Policy & Legislation
1.Voice from the Two Sessions: The IP Issues in SPC and SPP Report
In March, 2017, the 3rd plenary meeting of the 5th session of the 12th National People’s Congress has been held at the Great Hall of the People, at which the report on the work of the Supreme People’s Court and the report on the work of the Supreme People’s Procuratorate were heard and deliberated.
Mr Zhou Qiang, President of the Supreme People’s Court, noted in his report that the Supreme People’s Court improved intellectual property rights (IPRs) protection rules in 2016 by making judicial interpretations on the trials of cases involving disputes over patent rights and cases of other types, aiming to promoting innovation-driven development. China tried a series of cases involving the dispute over the trademark “乔丹” (Chinese equivalent of “Jordan”), demonstrating the country’s stance and determination to reinforce judicial protection for IPRs. Three IPR courts in the cities of Beijing, Shanghai and Guangzhou explored the application of punitive damages, sparing no efforts to solve such problems as low infringement costs and high costs for safeguarding rights. IPR tribunals were established in Nanjing, Suzhou, Wuhan and Chengdu to be in charge of cross-regional IPR cases in a centralized manner. People’s courts at different levels concluded some 147,000 IPR cases of first instance in 2016, boosting mass entrepreneurship and innovation. As to how people’s courts do a good job in 2017, Mr Zhou Qiang said that it is of necessity to give full play to the functional role of trials in order to maintain stability and drive ahead development. In particular, he proposed to give play to the functional role of IPR trials to stimulate innovation and entrepreneurship of diverse entities.
Mr Cao Jianming, Procurator-General of the Supreme People’s Procuratorate, pointed out in his report that nationwide procuratorate organs pushed forward scientific and technological innovation positively in 2016 by formulating “fifteen opinions” to secure scientific and technological innovation. Special actions were taken to crack down on crimes that infringed upon IPRs, with a total of 21,505 persons sued. 29 provinces, municipalities and autonomous regions, including Hubei, Yunnan and Ningxia, established particular platforms for carrying out administrative enforcement against infringements and counterfeits and sharing criminal judicial information. Efforts were made to strengthen studies on laws and policies for scientific and technical innovation purposes, and to accurately understand “five dividing lines”, such as the dividing line between the legal incomes earned by scientific research personnel via undertaking part-time jobs and the bribes solicited and received by them and the dividing line between their profits derived from IPRs and the graft and bribes received by them. When talking about the work arrangements for the year 2017, Mr Cao Jianming called for giving full play to the protection role of the rule of law in order to promote the sustainable and healthy economic development. Also, focus will be placed on fighting against certain criminal crimes that disrupt the order of the market economy, infringe upon IPRs and encroach upon special government funds. [Provided by LexisNexis China]
2.SIPO Revises the Patent Examination Guidelines
Recently, the State Intellectual Property Office ("SIPO") has issued the Decision on Amending the Patent Examination Guidelines (the "Decision"), which shall come into force as of April 1, 2017.The Decision makes it clear that to the extent of upholding the modification principles, the specific methods for modifying the letter requesting proprietary rights shall be generally limited to the deletion of the patent claims, the deletion of the technical solutions, the further limitation of the patent claims, and the correction of obvious errors. In particular, further limitation of the patent claims means the addition of one or more technical characteristics which are recorded in other patent claims to the patent claims, so as to narrow down the scope of protection. According to the Decision, for the invention patent application files that have been published but the granting of the patent right has not been publicly announced yet, relevant contents in the patent application files can be consulted and copied, including the application documents, publication documents, the notice and decision letter issued to the applicant in the preliminary examination, and main body of the reply given by the applicant to such notice; for a patent right that has been announced and granted, contents that can be consulted and copied shall include the application documents, priority documents and the patent evaluation report. [Provided by LexisNexis China]
Recently,the State Council has issued the Opinions on Strengthening the Fight against the Infringement of Intellectual Property Rights and the Production and Sale of Counterfeits and Shoddy Goods under New Circumstances (the "Opinions").
