By Jeffrey Thurnau ( Assistant General Counsel for IP, Gates Corporation, USA) & Mia Qu (Partner, King & Wood Mallesons, Shanghai, PRC)

The intellectual property rights (IPR) protection of China has become a worldwide hot topic. China, as a manufacturing giant, will inevitably become a country with a large number of intellectual property related disputes related to manufacturing in transnational corporations (TNCs). Patent litigation is increasingly common in China. According to recent statistics, the number of intellectual property litigation cases in 2014 is about 133863, among which the number of patent litigation cases is about 10187. The authors of this paper participated in a patent litigation case in China through judgment as the Defendant and directly experienced patent litigation’s procedure and features in China. This paper intends to share with readers the authors’ observations and insights based on their personal experiences and will perhaps serve to address some of the concerns associated with patent litigation in China. This paper also provides some comparisons with United States (“U.S.”) practice.
Continue Reading

By: Richard Wigley ofKing & Wood ‘s Intellectual Property Group

Perceptions (and Misperceptions) of IPR Lawsuits in the P.R.C.

There is no question that many foreign companies operating in the People’s Republic of China struggle with the protection of their intellectual property rights ("IPR"). The concerns of companies with protecting their valuable IPR in a developing country such as the P.R.C. are legitimate and serious. Though many of the executives and attorneys of these companies may view themselves as "old China hands" and have many years of experience in fighting to protect their IPR in the P.R.C., many more are relative newcomers to China and their views of IPR protection are shaped by not only their own experience, but by the perceptions of others, which may or may not be valid. For instance, some overseas business executives or legal counsel on occasion may voice their view that pursuing litigation as a foreign firm against a P.R.C. company over an alleged infringement in a P.R.C. court is a waste of time and money, as either they have little chance of prevailing, or, if they should prevail, the damages awarded will be so small as to not provide any substantive deterrent. Though every alleged infringement is case-specific, it is, however, useful to separate the perceptions (and misperceptions) from the realities of foreign-related IPR litigations in the P.R.C.


Continue Reading

 By Peng Heyue,  King & Wood’s IP Department

Since the end of 2009, King & Wood has received regular requests from a number of foreign enterprises for advice on China’s ‘Indigenous Innovation’ Policy. These firms are concerned that the new policy will either force the transfer of their IP rights to China or will influence their business operations in the Chinese market by limiting their ability to compete with local domestic firms.


Continue Reading

By Shi Yusheng and Xia Fan, King & Wood’s IP Litigation Department

The newly promulgated Tort Law of the People’s Republic of China came into force on July 1, 2010. The Tort Law, positions itself as a fundamental doctrine in the protection of one’s civil and property rights in China. Intellectual property rights, such as copyrights, patent rights, trademark rights, are included in the scope of protection under the Tort Law. Accordingly, relevant provisions of the Tort Law will have substantial impact on  IPR infringement. While there are many intersects, one major impact is discussed below.


Continue Reading

By Kenneth Choy, Partner, King & Wood – Hong Kong

The United States Supreme Court finally issued its decision on Bilski v. Kappos just before it shut down for the summer. As widely expected, the justices unanimously agreed that the Bilski claims are abstract ideas which are nonpatentable and the Court of Appeals for the Federal Circuit properly rejected the claims. However, the court’s decision, authored by Justice Anthony Kennedy, left many dissatisfied as it declined to clarify limitations on the patentability of business method claims. The high court simply rejected the Federal Circuit’s view that the machine-or-transformation test was the exclusive test for patentable process claims and instead, looked back to the last century, to its cases of Gottschalk v. Benson, (1972), Parker v. Flook, (1978) and Diamond v. Diehr, (1981) to find the “guideposts” and §100(b) the Patent Act for the definition of “process”.


Continue Reading

By Mia Qu and Bessie Ye, King & Wood’s IP Department

To many foreign companies, China remains attractive as the world’s largest potential market for pharmaceutical products. As such products rely heavily on the protection of intellectual property rights, it is essential for foreign companies in this field to adopt a combination of IP protection methods to formulate a strategy for their products in China. To this end, China has established a relatively comprehensive legal system in relation to IPR protection where intellectual assets are protected by way of patents, trademarks, copyrights, and trade secrets.
 


Continue Reading

King & Wood’s IP Legal Group in Beijing

The Domain Name Dispute Settlement Center of CIETAC was established in December, 2000, and began operation on July, 2005, as the Internet Disputes Settlement Center. This Center accepts cases including cybersquatting of domain names (disputes on Chinese domain names, e.g. ".cn", and top-level general domain name, e.g.".com"), cybersquatting of general websites, wireless websites, text message websites, etc.


Continue Reading

Traditionally civil, administrative and criminal IPR cases have been heard by the Intellectual Property, Administrative and Criminal Divisions of the courts, respectively. For instance, both the IPR Tribunals and the Administrative Tribunals of the Beijing No. 1 Intermediate People’s courts were entitled to exercise jurisdiction over IPR administrative cases involving patent and trademark rights grants and determinations. The issue is that different divisions may apply different criteria to the same case.

Xu Jing & Zhang Hairuo, IP Litigation, King & Wood


Continue Reading

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

Wang Rui, Partner, International Trade

The Chinese legislature created a hybrid from the different approaches adopted by civil and common law jurisdictions through the Copyright Law of the People’s Republic of China (the “Copyright Law”) and the Regulations on the Implementation of the Copyright Law of the People’s Republic of China (the“Implementation Regulations”), and produced the twin concepts of “legal entity work” and “occupational work” for assigning rights to works made in the course of an employment relationship. For example, a book written by a group of employees organized by an entertainment company for celebrating the company’s anniversary would likely be considered “legal entity work”, but a piece of music composed by a composer employee (not for specific purposes) is “occupational work”, because in the former case, supervision of the company would be involved but the latter case it would not.
Continue Reading