I will be joining the Silicon Valley roadshow.
I hope to see you there!
Thermo Fisher Scientific, a Fortune 500 company, is seeking a APAC IP counsel to be based in Singapore. The position involves such tasks as developing IP strategies in the Asia Pacific Region, proactively developing IP opportunities from R&D in Singapore and China, as well as anti-counterfeiting activities and trade secret protection.
Appropriate bar admission/patent office admission (China or US), background in the sciences, minimum 10 years prior experience and proficiency in Chinese and English are required.
Here’s a link to the posting.
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.
Three IP-related laws and policies have been released for public comment in the past week, at two different stages in the legislative process.
The first and perhaps most significant is the revisions to the Law Against Unfair Competition (AUCL), now at its second reading in the National People’s Congress. The announcement is found here, and this is a Weixin posting from Lexis of the actual changes, while the full explanation is on the NPC website. As translations or comments become available, please send them to me for posting.
The AUCL is an important law for a variety of IP-related areas, including trade secret protection, but also trade dress. Comments are due by September 24. The draft adds statutory damages to the list of remedies for violation of the law, but at the same time removes a provision from the earlier draft clarifying that employees are subjects of the law, notwithstanding that the focus of the law is on undertakings (经营者). However, the NPC reports that at the same time it clarifies the circumstances where an enterprise benefits from misappropriated information. “删除修订草案第十条的规定；同时，在第九条中进一步明确：第三人明知或者应知商业秘密是权利人的员工、前员工或者其他单位、个人通过非法手段取得，仍获取、披露、使用或者允许他人使用的，视为侵犯商业秘密。(修订草案二次审议稿第九条第二款) . Here is a link to information regarding the earlier public draft.
The second important law is the Standardization Law, also in its second reading at the NPC. The announcement is found here, and the text is found here. Comments are also due by September 24. One potentially problematic provision involves providing support for standardization to indigenous innovated technologies for important national industries, strategic and emerging industries, and key public interest technologies.( 增加一条规定：国家支持在重要行业、战略性新兴产业、关键共性技术等领域利用自主创新技术制定团体标准、企业标准.)
Finally, the China Food and Drug Administration has released its proposed draft “Orange Book” (《中国上市药品目录集》（征求意见稿） which may implement a patent linkage scheme (see excerpt above which requires reporting of relevant patents and regulatory data). A proposed linkage system was announced by CFDA on May 12, 2017 in Notice 55, about which I previously blogged. The draft is available through this link. Comments are due by September 15.
Prof. Gaétan de Rassenfosse and Dr. Emilio Raiteri (both at EPFL, the Swiss Federal Institute of Technology in Lausanne, Switzerland) have recently offered interesting statistical evidence for preferential treatment of domestic applicants and a potential issue with national treatment in patent applications in China. Their work shows that inventions by foreign firms were less likely to be granted patent protection, after adjusting for a range of other factors. However, their study of more than half a million patent applications reveals that only applications in “strategic” technology areas faced negative discrimination. More precisely, the probability that strategic patent applications by foreign firms will be granted is 5 to 15 percentage points lower than expected in the absence of discrimination.
Strategic technologies were identified using the ‘‘National Medium and Long-Term Program for Science and Technology Development 2006–2020’’ (citation to plan or to my blog) (“MLP”). The MLP, issued by the State Council, seeks to make China an innovation-driven nation by fostering indigenous innovation in selected technologies, including telecommunications, biotechnology and energy. Regarding telecommunications, the authors (with the co-authorship of Rudi Bekker of the Netherlands) find in another article that discrimination against foreigners was particularly strong among standard essential patents, an issue that was recently discussed by Professor de Rassenfosse in a recent webinar.
For background, one useful comparison of the MLP with other macro innovation/industrial policies has been prepared by Prof. Scott Kennedy.
There has been many complaints related to unfair treatment of foreign rights holders in the judicial system, and there has been some recent scholarship and support in analyses of newly launched databases, that suggests that China made significant progress in the area. Some of the sociological studies suggest that larger companies in China (as elsewhere), however, generally fare better in court.
