Key trends in legislative regulation of Intellectual Property in China

• Miao Huang

• Dacheng (Ningbo) Law Offices July 29th, 2015

OUTLINE

•China’s New Intellectual Property Courts

•draft of Copyright Law Amendment, June 2014

•draft of Patent Law Amendment, April 2015

•Trademark Law Amendment, May 2014

•Summary

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China’s New Intellectual Property CourtsThe PRC Supreme People’s Court has issued the Provisions on the Establishment of Intellectual Property Courts in Beijing, Shanghai and Guangzhou (“Provision"), announcing the establishment of the long-awaited Intellectual Property Courts in China.

This is a pilot campaign following the earlier announcement of the establishment of a unified IP tribunal hearing civil, administrative and criminal IP matters under one roof (the “the three-in-one pilot campaign”), with the aim of further improving the quality and consistency of the judgments as well as the efficiency of case handling.

In a noteworthy development, the newly established IP Courts have not yet been given any jurisdiction over criminal matters. The Supreme People’s Court will monitor and assess the development of the Intellectual Property Courts and issue a report in three years’ time on their performance.

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According to the Provisions, which were issued October 31, 2014, Intellectual Property Courts will be set up in Beijing, Shanghai and Guangzhou with jurisdiction to hear the following cases:

• First instance civil and administrative cases related to patents, new plant varieties, layout design of integrated circuit, technological secrets and computer software.

• First instance judicial appeals against administrative decisions, such as those from the Trademark Review and Adjudication Board and Patent Review Board.

• First instance civil cases regarding the recognition of well-known trademarks

• Second instance civil and administrative cases regarding copyright, trademark and unfair competition heard at first instance by district/primary courts.

JURISDICTION

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Technical Investigator of IP Courts

January 21st of 2015, the Supreme People’s Court released the Provisional Regulations of the Supreme People’s Court on Several Issues concerning the Participation of Technical Investigators in Intellectual Property Court Proceedings. 

Unlike expert witnesses, technical investigators are introduced into court proceedings in an effort to help judges resolve technical issues against the backdrop of most judges being only acquainted with legal knowledge and more and more intellectual property cases technically difficult to understand.

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draft of Copyright Law Amendment

In order to keep modernizing China's IP laws, the Office of Legislative Affairs of the State Council of the People's Republic of China has recently released a draft amendment to the current Copyright Law.

Draft has been published in June 2014 to seek critics and comments from the public.

The current Copyright Law has been amended twice, on 2001 and 2010.

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draft of Copyright Law Amendment - Main Amendments

Subject Matter The purpose was to broaden the scope of the subject matter in Copyright Law

Proposing to widen the subject matter of Copyright law;

Renaming to "audiovisual works", a far wider and more comprehensive term;

Adding “works of applied art”, to which a protection period of 25 years is granted;

Revising "computer software" to "computer program";

Protecting computer files as written works;

And revising some other details

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draft of Copyright Law Amendment - Main Amendments

Enforcement: A few amendments are suggested in the Draft to make the enforcement of copyright more effective and satisfying:

Regulating the civil liability of internet service provider in detail;

Modifying (increasing) the method of determination of damages;

Increasing administrative fine;

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draft of Copyright Law Amendment

Besides modifications of subject matter and enforcement, the draft amends the ownership reinforcing "party's autonomy", protection period of photographic works, etc..

The draft also received some critics from the public, especially on the legal license provision of musical works.

In general, the draft could be regarded as an effective attempt to strengthen and update Chinese Copyright Law and, thus, to meet the higher needs expressed by IP holders in China.

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draft of Patent Law Amendment

SIPO (State Intellectual Property Office) published Draft of the Fourth Amendments to the Chinese Patent Law on April 1, 2015 to seek public comments.

The Draft comprises substantive amendments to a total of 30 articles, addition of one chapter “Patent Enforcement and Application”, and adaptive wording amendments to or adjustment of two articles.

It's the fourth amendment of Patent Law in China.

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The current Patent Law regulates that foreigner applicants who do not have habitual residence or business entity in China shall entrust a Chinese patent agent to handle patent filing and prosecution before the SIPO on his behalf, while the draft provides a possibility to allow a foreigner applicant to handle some procedure matters before the SIPO by itself;

The patent license-of-course system has been introduced;

The implied license system for standard essential patents has been regulated.

draft of Patent Law Amendment - highlight

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To resolve problems usually raised by patentees in patent enforcement, such as difficult burden of proof, long term procedures, low compensation, high cost and ineffectiveness, the draft improves patent protection system and provides powerful legal guarantee for maintaining patentee’s legitimate rights and interests through：

increasing compensation amount

advancing administrative enforcement

building a long-term effective mechanism for combating against patent infringement

promoting effective combination of administrative enforcement and judicial protection

improving enforcement efficiency and lowering enforcement costs.

draft of Patent Law Amendment – problem-oriented

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Trademark Law Amendment

New Trademark Law came into force on April 1 2014. It’s the third amendment to the Trademark Law of PRC. Some highlights are followed:

Consisting sound mark: wider protection scope

Modifying the application and review process: specifying the function of different administrative office

Endorsing good faith and fair play

Recognizing “Prior-use based right” more practical in China due to the large territory of China

Increasing compensation amount

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SummaryMore Mature Judicial System

Specialized Intellectual Property Court

More effective administrative departments with more power authorized by the amendments

Problem-oriented legislative methodAmending some provisions in line with the social development (e.g. the booming e-commerce in China)

Adopting the international standard of IP protection with China’s characteristics

Coordinating with other laws such as Anti-monopoly law, Civil Procedure Law, etc.

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ContactMiao Huang

Senior Partner Director of IP department, Beijing Dacheng (Ningbo) Law OfficeMember of Intellectual Property Rights Profession Committee of China, China Lawyer AssociationSectary General of The Intellectual Property Rights Professional Committee, Zhejiang Lawyer Association Member of International Trademark Association

Tel: 86 574 8732836Fax: 86 574 87893911 Cell:86 135 6605 2086

E-mail: miao.huang @ dachenglaw. com