Guangzhou IP Attache Position Opens

The US Department of Commerce has an opening for the IP Attaché in Guangzhou. Application for the position closes September 29, 2017.   Requirements include knowledge of intellectual property, a law degree, US bar admission and US citizenship.  The announcement does not indicate that knowledge of Mandarin or Cantonese languages is required, although it does require experience of working with foreign IP laws.    Please see the announcement for further information.

Upcoming USPTO China Road Shows in Detroit and Grand Rapids

USPTO will be conducting two more of its China Road Shows July 10 and 12, 2017 in Detroit and Grand Rapids, Michigan.  Invited VIP guests in Detroit include the Mayor of Detroit and Rep. Conyers, who are joined by many experience national and local practitioners, academics and officials.  Details are available here.  Detroit is currently sold out, but may reopen if additional seating is obtained.  Grand Rapids remains available according to the PTO website.

Upcoming China IP Program with the Boston Bar

The U.S. Patent and Trademark Office, Boston Bar Association and the U.S. Commercial Service for Massachusetts are bringing together thought leaders and policy makers on China IP issues from U.S. Government, academics to discuss China IP issues on April 18, 2017.  Here is the flyer of the Boston Bar China IP Program.

The Boston event is part of the U.S. PTO China team’s nationwide efforts to help U.S. businesses and inventors understand how they can obtain and enforce IP rights in China. Registration including breakfast and lunch is $25.00. The program lasts from 8 AM to 1 PM, and there are optional consultations with industry at the Commerce Department’s offices in Boston immediately following the program.  Prof. Mark Wu of Harvard Law School is the keynote speaker.

The next programs in this series will be in Dallas and Houston.

Stay tuned…

 

USPTO EXTERN POSITION OPEN

USPTO has posted a position for an unpaid extern in Chinese intellectual property matters commencing June 6, 2017. The position requires the following skills:

– Knowledge of Chinese language

– Knowledge of Intellectual Property (IP)

– Ability to research US and Chinese cases

– Ability to use Excel and PowerPoint

– Skill in preparing instructional material

The extern will assist staff of the USPTO’s China Team by researching intellectual property issues in China and assisting with organizing meetings and programs. Some instruction on Chinese IP databases may be provided.

Chinese IP: the Graduating Class of Officials

There have been several Chinese officials with authority over IP over the past few years who have been promoted. In December, the Ministry of Commerce recently reported that DG Li Chengang was promoted to Assistant Minister in December 2016, with authority over law and treaties (which includes trade-related IP).  His predecessor, Assistant Minister Tong Dao-chi, was also promoted and now serves as Vice Governor of Hubei as of December 2016. Across the straits, in July 2016, Madame Wang Mei-hua, who was formerly in charge of TIPO was promoted to Vice Minister of Economic Affairs.

The most prominent of the Chinese officials with deep IP experience who saw their career advance due to IP involvement in recent years is Madame Tao Kaiyuan the former DG in charge of Guangdong’s IP Department, who has served as one of the justices on China’s Supreme People’s Court since 2013, and has been a key advocate for judicial reforms and promoting rule of law.  Several other Chinese IP judges have also seen promotions in the recent years (Madame Tao and several current and former IP judges are pictured below).  Another official with deep IP experience,  Chen Fuli of MofCOM also was promoted from his former position as IP Attaché in Washington, DC and Director at MofCOM, where he oversaw IP engagement with the United States to his current position of Deputy Director General.

Also of note, former Chief Judge Randall Rader is reported to be under consideration to become the next Director of the USPTO under the incoming Trump Administration. Rader has noted that “Yes, several senators have sent my name to the Trump team for the position of director of the USPTO,” and that “The best way to protect U.S. jobs is to protect worldwide the IP that creates and guarantees those jobs.” China has also been quick to recognize Judge Rader’s accomplishments.n December 2016, he was awarded an Honorary Professorship by the President of Tsinghua University.

The current situation for Chinese IP officials contrasts with the experience of only a few years ago when it appeared that many Chinese IP agencies and officials were riding China’s new Antimonopoly Law, and not IP, to advance their agencies or careers. Officials such as DG Shang Ming moved from law and treaties in MofCOM to antitrust. At that time, China’s IP courts also picked up civil antitrust jurisdiction and the unfair competition bureau of SAIC also picked up antitrust authority.During those years, several officials also privately complained to me that their career advancement had been stymied by focusing too much on IP issues or engagement with foreigners. Some may also have seen former Vice Premier Wu Yi’s retirement in 2008 as tied to the filing of a WTO on IPR against China, which she appeared to take as a personal loss and that he had promised to fight vigorously against

As far as I know, the most dramatic and unusual employment engagement of an IP-knowledgeable official was made by another ardent IP supporter, Abraham Lincoln, when he appointed Edwin Stanton as Secretary of War due, in part, to his experience of working with him on a patent litigation when Lincoln was a private lawyer.

