Hosts: The Gao Lulin Foundation, Silicon Valley Intellectual Property Law Association

Sponsors: Beijing East IP Ltd./ Beijing East IP Law Firm, Tsinghua University School of Law

On October 2, 2014, the 2014 U.S. and China IP Dialogue Seminar was co-hosted by the Gao Lulin Foundation and the Silicon Valley Intellectual Property Law Association (SVIPLA), co-sponsored by Beijing East IP Ltd./Beijing East IP Law Firm (Beijing East IP) and Tsinghua University School of Law in Silicon Valley, home to many of the world’s largest technology corporations in the U.S.This Seminar created a senior platform to promote the U.S. and China IP academics and industrial exchange and cooperation. Through this Seminar, U.S. and China IP scholars, professionals, and attorneys engaged in in-depth discussions of the latest developments and enforcement of U.S. and China IP law.

The Seminar attracted more than 130 U.S. and China IP scholars, professionals, and attorneys arranging from Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Perkins Coie LLP, K&L Gates LLP, DLA Piper US LLP, Cooley LLP, US Hastings College of the Law, Shore Chan Depumpo LLP, Fenwick & West LLP, University of San Francisco School of Law, The John Marshall Law School in Chicago, International Intellectual Property Institute, Microsoft, Zynga Inc., Ericsson Inc., Fairchild Semiconductor, Yahoo!, Applied Materials, Inc., Samsung Research America, Nokia Inc.

Dr. Xiaodong LI, General Manager of Beijing East IP delivered welcome remarks

Dr. Xiaodong LI, General Manager of Beijing East IP and Mr. Andrew Schwaab of SVIPLA delivered their opening remarks to welcome all the attendees at the beginning of the Seminar. Both of them express their high expectations to this Seminar, and hope this unprecedented Seminar can push the exchange of U.S. and China IP exchanges to another level. Professor Weixing SHEN, Associate Dean of Tsinghua University School of Law followed with the morning Keynote speech focusing on “Innovation of China & IP Protection.”

After Professor SHEN’s speech, the Seminar dived into the following five topics surrounding the latest developments and enforcement of U.S. and China IP: 1) China Patent Developments and Enforcement, 2) Latest Trends of Patent Law and Corresponding Strategies for Foreign Applicants, Investors, and Companies, 3) SoftwarePatents in China and U.S., 4) Latest Developments and Recommendations Regarding NPEs, and 5) Latest Developments of China Trademark Law and Enforcement.

1. China Patent Developments and Enforcement

Martin Shively, General Manager Corporate Standards Ground of Microsoft moderated Panel 1 with presentations from Ms. Elaine Wu, Attorney at the Office of Policy and International Affairs of the USPTO, Mr. Xintian YIN, Former Spokesperson, General Director of Legal Affair Department of State Intellectual Property Office of China (SIPO), and Professor Guobin CUI of Tsinghua University School of Law.

Ms. Elaine Wu began her presentation with an introduction to SIPO, and developed into a series of explanations and interpretations of the latest developments and trends of China IP law, including the latest patent application filings from SIPO, the contents and trends of patent law amendment, service invention regulations, patent examination guidance amendment, judicial interpretations of patent infringements, China patent litigation trend, etc.

Mr. Xintian YIN began his presentation with a history of China patent law with a focus on two aspects of the latest patent law amendment: strengthen the enforcement of patent rights so to provide more effective legal protection for patentees, and prepare China to join the Hague Agreement to facilitate Chinese corporations to protect their design patents abroad. Mr. Yin discussed the actual contents of the patent amendment at length, analysis the effect and change to administrative investigation and enforcement between the patent law and the latest amendment. Mr. Yin also discussed the latest service invention regulations in-depth, and provided recommendations based on his experiences.

Professor Guobin CUI presented the enforcement of Standard-Essential patent and FRAND in China. Prof. CUI began with the choice of law when interpreting FRAND terms, where he used the Huawei v. IDC case to discuss the ambiguity in the legal nature of FRAND commitment. Prof. CUI concluded his presentation with a discussion on how to interpret FRAND statement under the China Contract Law.

