how the US and China can make things better. 

The time zone is perfect for friends in East Asia to join. I am looking forward to your participation!

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.

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。

 前款所称的反向工程,是指通过技术手段对从公开渠道取得的产品进行拆卸、测绘、分析等而获得该产品的有关技术信息。

被诉侵权人以不正当手段获取权利人的商业秘密后,又以反向工程为由主张未侵犯商业秘密的,人民法院不予支持.”

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.