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Global IP & Innovation Summit 2017 | 2017全球知识产权及创新峰会 - Overview

August 30 & 31, 2017 | 2 0 1 7年8月3 0 - 3 1日
Shanghai Marriott Hotel City Centre │ 上海雅居乐万豪酒店




Overview

Agenda

Speakers

Delegates

Venue

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The MIP Global IP & Innovation Summit 2017 took place for its sixth year in Shanghai and once again welcomed over 350 IP counsel, professionals and experts for two days of topical intellectual property discussions.

The agenda discussed the growing importance of intellectual property enforcement which has been consistently placed among the top handful of issues raised by companies doing business in China. There was also focus on the achievements of the IP courts due to their influential and essential role in leading many judicial reforms in China. Other discussions took place on amendments to the patent, trademark and anti-unfair competition laws, tracking recent trends in second medical use patents, trade secret protection, anti-counterfeiting solutions and Standard Essential Patents with particular reference to landmark decisions in Europe.

Read on below for the key takeaways from the event and you can also view photos from the Summit here.

DAY ONE
Keynote address: Guoqiang Lu, director general, Shanghai Intellectual Property Administration

  • Shanghai wants to be a science and innovation centre while trying to improve its IP system
  • Shanghai behind other cities in the world for PCT (Patent Cooperation Treaty) filings
  • Key priorities – State Council has promulgated IP reform proposal – aims to further enhance IP protection
  • New plan to promote IP reform – six pilot programmes across the nation
  • Shanghai Pudong IP Protection Centre created in July 2017 in Pudong New Area (where 30% of patents granted in Shanghai originate in Pudong New Area). Two industry verticals
  • Speed of approval and granting of patents will be accelerated by these initiatives
  • May be more IP protection centres in the future
  • Acceleration of training & development to meet demand for more patents – Shanghai IP School will open in September 2019. Will include a WIPO programme on design and a SIPO-backed masters degree in IP
  • Shanghai IP Exchange Centre set up in January 2017 to assist the transfer and commercialisation of IP rights

How to take advantage of the new method of software patents in China

  • Two-step test in US for invention in software method patents
  • Technical result – so patentable
  • Steps in execution have to be clear as well
  • Code to operate storage device

Recent developments in invalidating US patents with USPTO’s Patent Trial and Appeal Board (PTAB)

  • Limitation on scope of prior art before PTAB
  • Inter partes review (IPR); Post-grant review (PGR); Covered Business Method (CBM) proceedings at PTAB
  • 92% of cases handled through IPR petitions
  • Nine reasons why IPRs have become so popular, for example, cost, leverage, difficult for patent owner to amend claims, PTAB judges generally and practically experienced, can avoid or stay litigation, fast resolution
  • High institution and cancellation rates
  • Institution Decision – Scheduling Order – Final Written Decision – Patent Owner Response
  • Significant recent PTAB cases that were appealed in the Federal Circuit – Cuozzo Speed v Lee (first Supreme Court case to consider appeal of PTAB decision); Dell v Acceleron (new claim construction and opportunity to respond); Intelligent Systems v Illumina; In re Magnum Oil Tools (burden of proof); Arendi v Apple (common sense)
  • Message from Federal Circuit – don’t rely on PTAB to fix things
  • IPR / PGR tactics: Section 102 (novelty) v Section 103 (inventiveness): consider the audience of PTAB judges; stay true to the art. Petition strategy should be to frontload and go to PTAB as early as possible
  • Institution rates are high
  • Cancellation rates are high
  • Litigation has gone down – related to active PTAB – patent owners prefer to go there if they really want to challenge validity