The Opinions state that a system for cracking down upon infringement and counterfeits will be basically formed by 2020, under which the administrative law enforcement, criminal law enforcement, judicial trials, prompt right protection, arbitration and mediation, industry self-discipline, and social supervision will be performed in a coordinated manner. To this purpose, the Opinions set out specific requirements from certain perspectives, such as promoting cross-region integrated treatment by different departments, enhancing the capacity in market regulation, early warning and prevention, and perfecting standards on regulations and the judicial protection system. Besides, the Opinions clearly state that severe efforts shall be made to crack down upon illegal and criminal practices on infringement and counterfeits, focusing on commodities that relate to life and health, property safety and environmental protection and on prominent issues in the field of intellectual property; revisions to the Copyright Law, the Patent Law and the Anti-fair Competition Law and the formulation of laws and regulations on e-commerce, commercial secrets protection etc. shall make further progress, and studies will be made to modify the Regulations on the Customs Protection of Intellectual Property Rights and others. [Provided by LexisNexis China]
4.Trademark Registration Fee to be Half Reduced from April 1
Recently, the Trademark Office of the State Administration for Industry and Commerce has distributed the Announcement on Adjusting the Fee Charging Criteria for Trademark Registration (the "Announcement"), effective from April 1, 2017.
According to the Announcement, there are 13 items that will be charged at a lower rate. They are the fee for accepting a trademark registration, fee for reissuing a trademark registration certificate (including expenses incurred by the publication of a loss notification), fee for accepting the transfer of a registered trademark, fee for accepting an application for renewing the trademark registration, fee for postponing the acceptance of an application for renewing the trademark registration, fee for reviewing an accepted trademark, alteration fee, fee for issuing a certification for a registered trademark, fee for accepting collective trademark registration, fee for accepting the application for attesting the trademark registration, fee for objections raised against a trademark, fee for cancelling a trademark, and fee for filing a record for a trademark licensing contract. In particular, the most fundamental trademark registration fee will be CNY300, half of the previous price at CNY600. [Provided by LexisNexis China]
5.SIPO Regulates Issues on Patent Applications Filed by Hong Kong, Macau and Taiwan Compatriots
Recently,the State Intellectual Property Office ("SIPO") has released the Announcement on Repealing the Announcement No.51 and Revising the Circular on Accepting International Applications Filed by Taiwan Compatriots (the "Announcement"), which will come into force as of the date of promulgation.
The Announcement contains the following provisions. The first is repealing the Provisions on Several Issues concerning the Patent Applications from Hong Kong and Macau. The second is revising the Circular on Accepting International Applications Filed by Taiwan Compatriots (the "Circular") by modifying the "China Patent Office" in from Article 1 to Article 6 into the "State Intellectual Property Office", removing the term "foreign-related" from the phrase "foreign-related agencies", and replacing the "patent agencies designated by the China Patent Office" in Article 2 with "legally established patent agencies". The revised Circular makes it clear that where Taiwan compatriots file international applications to the SIPO, they shall entrust legally established patent agencies to go through procedures in which the SIPO is the international search unit or international preliminary examination unit, or the designated office or elected office, and to deal with other matters relating to international applications. [Provided by LexisNexis China]
News and Cases
1.SPC Issues the 16th Batch of Guiding Cases
In March, the Supreme People's Court ("SPC") has distributed the Circular on Releasing the 16th Batch of Guiding Cases (the "Circular") for courts' reference in trying similar cases.
According to the Circular, the 16th batch includes a total of 10 guiding cases (No.78-No.87), all of which relate to the intellectual property field, including nine civil cases and one criminal case. Civil guiding cases mainly involve disputes over infringement upon the copyright, trademark rights, patent rights and rights of new plant varieties, disputes over the bundle trading in the field of anti-monopoly, and disputes over the abuse of dominant market position, while the criminal guiding case relates to the crime of counterfeiting trademarks. In particular, the guiding case No.78 is "Beijing Qihoo 360 Technology Co. Ltd. v. Tencent Technology (Shenzhen) Co. Ltd. and Shenzhen Tencent Computer System Co. Ltd. (dispute over the abuse of dominant market position)". Ruling of such case requires the consideration of several issues, such as how to determine the relevant market, whether it has the dominant market position or not, and whether it constitutes the act of abusing dominant market position prohibited under the Anti-monopoly Law. [Provided by LexisNexis China]
2.SIPO to Carry out Pilot Arbitration and Conciliation for IP Disputes
Recently, the State Intellectual Property Office ("SIPO") has distributed the Circular on Carrying out the Pilot Arbitration and Conciliation for Intellectual Property Disputes (the "Circular").
