China and Intellectual Property: Historic Review and Future Policy Considerations

Similar documents
Marketers must: The Political, Legal, and Regulatory Environments of Global Marketing. Nation-States and Sovereignty. The Political Environment

China IPR SME Helpdesk Protecting your IPR in China & How the Helpdesk can Assist you. Beijing, 28 April 2014 Valentina Salmoiraghi, IP Expert

Intellectual Property Rights In China

Fighting Counterfeiting in Asia. Douglas Clark. Partner. Lovells, Shanghai

Due Diligence Request List: IP and IT

Tel: Tel: Fax: Fax:

IP Considerations in Outsourcing Agreements

Supported by. World Trademark Review. Anti-counterfeiting. Poland. Contributing firm Patpol Patent & Trademark Attorneys.

The role of EU in supporting SMEs for protection of IPR. Avv. Elio De Tullio

Foreign direct investment in the consumer products and retail sector in China

SINO-RUSSIAN BUSINESS: FIVE TIPS ON RUSSIAN INTELLECTUAL PROPERTY LAW

Protection of Intellectual Property in China. Jurjen Groot 24 March 2015

ENFORCEMENT OF IP RIGHTS IN THE DIGITAL ENVIRONMENT CONCERNS, CHALLENGES AND ACTIONS REQUIRED FOR THE PROTECTION OF THE SINGLE MARKET.

Dr. Horst Fischer, Corporate Vice President, Siemens AG Any company wishing to prosper in the next millennium will also have to efficiently manage

WIPO TRAINING OF TRAINERS PROGRAM ON EFFECTIVE INTELLECTUAL PROPERTY ASSET MANAGEMENT BY SMALL AND MEDIUM-SIZED ENTERPRISES (SMEs)

Intellectual Property

The basics of an Intellectual Property Program

Offices in the Rouse Group: Africa China Hong Kong India+ Indonesia Myanmar Philippines Russia Saudi Arabia+ Thailand UAE United Kingdom Vietnam +

Intellectual Property Rights in the USA

The following document is offered to PBI faculty as a sample of good written materials.

DECREE THE GOVERNMENT

Corporate policy statement on ethical business practices of BCD Travel

American Polygraph Association. Antitrust Compliance Program

Intellectual Property. Litigation and. Enforcement PATENT, TRADEMARK COPYRIGHT. 360 IPR Management and IPR Audit

Strategies of G8 Industry and Business to Promote Intellectual Property Protection and to Prevent Counterfeiting and Piracy

A Guide To Conducting IP Due Diligence In M&A

INTELLECTUAL PROPERTY RIGHTS

World Book. Protection of IP France TRADE MARKS 1.1 INTRODUCTION

Help! My Licensor/Licensee Has Gone Insolvent What Can I Do?

ASEAN IPR SME Helpdesk Guide: Protecting your IP at Trade Fairs in Southeast Asia. Contents. 1. Protecting your IP at trade fairs. 2.

AFRICA REGIONAL INTELLECTUAL PROPERTY ORGANIZATION

Greece. Eleni Lappa. Drakopoulos Law Firm

World Book. Protection of IP Canada TRADE-MARKS 1.1 INTRODUCTION 1.2 REGISTERED TRADE-MARKS

U.S. HOUSE OF REPRESENTATIVES COMMITTEE ON ENERGY AND COMMERCE

Introducing the ASEAN IPR SME Helpdesk: Free Support for EU SMEs in ASEAN

Program: Master s of Intellectual Property Law (Comprehensive) Syllabus

International Patent Litigation and Jurisdiction. Study of Hypothetical Question 1 Under the Hague Draft Convention and Japanese Laws

CIVIL CODE OF THE RUSSIAN FEDERATION

Chapter 2 Fields of Intellectual Property Protection

THOMSON REUTERS (TAX & ACCOUNTING) INC. FOREIGN NATIONAL INFORMATION SYSTEM TERMS OF USE

Inventec Corporation Ethical Corporate Management Best Practice Principles

ETSI Guidelines for Antitrust Compliance Version adopted by Board #81 on 27 January 2011

Wowprime Corporation Ethical Corporate Management Best Practice Principles

Mediation Conference 2014

INTELLECTUAL PROPERTY: CHINA IN THE GLOBAL ECONOMY - MYTH AND REALITY

In popular culture, the inventor is often

STATISTICAL ISSUES STRUCTURE OF PRESENTATION

Internet investment scams in China

Trade Secrets and Unfair Competition Law Law No. 15 for the Year *

Analysis of National Approaches to PIL Issues in Cross-border Online IP Infringement Disputes

