“The major issue in patent litigation in the People’s Republic of China is obtaining evidence to prove infringement.” ~ Douglas Clark
As China’s economy has risen to be one of the largest in the world, disputes involving intellectual property rights will become more frequent as well as increasingly critical for business survival.
“Patent Litigation in China” by Douglas Clark (Oxford University Press 2011; 320 pp.), provides U.S. and other non-Chinese practitioners with an overview of the patent litigation system in China and enable those contemplating or involved in patent litigation in China to better comprehend the risks and challenges they face, as well as to ensure better decision-making by those responsible for bringing or defending patent actions.
The People’s Republic of China (PRC or China) has a dual administrative and judicial system for enforcing patents. Patent enforcement actions may be brought in either administrative bodies or to the courts. The State Intellectual Property Office (SIPO) and the Patent Review and Adjudication Board (PRAB or Patent Re-examination Board) is the key administrative body handling patent related matters.
Under the administrative system, patent enforcement actions are brought to local branches of the SIPO where the infringement is occurring although the General Administration of Customs also can take action to seize imports or exports of products that infringe a patent. Meanwhile, the courts may handle all infringement cases directly but have no power to act on validity cases other than on appeal.
The book covers the grounds for invalidating patents, evidence gathering, litigation strategy and procedure, as well as defenses and remedies. Additional topics include design patents and preliminary and interlocutory issues.
This is an extremely useful guide for attorneys who want to proactively address the considerable challenges and risks associated with pursuing patent litigation in China. The coverage of the topic is both thorough and informative.
About the Author
Douglas Clark is an intellectual property lawyer who has practiced in China for more than 15 years. Until the end of 2010 he was a partner with the international law firm of Hogan Lovells and head of the firm’s mainland China intellectual property practice as well as co-head of its worldwide patents group. Since 2011 he has worked as a sole practitioner.
“Patent Litigation in China” by Douglas Clark (Oxford University Press 2011; 320 pp.) can be ordered from Amazon.
The United States along with Australia, Canada, the European Union and its member states, Japan, South Korea, Mexico, Morocco, New Zealand, Singapore, and Switzerland reaffirmed their commitment to the Anti-Counterfeiting Trade Agreement (ACTA) at a signing ceremony in Tokyo.
The agreement is meant to fight against the infringement of intellectual property rights (IPR), in particular the proliferation of counterfeiting and piracy on a global scale, providing a mechanism for the parties to work together in a more collaborative manner to achieve the common goal of effective IPR enforcement.
It includes provisions on civil, criminal, border and digital environment enforcement measures, robust cooperation mechanisms among the ACTA parties to assist in their enforcement efforts, and the establishment of best practices for effective IPR enforcement.
With respect to the legal framework, the ACTA establishes a strengthened standard that builds on the minimum standards of the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). It is said that this marks a considerable improvement in international trade norms for effectively combating the current global proliferation of commercial-scale counterfeiting and piracy.
Representatives of eight governments – Australia, Canada, Japan, South Korea, Morocco, New Zealand, Singapore and the US – signed the agreement. Representatives of the European Union, Mexico and Switzerland attended the ceremony and confirmed their continuing strong support for for the agreement but said they’d sign some other day.
Formal ACTA negotiations started in June 2008, with the final round of negotiations being held in Japan in October 2010. Following translation and technical work, the ACTA was opened for signature on May 1, 2011.
The U.S. Chamber of Commerce’s Global Intellectual Property Center (GIPC) applauded the conclusion of the Anti-Counterfeiting Trade Agreement in a press release:
“The signing of the ACTA is a big victory for the American business community, workers, and IP-intensive sectors across our economy,” said Mark Elliot, executive vice president of the GIPC. “This accord raises the bar on enforcement by improving cooperation among partners, harmonizing how we confront IP theft, addressing IP theft online, and setting a positive example for nations that aspire to have strong IP enforcement regimes. We urge the negotiating countries to move quickly to complete the relevant domestic processes in signing and implementing the agreement to help protect IP jobs and spur economic growth.”
Not everyone thinks the agreement is great, though. Gigi B. Sohn, president and co-founder of Public Knowledge noted:
“Although the final version of the Agreement was an improvement from earlier versions, we continue to believe that the process by which it was reached was extremely flawed. ACTA should have been considered a treaty, and subject to public Senate debate and ratification or, in the alternative, debated in an open and transparent international forum such as the World Intellectual Property Organization (WIPO). Instead, public interest groups and the tech industry had to expend enormous resources to force the process open to permit public views to be presented and considered.”
But, ACTA no longer exports the worst parts of the Digital Millennium Copyright Act — the 1998 law that makes it a crime to unlock a DVD to back it up. Although it has a loosely worded ban on tools used to unlock “digital rights management” technologies, a footnote makes it clear that it is not required for manufacturers and software developers to ship products with DRM restrictions.