Tracking global developments in life sciences

  • New patent system in Europe – UP; UPC; fundamental change to how patents will be litigated
  • UPCA (Unified Patent Court Agreement) – international agreement, includes harmonised substantive law provisions
  • Four types of patent – national, EP (European Patent) + UPC, EP – UPC, UP (Unitary Patent) and how they inter-relate is important
  • UP– can be granted in one go, but also revoked in one go
  • UP v EP?
  • At least 13 EU member states, who must include France, Germany and UK (the jurisdictions with the most patent litigation in Europe), have to ratify the UPCA for it to take effect
  • UPC’s jurisdiction – UP, EPs and patent applications, SPCs (Supplementary Protection Certificates)
  • Opt out / in of UPC jurisdiction: Stay out / in; opt out / in; opt back in. Staying in is the do-nothing option. Alternative is national courts
  • SPCs are based on national rights but new system is unitary
  • Cost, speed, certainty are all considerations when looking at advantages or disadvantages of national route
  • Surprises and pitfalls of UPC system v common law regimes, for example, lack of discovery, less emphasis on witnesses, cross-examination mostly written
  • Recent Japanese patent decisions: Chugai. Supreme Court affirmed the doctrine of equivalents under five principles. Most recent decision in case in Tokyo District Court on July 27 2017
  • Japan: more disputes, earlier invalidation actions, weakening of patent linkage, potentially broader protection, damages potentially available on what could have been achieved


Effective strategies for protecting your IP in Russia

  • Mature IP landscape
  • Two options for patents – Russian or Eurasian (Eight countries, including Russia - inventions only, no utility models or designs)
  • Eurasian patent: eight countries, including Russia; Russian language; unitary patent; combined annuities; same protection; national licensing and enforcement
  • Almost four times as many applications from China for Russian patents between 2011 and 2017
  • Trade marks: Russian – Madrid System; trade mark of Eurasian Economic Union  (five members including Russia and Kyrgyzstan
  • 500 more trade mark applications from China between 2011 and 2017 (Of the top 10 filers, only Korea and OHIM also showed increases)
  • No definition of infringement in Russian law, only an ‘act against the will of the IP owner’
  • ROSATOM: four models of IP ownership / management: technology transfer, joint technology development, IP rights for shares and capital for discounted licensing


Implementing the FRAND standard in China


Trademarks: branding in China

  • New legislation to strengthen enforcement
  • When brand owners update, so do the infringers
  • Anti-unfair competition law not enough to stop them


Reviewing the achievements of China’s IP courts

  • Technical investigator system
  • Jan – June 2016: 39 technical investigators in Beijing IP Court, worked on more than 250 cases
  • Research shows that when a technical investigator is involved, efficiency of deciding the case goes up by 87%
  • No denying there is a level of experienced judges in Chinese IP courts now



DAY 2
Unified Patent Court and Unitary Patent – are we nearly there yet?

  • Practical steps you need to take; decisions to be made
  • Currently: national / EPO (national designations)
  • Proposal: UP (Unitary Patent), an EU system, to apply in each member state that has ratified the UPCA (Unified Patent Court Agreement)
  • Spain (language), Croatia (haven’t got round to it) and Poland (economic study showed UPCA wouldn’t benefit the country) haven’t signed the UPCA
  • Thirteen member states have ratified, though not Germany (constitutional case) or UK (in the process post-June 2017 general election). Both, and France, are required to before UPCA can take effect
  • Will mean complex filing strategies
  • UP litigation: Court of First Instance in Munich (mechanical & engineering); London (life sciences & chemistry and Paris (physics and materials – the Central Division; separate local and regional divisions; Court of Appeal in Luxembourg, then CJEU
  • Brexit? UK pulls out or UK remains and UPCA is turned into an international agreement, not just an EU one
  • Opt-out – when and how? Transitional jurisdiction: for seven years after the UPCA comes into force, a European patent owner may opt out of UPC jurisdiction
  • Disclosure, expert witnesses not chosen by the court and cross-examination will all be possible under UPCA
  • Revocation only in the Central Division
  • Invalidation action where infringement takes place
  • Reasons to stay in: ability to influence case law; size of market and parties
  • Argument for opting out: you can opt back in
  • When to opt out? During sunrise period – three months before UPC starts, which will be four months after at least 13 member states, including France, Germany and UK, have ratified
  • Online system for opting out, which patent owners should familiarise themselves with
  • All subsidiaries must be party to the opt-out, not just the registered owner
  • Onus is on the owner to get the opt-out right – no effect until then