Designs. Denmark Mette Bender Awapatent A/S. A Global Guide

Ensuring Safety and Access

Open Source Code: Understanding and Managing the Risks. May 8, Renee L. Jackson. Christopher K. Larus. When You Think IP,

Intellectual Property Rights and Exporting: A Step-by-Step Guide

Chapter V: Performance... 4 Article 20.: Obligations of the Parties...4 Article 21.: Enabling Use...5 Article 22.: Acceptance...5

Doing Business in Canada. SCG Legal Annual Meeting Vancouver, British Columbia September 2015

International Franchise & Business Opportunities May 28, VCI Legal Award-winning expertise with practical insights

TRADEMARKS, SERVICE MARKS, AND INSIGNIAS: A GENERAL OVERVIEW Authorized pursuant to Act 242, P. A and Act 281, P.A. 1927

SYLLABUS FOR THREE MONTHS INSTITUTIONAL TRAINING OF EXAMINERS OF PATENTS & DESIGNS

Legal Aspects of Doing Business in Russia

JPMA - Terms and Conditions

IP Valuation. WIPO Workshop on Innovation, Intellectual Asset Management and Successful Technology Licensing: Wealth Creation in the Arab Region

Protecting IPR When Conducting R&D in China. 26 April 2012

IPR-Helpdesk-China.eu & Round Table on European IPR Activities in China. Sino Italian cooperation on Industrial Property

PAPER POLICIES: CHINA STILL STRUGGLES WITH IPR PROTECTION

Bankruptcy and Restructuring

Intellectual Property in Hong Kong Contents

PROTECT YOUR INTELLECTUAL PROPERTY

Tsubame Patent Attorney Firm at a Glance. Tsubame Patent Attorney Firm Registered Patent Attorney Itsuki Shimbo PhD.

Introduction to Data Privacy & ediscovery Intersection of Data Privacy & ediscovery

Merger Market M&A Insights: Spotlight on IP Rights. Bliss White, Partner, Blake, Cassels & Graydon LLP

Lawyers Law, 2007, available at

E-COMMERCE GOES MOBILE: SEEKING COMPETITIVENESS THROUGH PRIVACY

Drafting and enforcing non-compete agreements in the European Union: the examples of France, Germany and Italy

CASE 0:12-cv RHK-TNL Document 1 Filed 09/14/12 Page 1 of 13 UNITED STATES DISTRICT COURT DISTRICT OF MINNESOTA ) ) ) ) ) ) ) ) ) ) ) )

Brand Management on the Internet. March 5, 2015 Edward T. White \ Peter C. Kirschenbaum

Regulation on Credit Reporting Industry

A Summary of the Labor Contract Law of the People s Republic of China

Training Sessions for Clients. UNITED STATES CANADA MEXICO POLAND CHINA millercanfield.com

Law Enforcement Recommendations Regarding Amendments to the Registrar Accreditation Agreement

RESEARCH & INNOVATION INTELLECTUAL PROPERTY (IP)

Data Security: Fight Insider Threats & Protect Your Sensitive Data

Banking and Financial Institutions and Instruments

MAIN BIO EXPERIENCE SPEECHES PUBLICATIONS NEWS

Data Subscription Service. Data descriptions Order form Licence agreement

STRENGTHENING ANTICOUNTERFEITING CANADA

Intellectual property experts SPAIN

The Cloud and Cross-Border Risks - Singapore

Revised 05/22/14 P a g e 1

Free and Open-Source Software Diligence in Mergers, Acquisitions, and Investments

This document has been provided by the International Center for Not-for-Profit Law (ICNL).

OWNERSHIP TO EMPLOYEE INVENTIONS WHEN THERE IS NO WRITTEN AGREEMENT

Our Vendor Code of Conduct

Licensing agreements for intellectual property

Applications for Three Kinds of Patents Received by SIPO from Home and Abroad (2010) Invention Utility Model Design Total. Share in total.

General Conditions of Business INET-CASH with Webmaster. (As of August 09, 2013)

SUBWAY AND THE CHALLENGES OF FRANCHISING IN CHINA. JaYoung Lee TaeSung Park Aschel Soza

THE PHONE RINGS FROM DOWN SOUTH: WHAT ISSUES SHOULD I CONSIDER FOR EXPANDING MY U.S. FRANCHISE INTO CANADA?