Second, ACTA no longer demands that countries hold Internet providers responsible for copyright infringement committed by their subscribers.
Some aspects of ACTA, however, remain controversial since the agreement does not mention “fair use” anywhere.
Critics say the biggest problem is that the eight signatory countries don’t include the main offenders in copyright disputes. Most agree that until you get China to sign this document, this probably won’t change much.
“Inevitably, the right to health comes into contradiction with patents on pharmaceutical products, which block the passage of a new medicine to the status of generic medicine.”
“Development and Health In Poor Countries, The Role of International Organizations and of Switzerland,” by Bastien Briand et al. (Centrale Sanitaire Suisse Romande 2010; 224 pp.), presents the mandates and activities of international organizations concerned with intellectual property and underlines the dangers of bilateral ad hoc relations negotiated among countries (or among groups of countries).
A first part explores the internal debates and contradictions in each organization without omitting the tensions which arise among them as well as the relative weight of pressure groups. The second part examines the same topics and attempts to identify the role of Switzerland and of various parties involved.
The TRIPS Agreement foresees limits to the patenting right. Excluded from patentability are (i) diagnostic, therapeutic and surgical methods for the treatment of persons or animals and as well (ii) plants and animals other than microorganisms (virus, bacteria) and essentially biological processes for plants or animals production (i.e. organisms which are not obtained by genetic engineering) other than non-biological and microbiological processes. According to the European patent Convention (EPC) and the Swiss federal patents law (in Article 2) “essentially biological processes” are not patentable either but the definition of this expression is quite vague. For example the European Patent Office (EPO) granted a patent to a firm from the United Kingdom which was applying for a selection method not involving genetic manipulations and enabling an increase in the content of anticarcinogenic glucosinolate in broccoli plants. The patent includes selection processes as well as the broccoli seeds and edible broccoli plants obtained.
This book asks the essential question of what are the possible consequences of adopting patents for for plant and animal varieties obtained through biotech processes on farmers autonomy and rights? Who is the owner of genetic resources elaborated and selected by indigenous rural communities? How to differentiate knowledge acquired in a laboratory from public knowledge (traditional, local, regional)? How to make the difference between a traditional use (for example the empirical use of certain plants with a presumed therapeutic effect) often without a scientific basis and a knowledge based on rigorous research work?
It is therefore a reasonable question as to how to guarantee a application of WTO law, in a manner consistent with WTO members’ human rights obligation in health. The major tenets of these arguments are that there is the existence of a legal right to access to medicine, although not explicitly mentioned in any agreement. Further, that the adoption of patent legislation under TRIPS leads to higher drug prices, rendering certain drugs unavailable to portions of the population. And finally, that this price effect can infringe the right of access to medicine, even though the prices are set by private individuals.
This has become a major issue as developing countries try to use of international law to gain access to life saving medicines in light of the price of AIDS medicine, as well as medicines for bird flu and for anthrax. This is certainly a topic worthy of further discussion.
The Economic Importance of the US-India Relationship
featuring Congressman Steve Chabot
Congressman Chabot will discuss Washington’s role in helping US companies do business in India.He is Chairman of the House Subcommittee on The Middle East And South Asia.
October 19, 2011, 6:00-9:00 PM | Frost, Brown Todd Offices
3300 Great American Tower, 301 East Fourth Street
Cincinnati, Ohio 45202
Congressman Steve Chabot has served as Congressman in Ohio’s First Congressional District for fifteen years. Prior to his election to Congress in 1994, Chabot served on Cincinnati City Council and the Hamilton County Commission for four years on each body. He currently serves on the Judiciary, Foreign Affairs and Small Business Committees. Congressman Chabot is one of Congress’s leading advocates for fiscal responsibility. Nonpartisan taxpayer advocacy groups such as the National Taxpayers Union consistently rate him as one of the most pro-taxpayer members of Congress.
Please join us for dinner and discussion with Congressman Chabot. Seating is limited – reserve early. An Indian buffet (with veg options) will be served.
The India-US Business Alliance (IUSBN ) is a Cincinnati-based non-profit organization that facilitates trade and investment transactions between the US and India.
2020 Visionaries: Ohio experts highlight opportunities and trends in their respective niches
Keynote: BIO President & CEO Jim Greenwood discusses the future of biotech and the bioscience industry
Workforce & Education: how industry can better utilize and customize community college programs for workforce, and how undergraduate and graduate programs can be more responsive to human resource needs in the biomedical industry.
Starting Up: a comprehensive discussion of resources available to biomedical entrepreneurs and emerging companies; session also will include legal and liability/insurance advice
Regulatory Forum: FDA staff and Industry representatives serve as panelists. Topics will include: considering 510(k)s through the quality system; utilizing ISO 13485 audits in lieu of FDA Inspections; preventive action through the entire quality system, and more.