Enforcement issues – best practice and recommendations for IP owners

  • Evidence hard to collect if product not on sale
  • Can get someone overseas to order product from suspect infringer
  • Trade associations can also help with investigations
  • Philips – not so many counterfeits anymore, more trade mark infringement, for example, Philibus shavers on Taobao, but Alibaba refused to take action until the company had produced evidence that it owned the trade mark and it was being infringed
  • Have to invalidate trade mark before starting infringing proceedings if someone already has Chinese trade mark
  • Have to establish IP enforcement plan in-house
  • Questions and challenges, for example, technical features
  • Fourth revision of Patent Law most important in 2011
  • Change in law to strengthen enforcement was a big change
  • Patent litigation damages are increasing, for example, Watchdata in the Beijing IP Court in 2016 – an exemplary case re damages
  • How to define reasonable profit
  • How to get high damages awards in China – selection of court: different levels of aggressiveness; avoid where defendant is located; the higher level the better; collect as much evidence as you can through investigations, administrative enforcement; notary public
  • Coordinated strategy required. Online can influence offline and vice versa
  • Patent administrative enforcement: increase in number; improved efficiency; enforcement intensified; e-commerce / exhibition: more focus on infringement
  • Accepted administrative enforcement cases by Shanghai IP Administration: 2010 – 17; 2016 – 258; Zhejiang: 2011 – 123; 2015 – 8,584
  • Patent administrative enforcement cases accepted nationally went up by 36.5% from 2015 to 2016
  • Patent dispute mediation increasing
  • Over time a friendlier system for patentees


Trade secret protection: a new frontier for protecting your IP

  • Malaysia: no definition of trade secrets. Called confidential information

  • Vietnam: full set of laws, for example, labour, though not many actions
  • Japan: burden of proof has changed to put onus on infringer
  • China: general rules on civil law that are due out on October 1 this year will mention trade secrets for the first time, recognising them as IP rights
  • Enforcement: have practical goals; try to convince the court you are taking proper steps – get support from a third party; safeguard your rights – keep records. If you don’t have them, you might be in trouble
  • Criminal enforcement of trade secrets cases in China is difficult because of the courts’ conservative approach to such litigation
  • Administrative enforcement could be quicker and more cost effective
  • Actual loss must be >RMB500 which is hard to prove


Brand protection strategies

  • Large-volume counterfeiters are hiding online under multiple listings, with changed details, such as contact info, so they are not seen as large-scale counterfeiters
  • Multiple channels online – social media is becoming more important
  • Mars’s online counterfeiting issues are around petfood, not chocolate
  • 930 million users of WeChat so no surprise that counterfeiters and anti-counterfeiters have targeted it
  • 2015: the WeChat Rights Safeguarding Platform was created
  • Tencent has a process to find infringers but user education also important. No one-size-fits-all approach. Different verticals but the company is happy to sit down with owners


IP abuse, anti-trust and licensing in China

  • New guidelines for antitrust in Patent Law
  • Patent ownership not considered a monopoly act in Patent Law
  • Four-step approach to dealing with abuse of dominance under the Anti-Monopoly Law
  • ‘Relevant market’ an important concept
  • Big difference between US antitrust law (>100 years) and China’s (c.10 years), but China is learning quickly from more advanced countries
  • Overlap occurs where we can define market and market position
  • FTC v Qualcomm: unreasonable licensing; higher royalties charged if supplier used competitors’ chips; refusal to license SEPs to competitors; Apple v Qualcomm; refuses to use FRAND principles; market share and SEP focus but not enough for Anti-Monopoly Law
     



 

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