PATENT LITIGATION IN MEXICO: OVERVIEW AND STRATEGY

The Importance of Intellectual Property (IP) for Economic Growth and Business Competitiveness

Transcription:

Looking Back, Looking Forward, 30 Years of US-China Relations China and Intellectual Property: Historic Review and Future Policy Considerations The Confucius Institute Arizona State University Tempe, Arizona September 13, 2009 Karen Dickinson karen.dickinson@quarles.com; 602-230-5511 Quarles & Brady LLP 2009 Page 1

Agenda Intellectual Property Rights IPR in China Then and Now Practical Tips Quarles & Brady LLP 2009 Page 2

Intellectual Property Rights Quarles & Brady LLP 2009 Page 3

IPR in World History Venice 1474 "Any person in this city who makes any new and ingenious contrivance, not made heretofore in our dominion, shall, as soon as it is perfected so that it can be used and exercised, give notice of the same to our office of Provveditori de Comun [State Judicial Office], it being forbidden up to 10 years for any other person in any territory and place of ours to make a contrivance in the form and resemblance thereof, without the consent and license of the author. England 1624 - Statute of Monopolies United States 1787 U.S. Constitution, Art. 1 Congress shall have power... to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries. Rationale IPR protection a natural right OR to reward innovation and diffusion of technology Quarles & Brady LLP 2009 Page 4

Intellectual Property Laws Trade Secrets Patents TM Owner gets exclusive right to copy, distribute, display, perform and create derivative works; does not protect underlying ideas Protects material which is not generally known - value is in keeping the information secret; protects underlying ideas Owner gets exclusive right to prevent others from making, using, or selling the patented technology; protects underlying ideas Signifies ownership and quality of goods and services sold under the mark; protects owner s rights to mark Controls use of intellectual property through agreement between parties; necessary for preservation of trade secrets and licensing intellectual property rights Quarles & Brady LLP 2009 Page 5

Intellectual Property in China Quarles & Brady LLP 2009 Page 6

Rule of Law in Chinese History Confucian ideal of selfdiscipline Above all, help the family Bureaucracy and Guanxi Quarles & Brady LLP 2009 Page 7

IPR in Chinese Culture Chairman Mao - 1976 intellectual property creations are tools for the common good Quarles & Brady LLP 2009 Page 8

China Today 11 th Five Year Plan (2005) Now a "Strategic Program" Goals harmonious society, social justice, self-innovation Method "scientific development" From cheap labor and natural resources to educated workers and science & technology Restructure economy to emphasize technology, services and consumer spending Focus on middle and western Provinces Brand Value Increasing More than 1000 foreign brands entered China retail in 2006 more than previous 12 years Chinese brands gaining fame inside and outside China Lenovo, Haier, Tsingtao, DongFeng Motors, Huawei Technologies, NetEase Chinese software industry generated 7573B Yuan in sales revenue in 2008 Quarles & Brady LLP 2009 Page 9

Chinese IP Law Development No Protection to "Full Protection in 30 years 1976 intellectual property creations not considered individual assets 1978 no Chinese intellectual property laws in existence 1979 Nixon-Deng meeting 1982 first-ever trademark law 1984 first-ever patent law 1990 first-ever copyright law 1993 first-ever law against unfair competition protects trade secrets 2005 Most Chinese intellectual property laws comply with World Trade Organization Trade-Related Aspect of Intellectual Property Rights (TRIPS) 2008 New National Intellectual Property Rights Strategy 2008 Amended Patent Law 2009 New Draft Amendments to Trademark Law Actual IP Protection getting better, but not there yet Chinese intellectual property laws comply with TRIPS BUT... USTR filing WTO cases against China claiming ineffective enforcement Prediction: China's IP enforcement across country likely consistent with world standards in 5-10 years Quarles & Brady LLP 2009 Page 10

