Category Archives: Intellectual Property

CYBERSECURITY REQUIREMENTS SUSPENDED
Mar. to Jun. 2015 China Bulletin

The CBRC and Ministry of Industry and Information Technology (MIIT) have suspended the Guidelines on Secure and Controllable Information Technology that the Banking Industry Should Use (2014-15) (Guidelines) until further notice in order to consider feedback from lenders.   Foreign-owned financial institutions, foreign technology trade groups and others had protested that the Guidelines would have excluded foreign suppliers from the Chinese market; Continue reading

DRAFT PATENT ENFORCEMENT RULES
Dec. 2014 to Feb. 2015 China Bulletin

Faster Processing and Improved Online Enforcement:

On January 27, 2015, the State Intellectual Property Office (SIPO) released a revised draft of the Patent Administration Enforcement Rules (Rules) for public comment. The draft Rules are intended to improve procedures, reduce time required for litigation and improve enforcement against online infringers. Continue reading

CYBERSECURITY IN THE BANKING INDUSTRY
Dec. 2014 to Feb. 2015 China Bulletin

A Separate Chinese Market:

The China Banking and Regulatory Commission (CBRC) issued the Guidelines on Secure and Controllable Information Technology that the Banking Industry Should Use (2014-15) (Guidelines). The Guidelines have raised substantial concern among both foreign-owned financial institutions and foreign software and hardware suppliers to financial institutions in China. Continue reading

SERVICE INVENTION DEVELOPMENTS
Feb. to June 2014 China Bulletin

In August, 2012, the China State Intellectual Property Office (SIPO) issued draft regulations that would have added substantial new administrative burdens and legal uncertainty to compensation for service inventions. However, in June, 2013, the Shanghai High People’s Court issued Guidelines (Shanghai Service Inventions Opinion, Aug.-Sept. 2013, China Bulletin) that employers favored for providing reassurance and certainty. Recently in April, SIPO, issued an updated revision of the draft regulations that retain problematic provisions, such as mandating compensation for technological secrets and know how that are not patented (see English Translation). Continue reading

TRADEMARKS AND INTERNET – NICE CLASSIFICATION
Feb. to June 2014 China Bulletin

The Trademark Office of China (TMO) is a member state of the Nice Union and, as of January 1, 2014, has adopted the 2014 version of the 10th edition of the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification). The changes will have significant impact on expanding and detailing Internet product and service trademark classification categories, including adding or moving: Continue reading

DRAFT TRADEMARK IMPLEMENTING REGULATIONS
Oct. 2013 to Jan. 2014 China Bulletin

The State Council recently issued a draft of proposed Implementing Regulations to the Trademark Law, with a February 10 deadline for comments.  (For recent changes to the law itself, see Major Revision of Trademark Law, Aug-Sept. China Bulletin).  Two significant changes proposed in the draft regulations are a substantial reduction of the time afforded to file supplemental evidence and arguments, and clarification of when an infringer commits a repeat offense or ”serious circumstances” exist warranting heavier fines.  Unfortunately, the draft regulations do not provide further guidelines to calculate the fines to aid local agencies in levying them.  The same applies to a lack of clear criteria in the new law for courts to award increased compensation against infringers.  Please click here for a detailed legal review of the proposed changes prepared by Joe Simone of the China IP boutique, SIPS.

Questions?  Contact Allan Marson at china.desk@ishimarulaw.com or +1 408-738-0592 for a complimentary consultation.

MAJOR REVISION OF TRADEMARK LAW
August-September 2013 China Bulletin

The Standing Committee of the National People’s Congress passed extensive revisions to the Trademark Law (see Draft Trademark Law in the Nov.-Dec., 2013, China Bulletin), which take effect from May 1, 2014, including changes to articles on:

  1. civil damages, increasing the cap on statutory damages (remarkably) 6 times over its current level to RMB 3 million ($490,000), prioritizing damage calculation methods, and introducing punitive damages up to 3 times actual or statutory damages (as applicable) for malicious or “serious” infringement;
  2. enforcement, raising the administrative penalty limit from 3 up to 5 times illegal earnings, Continue reading

SHANGHAI SERVICE INVENTIONS OPINION
August-September 2013 China Bulletin

In August, 2012, the China State Intellectual Property Office (SIPO) issued draft regulations that caused consternation among employers because, if promulgated, they would have created substantial new administrative burdens and legal uncertainty with regard to remunerating employee inventors (see Draft Rules on Service Inventions, November-December, 2012, China Bulletin).  The draft regulations were not promulgated, but in January, 2013, SIPO and several ministries did issue opinions that apply to state-owned enterprise employees (see Service Inventions, January-February, 2013, China Bulletin).  In a more recent development, the Shanghai High People’s Court issued the Guidelines on Adjudication of Disputes Involving the Rewards and Remuneration of Inventors or Designers of Service Inventions and Creations (the Guidelines) on June 25th.  This opinion, posted and then removed from the Court’s website, should, if followed by lower courts, provide substantial reassurance and certainty to employers in Shanghai. Continue reading

INTERDIGITAL V. HUAWEI – EXCESSIVE ROYALTIES
April-May China Bulletin

On February 4, 2013, the Shenzhen Intermediate People’s Court issued two rulings in a patent licensing dispute between InterDigital and Huawei.  The Court decided that InterDigital abused its patent rights by requiring Huawei to pay “excessive” royalties for essential patents for mobile telephone technology and by tying standard essential patents with non-essential patents.  It referred to complaints InterDigital had filed with the ITC and the Delaware District Court in the U.S. in an attempt to ban Huawei from using the patents while negotiations to license the patents were ongoing. Continue reading

SERVICE INVENTIONS
January-February 2013 China Bulletin

In November, the State Intellectual Property Office released the Draft Service Invention Regulations (reviewed in the November-December China Bulletin).  Of particular concern in the regulations is an expansion of the scope of service inventions to know-how, requiring employers to track inventions and inventors themselves post-employment and potentially across generations.  Several provision in the regulations also would expose employers to new claims by employee-inventors.  The American Bar Association, the US-China Business Council and other organizations and businesses have expressed concern about several provisions of these regulations to the State Intellectual Property Office (SIPO). Continue reading