King & Wood’s Intellectual Property Group

In recent years, the world has witnessed several milestone events signaling the arrival of a new generation of global internet companies. Apart from the much-hyped dawn of social media, there is a much broader trend taking place, one that has outgrown the traditional boundaries of the tech sector itself. “In short,” as Marc Andreessen wrote in a recent Wall Street Journal column, “software is eating the world.” As corresponding developments are happening in China, this new era has caused and will continue to cause dramatic implications on the monitoring and enforcement of intellectual property rights in the country.


Continue Reading Enforcing Intellectual Property Rights in the Next Internet Era

By Richard  Wigley of King & Wood’s Intellectual Property Group

Background on the Campaign

High rates of intellectual property rights (“IPRs”) infringement in China have in recent years been of increasing concern to foreign and domestic rights holders alike. Though, as China is a developing country, such high rates of infringement are, arguably, to some extent an economic structural issue, these infringements are seen as an impediment to China’s economic growth prospects. Furthermore, China has an obligation as a signatory of TRIPs (Agreement on Trade-related Aspects of Intellectual Property Rights) to maintain an effective regime for the protection of IPRs.


Continue Reading National Campaign to “Crack Down” on Intellectual Property Rights (“IPRs”) Violations: Economic Development through Improved IPR Enforcement

By Li Ruihai and Su Juan, King & Wood’s IP Department

Patent ownership disputes arise, when a party challenges the ownership of a patent right at the State Intellectual Property Office (SIPO) and files suit with the People’s Court to seek rectification of the ownership of the patent. Article 135 of the General Principles of Civil Law of the PRC (Civil Law) provides that "unless otherwise stipulated by law, the statute of limitations to file civil actions with the People’s Court shall be 2 years." The PRC Patent Law (Patent Law) provides no specific provision regarding the statute of limitations in patent ownership disputes. Hence, issue arises as to whether the court can, upon the defendant’s request, dismiss the plaintiff’s claim for patent ownership due to the statute of limitations for civil actions.


Continue Reading Limitation of Actions Regarding Patent Ownership Disputes

On April 21, 2009, China’s Supreme People’s Court promulgated its “Opinion on Several Issues Concerning Trials of IP Cases to Serve the Public Interest under the Current Economic Environment” In this Opinion, the Supreme People’s Court first clarifies that injunctive relief should not necessarily be granted in all intellectual property infringement cases. Under certain circumstances, the Court stated that an award of reasonable or sufficient damages can be an effective substitute for claims of injunctive relief.

Xu Jing, Partner, Intellectual Property


Continue Reading Injunctive Relief Alternatives in IP Related Cases in China

In recent years, second hand trading of software has experienced substantial growth and the legal issues involved in such transactions have also caught the eyes of the players in the industry. Generally, the legality of software resale is decided by whether the distribution rights of the copyright owners are exhausted upon the transaction. However, it is difficult to decide when a transaction should be regarded as "licensing" and when the transaction should be deemed as a "sale". As the number of software resale cases brought before the courts increases, the courts’ understanding of the nature of software trading develops. Various jurisdictions have formed their own approach on differentiating an act of sale from that of licensing.

Common copyrighted products such as books or CDs can be resold because most countries adapt the "doctrine of exhaustion of distribution rights" in their copyright law, namely once a copyright owner publicly distributes his/her original work or the copies of such work by way of "sale" or "gifting", the distribution right will be deemed exhausted and the owner may not reclaim such right.

Xu Jing, Partner and Zhao Ye, Associate, IP Litigation


Continue Reading Software Resale: A China IP Puzzle Part I

In recent years, search engine providers, P2P website or other Internet service providers are often challenged in the courts by content owners. While the legal actions brought by international record companies are constant headaches for major Chinese search engine providers, including Baidu, Yahoo and Sogou, international search engine giants like Google and YouTube have also been struggling to resolve various lawsuits internationally.

These cases raise the same issues for legislators and judges in all jurisdictions — how to evaluate the business models of Internet Service Providers or Online Service Providers ("ISPs" or "OSPs", collectively "ISPs") and the responsibilities and obligations for copyright protection of the ISPs?

In 2007, the US Ninth Circuit Court of the State of California rendered its judgment for Perfect 10, Inc. v. CCBill LLC. The California Court granted CCBill LLC immunity under the Safe Harbor Principle on the ground that the notice for removal sent by Perfect 10, Inc. failed to provide sufficient information and could not be deemed as effective notice. The intention of the US Congress when adopting the Safe Harbor Principle was to ensure that liabilities are shared fairly between the parties by requiring the copyright owner to bear the burden of proving the existence of infringement.  These safe harbor provisions are designed to shelter service providers from the infringing activities of their customers. The California Court’s decision has been interpreted by US legal professionals as another affirmation of the application of "Safe Harbor Principle" to ISPs.
 

He Wei, Partner and Wang Yaxi, Associate, Intellectual Property


Continue Reading Perfect 10, Inc. v. CCBill LLC — Insights on the Applications of the Safe Harbor Principle and how this is applied in China