The current paper focuses on consideration of disparate treatment and its causes in the patent system. However, the reason(s) for the effect are unclear and the authors are cautious not to infer that discrimination is intentional. They have ruled out a large number of possible explanations (such as differences in patent quality or in the quality of the translation into Chinese), but they suggest more work is needed to fully understand the source of anti-foreign outcomes for applicants.
The authors are not alone in looking at differential treatment by national patent offices. Using data on about 50,000 patent applications granted by the USPTO and filed in the years 1990–1995 at the EPO and the JPO, Prof. Elizabeth Webster and colleagues (then at the University of Melbourne, Australia) had found that domestic applicants were more likely than foreign applicants to be granted patent protection, after certain normalizing adjustments. The authors in another paper noted that despite the efforts then subsisting of the trilateral offices (and other supporting efforts under the umbrella of patent harmonization), there is significant disharmony in the patent application outcomes across the trilateral patent offices. For instance, the overall rejection rate for patent applications which have been granted by the USPTO was 25 per cent for the JPO and 5 per cent for the EPO. Webster and her co-authors note that there are numerous reasons why patent application outcome may vary with priority country status. In light of recent changes in US practice due to Supreme Court decisions, one may also wonder whether differences in examination in certain areas, such as software-enabled inventions and biotechnology can also skew results in favor or local companies who have more up to the date information, are focused on the domestic market and may even have attracted capital upon the expectation of a local patent grant.
The papers on Chinese patent applications however are notable in that they (a) utilized a larger cohort of patent applications, (b) made comparisons in treatment by one office (SIPO) and (c) analyzed such treatment in light of articulated national industrial policies, and in comparison to treatment where no such national industrial policy is implicated. The papers may suggest that political pressure, when it exists in China, may be more likely where there are clear national interests at stake rather in any matter in which a foreigner is involved. Indeed, litigation data suggests that foreigners do well in Chinese courts; there is limited research on litigation outcomes when the subject is a matter of an articulated national industrial policy, such as these studies might suggest.
Written by Gaetan de Rasenfosse, edited by Mark Cohen.
The views expressed herein are the author’s own.
Here are some upcoming programs that involve China in North American in October:
October 11-12, 2017, I will be speaking on a China IP Panel at the ABA IP West conference in Long Beach, California. The panel will focus on China’s recent (paradoxical) emergence in IP protection and enforcement. Mike Mangelson, China IP Attaché in Shanghai will also be speaking at a session focused on the China IP Attaché program at this ABA program.
On October 14, 2017, I will be moderating a session on new trends in Chinese IP litigation, courts and enforcement at the Sixth Annual IP Summit hosted by Loyola University of Los Angeles.
On October 18, 2017, the University of Indiana/USPTO will be hosting a China “Road Show” in Indianapolis.
On October 20, 2017, the John Marshall Law School will be hosting a China “Road Show” with USPTO in Chicago.
On October 26, 2018, I am scheduled to be commenting (as an academic) at the Fordham IP Institute on a presentation by Dr. David Cole of the Hagley Museum and Library on “A Nation of Inventors: The Politics of American Patent Models“. The Hagley Museum is planning an exhibit in China of its patent models in 2018.
Apart from these events, there are also China IP road shows scheduled for Salt Lake City and Denver in October. Watch the USPTO website for more information on these and other programs.
An addenda to October offerings, per its Federal Register Notice, on October 10, 2017, USTR will be hosting a hearing on the Section 301 investigation involving China’s Technology Transfer, Intellectual Property and Innovation – Related Rractices.
USTR has posted the position of Assistant U.S. Trade Representative for China on the federal jobs website. The position closes August 4, 2017. Among the qualifications:
1. Demonstrated knowledge and experience in trade issues with China, including a thorough understanding of the U.S. Government’s policies and programs regarding trade relations with China.
2. Comprehensive knowledge and understanding of domestic and international laws, rules and/or regulations as they relate to and affect trade policy in the Asia-Pacific region; and
3. Experience working on Congressional staff on international trade matters is preferred, but not mandatory. Demonstrated fluency in the Mandarin Chinese language strongly desirable, but not mandatory
There are also two other policy analyst positions announced with closing dates of August 3. Technical areas of expertise that are under consideration for the positions include China Affairs and Innovation & Intellectual Property.