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.
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.
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.
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.
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:
- 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.
- 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.
- 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)
- 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 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.
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