17.00: End of day 1. More updates tomorrow (Thursday)
16.10: IP (e)valuation
In the last panel of the day, the panelists discussed patent valuation and monetisation in China. Ye Tao, general manager of Shanghai BiLi Patent Evaluation, said patent transaction, licensing and mortgage are the most common methods to monetize patent assets.
“Evaluation plays a major role in patent monetization. It roughly takes a month to complete the evaluation process”, he said. In 2015, Chinese companies successfully borrowed some Rmb 50 billion using patents as collateral.
Unfortunately, Douglas Graham, CEO of Iddex couldn’t join in the meeting in person. If anyone is interested to know his viewpoints on this topic, his presentation PowerPoint can be found online after the conference.
14.50: Second medical use claims
The next panel aimed to demystify second medical use claims. China follows the Swiss-type style of claims, said Wenjun Geng of Chintai Tianqing Pharmaceutical Group Corporation. But, she explained, in practice it is difficult to determine infringement - resulting in confusion for many, including doctors. Is a European approach the answer?
Alvin Deng, head of IP, Novozymes China, discussed the factors to consider when evaluating validity, including recent decisions in China, while David Shen (vice president, AstraZeneca China) raised the controversial question of removing indications. Moderator Ningling Wang posed a tricky question on traditional Chinese medicine, which prompted some debate.
14.00: Internet issues
"Collaboration wins" was the title of Niklas Fu's speech. Formerly with Alibaba, he is now senior digital enforcement manager with Richemont. He explained the notice and take down procedure for internet platforms: "The more proactive you are, the more support you will receive from the platform."
Fu concluded his talk with his own suggestions for brand owners: don't be aggressive, find out the platform's rules and the rationale behind them; keep the conversation going; choose a third-party vendor with local knowledge to protect your IP and tackle counterfeits; air your grievances and hope the platforms pay attention.
"Who are trade mark squatters? What drives them?" asked Iris Chao, senior trademark attorney with Johnson & Johnson. Mainly, she said, they are traders looking for a profit, and she provided several examples from various countries. Chao highlighted particular pitfalls: translated names (including Chinese); nicknames; trade names; and event names. She also stressed the importance of registering on social media as well as the internet.
US IP attaché Joel Blank put the discussion in context, proiding some data on seizures of IP-infringing goods. "Counterfeiting will always exist," he said - but brand owners and intemediaries can work together to create new enforcement mechanisms, such as better screening, checking of authorisations, information sharing, payment provider checking and public information. We also need a better way to measure counterfeiting, he said.
The panel was moderated by Kedong Gong of Beyond Attorneys at Law.
In the final session before lunch, Vladimir Biriulin of Gorodissky provided a guide to IP protection in Russia, addressing the differences between national and Eurasian patents. He also outlined the enforcement options including civil and criminal actions (the latter can result in sentences including forced labour and prison).
One of the biggest developments over the past two years has been the IPR Court, and Biriulin provided data showing the increase in cases filed during that time.
11.20: US ITC proceedings
Introducing a session on Section 337 investigations in the US, Jianfeng Shen of Shenzhen Techvisum Technologies (and formerly of ZTE) said Chinese companies are becoming "more active" at the ITC, willing to challenge competitors.
Two speakers from Orrick described the latest developments. Ethan Ma spoke about the rise of trade secrets cases since the 2011 TianRui decision, concerning trade secrets misappropriated outside the US. He also encouraged respondents in new investigations to consider enforcing the 100-day rule.
Mark Wine discussed the domestic industry requirement, and the trend towards strict interpretation of this (illustrated by the 2013 Motiva and 2015 Lelo cases). "The ALJs are looking very granularly at domestic industry," he said. "It puts a challenge up to you as a plaintiff."
Finally, Wine stressed the serious consequences of failing to preserve electronically stored information, citing the recent GN Netcom v Plantronics decision in Delaware.
10.00: China's IP courts
In the second panel focusing on China’s IP courts, Xiaobing Wang of Lung Tin Law Firm & IP Agency summarised some trends including:
- Computer software accounts for about 40% of cases in the Shanghai court
- Foreign parties are particularly prominent
- Mediation is commonly used t resolve cases
- Many classical cases are processed in Beijing and Shanghai
- Technical investigators in Beijing and Shanghai are playing a bigger role
Jerry Xia, deputy general counsel and chief IP counsel, Honeywell, stressed that foreign parties are particularly well-prepared, for example when it comes to evidence in litigation. Two issues he highlights are damages and efficiency. “In future, we hope the IP courts can have some jurisdiction over criminal cases.”
Yaodong Chen, director IP APAC, global litigation counsel, AkzoNobel, commended the growing “openness” of the courts, but said there remain concerns about procedure, and discussed some recent decisions. "We hope that everything can be appropriately managed by the IP courts," he concluded.
Damages awards were addressed by Wushuang Huang, associate dean of intellectual property school, East China University of Political Science. So far, he said, the maximum award has been about Rmb450,000 but this is expected to increase substantially as case law develops.
9.10: IP and innovation in China
The first panel today is on the importance of IP and innovation in China. Lingfei Lei, legal policy director, Intel, described the importance of innovation for the semiconductor industry and Moore's Law: imagine if the automobile industry advanced at the same pace, he says - we would now have cars that travel 1 million miles per hour!
Raymin Ye, IP director, Xiaoi Robot, said IP protection is very important for his company given the pace of development in the robotics industry. "In terms of IP protection, we did have many problems ... with a better plan, we will have more IP rights," he says. "We want to catch up with our international counterparts."
As Shaobin Zhu of Finnegan noted, both speakers stressed the importance of identifying their core technologies, and building an IP policy - both offensive and defensive. Look at your competitors' IP and where they will be in the future, he said.
Topics discussed included trade secrets, international strategies, damages and valuation. Ye discussed the interaction with foreign counterparts: "In the US a patent will fetch a million dollars, but in China it's very difficult to fetch such a high price."
8.55: Keynote - turning patents into products
In his keynote address, Lu Guoqiang (director general of the Shanghai Intellectual Property Administration) explained a number of priorities with the aim, as he put it, of "turning patents into products" and focusing on quality as well as quantity.
In particular, he set out three administrative initiatives: a transaction centre "to overcome bottlenecks"; an operation fund to accelerate IP applications; and an information platform to be built and funded by the municipal government.
Lu also discussed enforcement, mentioning pilot projects on evidence in litigation and the establishment of arbitration centres in some districts of Shanghai.