Plus an Early Evening Reception and Silent Auction
At the beginning of this month, AT&T rewarded some customers by giving them 1,000 free rollover minutes. While I’ll leave the debate of the dubiousness of such a reward to later, I just received a message from AT&T saying I have been upgraded and now can call any U.S. mobile phone for free:
“AT&T Free Msg: You and your FamilyTalk members now have FREE calling to ANY U.S. mobile phone. We’ve upgraded your messaging plan to Family Messaging Unlimited with Mobile to Any Mobile Calling at NO additional cost to you. Just our way of saying thank you for being an AT&T customer.”
I wonder if the competition from Sprint and Verizon is making AT&T nervous about retaining iPhone users. Well, I do love freebies. So, will I get the iPhone5? Rumors point to a number of possible changes:
an aesthetic redesign
an A5 processor with 1 GB of RAM
improved graphics handling
an 8-megapixel camera with a larger sensor
bigger screen
a dual-mode network antenna
a slimmer device
However, the one feature I want to see with the impending release of the iPhone 5 is the ability to actually make telephone calls without resorting to tactics to increase iPhone 4 reception. That will be the only deciding factor for me.
Great Patents is billed as a book on patent strategy that bridges the gap between primers, intended for those with minimal patent knowledge, and advanced books, serving practicing legal professionals. Divided into to sections, Strategies and Valuation, the book covers topics including venture capital, portfolio management, government contracts, assessing damages and patent sale.
The book is really geared towards guiding the small to mid-sized technology-based company in IP strategies. It acknowledges that companies pursue patents to make money and there may be strategies that companies do not currently use.
In the section “How a Young Company can Build and Manage its Intellectual Property,” Lawrence Rozsnyai of Metabolex lays out best practices for developing an intellectual property portfolio. Rozsnyai offers this:
What are your business goals? What is your competitive position? As patents make business sense only in supporting your commercial business objectives, answering these questions will be key in determining which patents you need to have and which patents will be nice to have. Focus on protecting your core ideas first. Then you can move on to protecting additional ideas or working on ways to extend the patent life of your core commercial product.
In the section “Obtaining Patents and Trade Secrets for Health Technology Companies,” Kevin McCabe of Sterne, Kessler, Goldstein & Fox writes:
The value of intellectual property (IP) to the start-up or early stage company, especially those companies focused in the areas o biotechnology and medical technologies … cannot be underestimated. Although all industry segments rely upon IP, health technology companies are particularly reliant upon IP. Therefore, it is critically important for health technology companies to understand the various aspects of IP, what each form of IP protection provides, and the limitations associated with each IP form.
Great Patents offers much guidance for the company that understands the basics of patents but is ready to move deeper.
kar·ma/ˈkärmÉ™/ 1. The sum of a person’s actions in this and previous states of existence, viewed as deciding their fate in future existences. 2. Destiny or fate, following as effect from cause.
As a part of my attempt to become a happier, calmer, and more optimistic person (i.e., the opposite of my natural personality), I’ve been thinking a lot about karma. I know, it sounds so very un-scientific.
Karma is the law of moral causation and is a fundamental doctrine in Buddhism. The Pali term Karma literally means action or doing. Any kind of intentional action whether mental, verbal, or physical, is regarded as Karma. It covers all that is included in the phrase “thought, word and deed”. Generally speaking, all good and bad action constitutes Karma. In its ultimate sense Karma means all moral and immoral volition.
One concept that struck me is the concept that you are your own karma. What you make yourself to be now, you will be in the future. What you are now, is precisely what you have made yourself to be in the past. What you sow, you shall reap.
I’m a true believer in karma. You get what you give, whether it’s bad or good. ~ Sandra Bullock
Though I don’t believe we are absolutely bound by Karma, I think that Karma is influenced to some extent by external circumstances, surroundings, personality, individual striving, and so forth. I just never really put conscious effort into changing it before.
It is in this light that I tried the past week to see if I could influence the world. When a homeless person asked for change, I gave him a $20. The same for a deaf girl selling sign language cards to make a living. Whatever I could do to make a difference, I tried it.
You know what? It didn’t work. It was like the anti-karma gods got together to smite me for even thinking I could change karma. And that doesn’t even count my daughter unknowingly running up a $400 bill on the iTunes store using my password.
But sometimes life feels negative because we become so focused on “what’s in it for me?” So, I’ve decided to continue because it did make me happy. Just knowing did, even if I’m the only one who knows. I plan to continue to give of myself and my time, and to give selflessly.
Start believing that you can change things and you will open the doors for change. And you can change things. It’s possible.
Editor-in-Chief Barista Stephen Jenei is a patent attorney and Owner of Jenei LLC. When not serving up patent chat over a steaming cup of java, he's handling a diverse intellectual property practice in the biotechnology, pharmaceutical and chemical fields. More info @ Jenei LLC