When officials who believe in IP are promoted to positions of higher authority it is a good sign of political support for protecting IP. This is true of both the United States and China.

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USPTO and Renmin University Copyright Protection Program Highlights Importance of Copyright Reform for China

revenuestreams

Last July 20, 2016,USPTO and Renimin University jointly hosted a program at Renmin University on Copyright Developments in China and the United States.  The program was covered by some of the specialty media.  Here’s a brief summary regarding some of the four key developments in China that I abstracted from the speakers at the conference:

  1. Building upon some of the path breaking work of Eric Priest and others, there appeared to be near unanimity amongst the speakers and audience of the importance of revenue diversity for China’s creative industries to thrive.  Amongst the areas highlighted, were the importance of public performance rights, of licensing for digitalization of content, of small claims procedures for copyright owners, the utility of collective management in certain contexts, and the importance of providing copyright protection for sports broadcasting (as opposed to using neighboring rights or antiunfair competition law).  The current copyright licensing environment in China uniquely supports one exclusive license, but even that revenue source is vulnerable to non-renewal if piracy erodes the value of buying legitimate content and may therefor not be sustainable in the face of “piratical” or free competition.  Musicians, as an example, are heavily dependent on public performances and secondary sources of revenue, such as DVD/CD/ streaming sales are thin.  Revenue diversity can also included non-copyright revenue streams, such as trademark rights, and perhaps merchandising rights.  Efforts have also been underway to increase pledging of copyrighted content, which can help with financing of copyrighted content.
  2. Many of the Chinese speakers spoke about increasingly creative enforcement approaches, such as the Sword Network Campaign,  enhanced administrative supervision over platforms (16 video sites/20 music sites/20 literary sites) and punitive damages.  Although they are still a minority of criminal IP cases, there is an increasing number of  criminal referrals from administrative cases (from 2005 to 2015, more than 450 cases were referred to criminal prosecution).  Article 287 of the newly amended Criminal Law, which provides for criminal liability by reason of providing computer services was noted as a potential area for expanded criminal copyright liability.
  3. Technology and globalization were making enforcement increasingly more difficult, while at the same opening up possibilities for more efficient enforcement techniques.  Audiovisual use of the internet was one of the most popular reasons in China to be online (73.2% of netizens view AV products in China). Music is a close second (72.8%), while literature was only 43.1%.     Copyright protections which did not extend to interactive (online) environments, were increasingly undercutting revenue streams.  China’s reservation under article 15(1) of the WIPO Performance and Phonograms Treaty was noted (“(1) Performers and producers of phonograms shall enjoy the right to a single equitable remuneration for the direct or indirect use of phonograms published for commercial purposes for broadcasting or for any communication to the public.”).  The increasing complexity of the copyright environment, including the environment for licensing was highlighted as a theme in both the United States and China.   Media box piracy was identified as a problem (see 湖南快乐阳光vs 清华同方).  A case involving use of parasitic software to modify the original code was noted, under the Antiunfair competition law ( 鹏讯 [深圳] v 上海虹连网络)
  4. Regarding enforcement, the efforts of the courts to develop precedential or guiding cases to resolve complicated emerging issues was also underscored, particularly due to the extensive delays in passing copyright law reform, which has now been ongoing for several years.  There were over 70 research topics underway as part of the copyright law reform.  There needs to be increased scope of protection of copyright and improved mechanisms for enforcement.  Some of the difficulties in providing copyright protection to certain areas were traced back to the original training program in 1985 in Nanjing on copyright law, which was provided by European experts, and introduced European concepts and models, such as neighboring rights.    Changes in substantive law and judicial practice, such as providing for treble damages,  sampling of allegedly infringing content, establishing a requisite standard for “originality” vs a non-original product (see 北京乐东 vs 北京昆仑 concerning copyright in entertainment software characters) idea vs. expression in variety shows (See Beijing High Court’s: 关于审理涉及综艺节目著作权纠纷案件若干问题的解答), harmonization with other laws (such as the Antiunfair Compeittion Law),  how much copying constituted infringement, discovery of source code to verify infringement of software products, and specialized IP courts/three-in-one (administrative/civil/criminal) tribunals were all noted.  In addition, an expanded scope for audiovisual works, or lowering of the creativity required for cinematographic works were noted as possible approaches to providing protection for sports broadcasts.   Rights holders were also selecting overseas venues for litigation where rights were sometimes better protected.