Chinese IP Law Today Since 2000, China has begun to set up special and independent divisions at courts to exclusively deal with IP related civil cases. Increase of IPR infringement cases being brought before the courts or administrative agencies foreign and Chinese companies as plaintiffs Increase in the frequency and amount of judicial damage awards Chinese court upheld Pfizer s Viagra Chinese patent (overturning prior decision of China patent review board) In 2008 Zhejiang courts ordered Samsung to pay 50M yuan (US$7.3M) patent infringement and HK company to pay 20M yuan (US$2.9M) for trademark infringement Beijing court ordered three Chinese automakers to pay 20M yuan (US$2.92M) compensation and 1.16M yuan (US$169k) in legal costs to German automakers for patent infringement Shanghai court ordered Sohu.com to pay author 100K yuan and issue a public apology for copyright infringement Chinese Basketball Association litigation over trademark infringement and use of athlete images Amended Patent Law increases upper limit of statutory damages to 1M yuan (US$150k) High-visibility counterfeiting raids by Public Security Bureau e.g. Electric Guitar Anti- Counterfeiting Coalition 2008 National IPR Strategy (2008) Commitment to develop China into higher level of intellectual property right creation, utilization, protection and administration by 2020 Annual action plans to implement the national IP strategy 280 detailed measures 16 announced massive campaigns to fight IP piracy and infringement Quarles & Brady LLP 2009 Page 11

IPR in Chinese Culture Premier Wen Jiabao - 2007 The competition of the future world... is the competition of IPR. Quarles & Brady LLP 2009 Page 12

China - IPR Limitations Amended Patent Law (2008) SIPO may grant a compulsory license for patented drugs where the public health interest so requires New Anti-Monopoly Law Review Does not impede exercise of "legitimate" IP rights unless IP rights "abused" to eliminate or restrict competition similar to U.S. "patent misuse", but open to broader interpretation Licensor restrictions on acquisition of competing technology may be considered illegal unless agreement "enables the consumer to share the benefits derived Court recently refused to issue an injunction of infringement because job losses at the Chinese infringer would result Quarles & Brady LLP 2009 Page 13

China - IPR Limitations Technology Licensing: prohibited, restricted and permitted License for permitted technology must be registered to provide for full enforcement and to complete formalities of foreign exchange, banking, taxation and customs License for restricted technology must be approved prior to registration (16 categories: e.g. biotechnology, chemical technology, petroleum refinery technology, currency production) Confidentiality and non-compete obligations difficult to enforce Some prominent legal academics Chinese courts should treat foreign IP differently from Chinese company IP Argue China cannot keep developing when a small number of foreign companies control so much IPR in China Quarles & Brady LLP 2009 Page 14

U.S. Response Bilateral Discussions U.S. agencies U.S. China Joint Commission on Commerce and Trade (JCCT) U.S.-China Strategic Economic Dialogue (SED) Technical Assistance Programs Training for China central, provincial and local officials on TRIPS rules and enforcement methods WTO Enforcement Actions US claims: China IPR enforcement and penalties insufficient Famous Brands program unfair trade distortion Quarles & Brady LLP 2009 Page 15

IPR in China Practical Tips Quarles & Brady LLP 2009 Page 16

Protecting Your IP in China Taking advantage of Chinese intellectual property protections critical If you don t not legally protect your intellectual property, the Government is more likely to protect the Chinese party's interests e.g. registration required to protect trademark rights e.g. copyright registrations may be "sealed" to protect trade secrets e.g. patent law the strongest protection As China becomes a knowledge economy, look for more aggressive intellectual property law enforcement - Chinese Central, Provincial and Municipal governments e.g. State Office of Intellectual Property Protection, Cross-Province Coordination, BUT... Heaven is high and the emperor is far away. Contractual license provisions are a critical additional means of protection e.g. software use restrictions The 80% e.g. public apologies The 20% Quarles & Brady LLP 2009 Page 17

When in... Guangzhou Practical Tips Industry check is Chinese party a member in good standing of applicable industry associations? Background checks of both the Chinese party and its owners Mark information Your Company Confidential and Proprietary Do not leave laptop or sensitive information at the Chinese facility or sitting near copy or fax machines Use technology to your advantage - tracking numbers, encryption technologies, security mechanisms, flaws Contract for liquidated damages and public apologies if your products show up on the black market or outside of China Register your trademarks with U.S. and Chinese customs Join others - American Chamber of Commerce (www.amcham-china.org), International Intellectual Property Alliance (http://www.iipa.com/) Require (and perform) periodic on-site audits by you or your agent; take actions such as raids, seizures, administrative or legal actions have a reputation for protecting your rights Quarles & Brady LLP 2009 Page 18

China The Rise of a Superpower China offers great opportunities Laws and business climate evolve rapidly and change from region to region What you don't know will hurt you Having competent legal counsel in the U.S. and China is critical Quarles & Brady has the knowledge, experience and relationships to help you meet your objectives In China.... everything is possible.... nothing is easy! Quarles & Brady LLP 2009 Page 19