Draft Service Invention Regulations Out For Public Comment

On April 2, 2015, the State Council Legislative Affairs Office (“SCLAO”) published a draft of the Service Invention Regulations along with an accompanying explanation.  The draft was prepared with the assistance of SIPO and the Ministry of Science and Technology.   Comments are due by May 2, 2015.

Here is a quick translation of what the explanation says about the “hot issue” of the balance between contracting autonomy and providing mandatory minimum rewards for inventors:

The draft fully respect the autonomy of the parties, and adopts the principle of priority of the agreement on the rights of ownership and incentive remuneration reached by the parties according to law.  At the same time, in order to prevent a disguised deprivation or restriction of the rights of the inventor by the employer, the draft establishes a certain restriction on the principle of priority of the agreement of the parties. The draft provides that whenever there is nullification of the inventor’s rights under these regulations, or when the enjoyment or exercise of these rights is subject to unreasonable contractual provisions or rules, those conditions are invalid.

草案充分尊重当事人的意思自治,在权利归属和奖励报酬方面采取约定优先的原则,即当事人依法达成的协议对权利归属和奖励报酬有约定的,优先适用其约定。同时,为了防止单位变相剥夺或者限制发明人的权利,草案对约定优先原则进行了一定限制,规定任何取消发明人依据条例享有的权利或者对该权利的享有和行使附加不合理条件的约定或者规定无效。

Who Went Where in 2013?

Many people in the China IP community changed jobs in 2014 – from seasoned experts to novices.  The biggest changes were in the government, although other areas were not excluded.

Amongst the European diplomatic corps, the IP Key team of the EU is being filled out, most notably due to the start of EU IP technical cooperation program —  IP Key.   The Beijing-based IP Key team consists of of Benoît Misonne and Dan Prud’homme, and will be adding others.  OHIM as the implementing agency of IP Key (in cooperation with the European Patent Office) with a team of four based in Alicante. Valentín Mir is the Action (or Project) Manager at OHIM.   

In addition to IP Key, Christophe Gimenez is currently serving as OHIM’s IP Attaché in the Delegation of the European Union to China and Mongolia, a position that was previously held by Jesús Romero.  Another European colleague, Jean-Baptiste Barbier joined the French Embassy in China from the French IP Office, INPI.

This year one veteran IP attorney left practice for diplomacy.   Clifford Borg-Marks became the Ambassador of Malta to China in August, 2013.    Among his many IP accomplishments, Cliff co-authored Trade Mark Law in the People’s Republic of China.

In the US government, we saw the departure of David Kappos as Director of the USPTO, for a partnership at Cravath.  Dave had established a close relationship with SIPO Commissioner Tian and other Chinese leaders.  Teresa Stanek-Rea, the Deputy Director, left USPTO to rejoin Crowell and Moring.   Terry was also very active in China IP matters, particularly in the pharmaceutical sector.   Also in 2013, Ray Chen, the former Solicitor of the USPTO became the first Chinese-American to sit as a judge on the U.S. Court of Appeals for the Federal Circuit.  We wish them all well. 

At the USPTO, Joel Blank and Tim Browning went to posts in Beijing and Guangzhou, respectively.  The Shanghai position of USPTO is now in the process of being filled.  Amb. Gary Locke, who formerly was Secretary of Commerce (and directly responsible for USPTO) also announced that he is returning to the United States in 2014.

In the Chinese government, former NCAC and GAPP Minister Liu Binjie assumed an important new role in charge of the Education, Science, Culture and Health Committee of the National People’s Congress in 2013, where he will  supervise pending IP legislation .  Meanwhile, Judge Luo Dongchuan, a veteran of the IPR Tribunal, became chief judge of the No. 4 civil tribunal at the Supreme People’s Court, which handles foreign-related cases.

If rumors are to be believed, other changes are afoot.  The rumors say that during 2014 it is likely that SIPO Commissioner Tian Lipu will retire and that Chief Judge Kong of the IP Tribunal will be promoted.

There were also a number of changes in the private sector.   He Jing went from ZY Partners to the Anjie Law Firm.  Horace Lam left Jones Day for DLA Piper.   Karen Guo, formerly of Jones Day and Wilson Sonsini went in-house to Novo Nordisk A/S.    Lucy Nichols, formerly of Nokia, went to work for cREATE.org (the Center for Responsible Enterprise and Trade) in Washington, DC.  Also back in the USA, Charles Freeman, former Assistant USTR for China, joined Rock Creek Global Advisors, while David Weller, who was formerly a partner at Wilmer Hale and had also served as a deputy to Charles, became the Head of Global Trade Policy for Google. 

There are also many who are starting out.  Amongst those I know personally:  Ge Yijun, a former student of mine from Fordham, started out at Bird & Bird in Shanghai and Ron Vogel, who wrote an article on trade secrets in China when I was a full-time professor, is starting out at Fish and Richardson in New York. 

Feel free to write it if you believe there is something that needs to be announced or corrected. 

Most importantly, however, I wish you all a healthy and happy new year!