In general, the speakers agreed that China needs copyright reform for its own needs, and that this reform was not due to outside pressure. In addition, there are increasing opportunities for collaboration between the United States and China on the creation and distribution of copyrighted content, which appear to be mirroring increased collaboration in science and technology.  Ultimately, China needs improved copyright protection and enforcement in light of its own desires to increase its soft power, and support its creative industries.

The Xmas Phone Call of ’06 And What It Meant to IP Cooperation

ID5The recent, successful launch of the ID5 (the Industrial Design 5) at the USPTO (picture above), with the participation of  OHIM (Office for Harmonization in the Internal Market of the EU), JPO, KIPO and USPTO underscores, yet again, the role of cooperative dynamics in IP reform.  While historically academics and officials had argued that IP reform in countries like China depended on either indigenous pressure (becoming a “stakeholder” in the IP system) or exogenous pressure (301, threats of trade retaliation or ‘linkage diplomacy’ as part of WTO accession or other trade agreements), another form of engagement is that conducted by and among IP offices.

I was fortunate to have played a small role in the evolution of this third dynamic.  On December 24, 2006, while on vacation in Los Angeles, I received a phone call from then USPTO Director Jon Dudas requesting that I call up SIPO’s Commissioner Tian Lipu to explore the possibility of developing an expanded “trilateral” of patent offices (EPO, JPO and USPTO) to include SIPO and KIPO.  On Christmas eve, I placed a phone call to the then Director General of SIPO for International Cooperation, Lv Guoliang 吕国良, extending an invitation for Commissioner Tian and Director Dudas to have a phone call together to see if SIPO might be interested in joining an expanded group, now called the IP5. From that original effort also came the inspiration for grew the TM5 [Trademark Five], and this past week, the ID5.

It is difficult to estimate the importance of these relationships, as they typically involve more technical issues of office operations, with the involvement of trade associations that are focused on the operations of these offices.   However, cooperation amongst the five largest offices also represents the vast majority of patent, trademark or design filings globally, and are also responsible for much of the activity in each of the five offices own dockets, as well as through such mechanisms as the Patent Cooperation Treaty, Madrid Protocol or Hague system for industrial designs.

One way of understanding its importance to China of these mechanisms evolved in response to that Xmas phone call.  In the spring of 2007, the United States took certain public steps towards filing of a WTO case against China.  The three claims that were ultimately filed involved copyright piracy and trademark infringement.  At that time, I was serving as IP attaché in Beijing.  Former Vice Premier Wu Yi told a large audience during IP Week in April 2007 in Beijing that China would “fight the US to the bitter end”.  I was at the conference as was then Ambassador Clark T. Randt, III.  The US Trade Representative, Susan Schwab, was quick to respond that filing of a WTO complaint was not a hostile act.   China had tried to avert the filing of a case by lowering criminal thresholds for IP criminal enforcement earlier in April, but apparently this had been deemed to be too little, too late.  China still warned of “severe damage” to bilateral trade relations and a suspension of some forms of cooperation between the US and China.

Despite threats and retaliation, the IP5 meeting planned for Honolulu, Hawaii in May of 2007 went on as  scheduled.   Since that time in fact, the IP5 has flourished, and has been joined by the TM5, and now the ID5.

What kinds of strategy works best to advance IP reform?  Taking the WTO case as an example, some have argued that the WTO case was a failure for the US  at the time, while others (including some Chinese scholars) have argued differently.  The rapid rise in criminal enforcement in China for IP infringements suggests that even if one accepts the premise that the US did not succeed in having China amend its law, it did draw attention to an important enforcement mechanism that had been underutilized in China, and now has grown to about 13,000 cases per year.    In a sense, the case accomplished its goal of increasing criminal enforcement in appropriate circumstances and in retrospect should be seen as a success for both sides.

Another way of looking at progress is to see what China was interested in advancing despite the WTO case.  Did the IP5 go forward in 2007 because the WTO case did not significantly involve patents, an area which I had considered “orphaned” trade discussions until relatively recently? Did the case demonstrate China’s abiding increase in continuing to engage in patents, an area which it deemed vital for its goals of developing an innovative economy?  Was the success of the IP5 due in part to the close relationship that existed between Jon Dudas and Tian Lipu? Or do these mechanisms succeed because their goals are invariably more technical, practical and obviously win-win?  Clearly, these big office cooperation mechanisms have their advantages, both in promoting practical steps towards improving services for the clients the offices serve, but also in developing trust amongst their leadership.  As USPO Director Michelle Lee noted in the recent launch of the ID5 “as only the five largest industrial design offices can, we must come together collectively to strategically develop tools, practices, and office efficiencies. These agreements will promote the further development of user-friendly, consistent, and interoperable industrial design protection systems. It through this approach that the ID5 will become the success we are all here to ensure.”

Bon voyage, ID5 – a continuing journey that I like to think began on Christmas Eve, 2006.