The Circular clearly states that efforts will be made to regulate the arbitration and conciliation for intellectual property ("IP") disputes constantly, explore ways to construct an experts bank for the arbitration and conciliation for IP disputes, drive forward the development of the IP information sharing and case acceptance platform, and actively promote the arbitration and conciliation for disputes over patents, trademarks, copyrights, trade secrets and other IPs. The Circular calls for forming IP arbitration organizations within the chambers of commerce and associations in core sectors and key industries, enhancing cooperation with major national arbitral institutions as well as their local branches or with other arbitral institutions that have relatively powerful local influences, and encouraging the establishment of an institution (center) of IP arbitration according to law or enhancing the capacity and regulating business of selected existing institutions that have laid a solid foundation and held a positive attitude towards IP arbitration. Additionally, the Circular sets out the need to urge and guide lawyers, patent agents, engineering technicians and other professionals to take an active part in arbitration and conciliation for disputes. [Provided by LexisNexis China]
3.IPR Strategy to be Further Implemented in Northeast Areas
Nine departments including the State Intellectual Property Office have recently issued the Several Opinions on Supporting the Overall Revitalization of Old Industrial Bases in Northeast Areas and Further Implementing the Intellectual Property Rights ("IPR") Strategy in Northeast Areas (the "Opinions").
The Opinions call for further stressing IPR's role in supporting the revitalization of old industrial bases in Northeast areas, with the average annual growth rate of different IPRs, such as patents, trademarks and copyrights, and the average number of such IPRs owned by individuals higher than China's average level, and forming several powerful IPR enterprises with demonstration significance. The Opinions stress that efforts shall be made to encourage venture capital institutions to enter into the IPR market, explore ways to establish the security fund for IPR pledged financing, improve loans granted under pledged patents, trademarks and copyrights, support the pilot program of patent insurances, and perfect the trading system for transferring IPRs. Further, the Opinions clearly set out that the IPR layout shall be strengthened in certain industries, such as energy conservation and environmental protection, biology, new energy and new energy automobile, and more IPRs in traditional competitive industries, such as nuclear power, thermal power and food industry, shall be created, with the IPR transformation improved to a higher level. [Provided by LexisNexis China]
4.Shanghai Issues 12 Opinions on Serving Construction of International Trade Center
Recently, the Shanghai Intellectual Property Court has formulated the Several Opinions on the Provision of Judicial Guarantee by the Shanghai Intellectual Property Court for the Construction of the Shanghai International Trade Center in the "13th Five-year Plan" Period (the "Opinions") in order to implement the 13th Five-year Plan for the Construction of the Shanghai International Trade Center and give full play to the role of judicial services related to intellectual property in guaranteeing the construction of the Shanghai International Trade Center.|
It's known that the Opinions consisting of 12 opinions in total set forth specific service guarantee measures from five aspects: 1. specifying the objectives and principles of service guarantee; 2. stipulating the prudent trial of cases of disputes over intellectual property involving international trade; 3. providing for the perfect and strict mechanism of judicial protection for intellectual property; 4. requiring the improvement of the mechanism of professionally resolving disputes over intellectual property; and 5. defining the establishment and improvement of the special management system for cases of disputes over intellectual property involving international trade.
The Opinions point out that efforts shall be made to further research the legal issues concerning disputes over intellectual property under new trade forms, strengthen judicial protection for intellectual property in the pilot free trade zone, hear the cases involving foreign countries, Hong Kong, Macao and Taiwan in accordance with the law, exercise the jurisdiction in accordance with the law, adhere to equal protection, encourage and promote independent innovation, and increase infringement costs. Meanwhile, it is imperative to further enhance damages involved in cases of intellectual property infringement, so as to realize the corresponding market value of the infringed intellectual property; lay emphasis on giving play to the system effect of behavior preservation, property preservation, evidence preservation and other temporary protection mechanisms in stopping the infringement, and actively explore the preservation mode in line with the characteristics of cases of intellectual property involving international trade, thus raising the timeliness, convenience and effectiveness of judicial relief related to intellectual property; maintain legitimate rights and interests of right holders by reasonably distributing the burden of proof in accordance with the law.[Provided by LexisNexis China]