2. Latest Trends of Patent Law and Corresponding Strategies for Foreign Applicants, Investors, and Companies

Dragon WANG, Vice General Manager of Beijing East IP moderated Panel 2 with presentations from Judge Yongshun CHENG, Former Deputy Chief Judge of the Beijing High Court IP Tribunal, Mr. Andrew Schwaab, Of Counsel of DLA Piper US LLP, and Dr. Jacques Michel, Former Vice President of the European Patent Office.

Judge Yongshun CHENG presented the new trends of Chinese courts in adjudicating patent infringement cases. Judge CHENG analyzed and commented on the following statistics, 1) the civil IP cases received and decided by all China courts from 2002 – 2012, 2) IP cases received by all China’s courts’ First Instance, and 3) civil IP cases received by all China’s courts’ First Instance. Moreover, Judge CHENG discussed changes of principlesapplied by the China courts in patent litigation at great length, and provided practical comments for foreign interested parties on patent litigations in China.

Mr. Andrew Schwaab provided practical strategies for American patent applicants and corporations who have litigations in China. Mr. Schwaab shared his experiences and discussed how US law firms and corporations can effectively prevail in China courts. During his discussion, Mr. Schwaab also invited Dr. Michel to share how the European counterparts win their lawsuits, effectively, in China.

Dr. Jacques Michel began his presentation with a history of cooperation on IP between China and the European Union. Dr. Michel then moved on to compare and comment based on different European countries’ patent filing, litigation statistics in China, where the statistics suggested that most of the European filings came from large corporations in European countries.

Mr. John Cabeca, Director of the Silicon Valley USPTO presenting the Luncheon Keynote Speech

3. Software Patents in China and the U.S.

Mr. John Cabeca, Director of the Silicon Valley USPTO presented the Luncheon Keynote Speech before the beginningof Panel 3. Director Cabeca introduced the latest status of the cooperation between the USPTO and China and talked about future developments. Mr. Brian Coleman, partner of Perkins Coie LLP moderated Panel 3 with presentations from Director Cabeca, Dr. Lulin GAO, Chairman of Beijing East IP, Professor Robin Feldman of University of California Hastings College of the Law, and Mr. Teddy Joe, senior patent counsel of Zynga Inc.

Panel 3 had a different style of presentation due to the popularity of software patent related topics between Silicon Valley attorneys. Dr. Lulin GAO gave the only presentation that focused on business method related software patents. Dr. GAO compared the U.S., Europe, Japan, and China’s examination on business method related software patents with his detailed analysis from many landmark cases. Thereafter, Dr. GAO focused his presentation on China’s examination on business method related software patent, and used the Nokia v. Huaqin Telecom Technology Co. Ltdpatent infringement case as a sample. Dr. GAO concluded with suggestions on applying business method related software patent in China. After Dr. GAO’s presentation, Mr. Coleman raised many issues that he and many practitioners faced when dealing with software related problems inthe U.S. and China to the panelists. The panelists presented their views from their various background, including government, law firm, academic, and corporation. During the panelists’ discussion, many audiences also actively engaged and interacted with the panelists for more than 30 minutes.

4. Latest Developments and Recommendations Regarding NPEs

Dr. Wei Wei, Partner of Shore Chan DePumpo LLP moderated Panel 4 with presentations from Michael Warnecke, partner of Perkins Coie LLP, Kenie Ho, partner of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, and discussions involving Howard Chen, partner of K&L Gates LLP.

Dr. Wei began by sharing his definitions of NPE (Non-Practicing Entities) from his experiences as a patent attorney in the U.S., and gave a short comments on the advantage and disadvantage of the existence of NPE.

Mr. Michael Warnecke presented “The Latest Developments and Recommendations Regarding NPEs,” and provided a very detailed background introduction of NPE, and followed with the developments of NPE and the U.S. government’s action on NPE. Mr. Warnecke then discussed about the different roles of NPE and their impact to the IP field. He concluded his personal view of the current the future status of NPE in China.

Mr. Kenie Ho presented “The Changing Climate for Patents in the United States.” Mr. Ho questioned the recent trend of strict examination came out of patent case laws and patent law amendments. Mr. Ho then discussed the power delegated to the judges in the new AIA, and the shifting of economic burden to the NPEs with other panelists. Mr. Ho also provided his analysis of the latest U.S. patent appeal’s statistics and their impact to the NPEs.

5. Latest Developments of China Trademark Law and Enforcement

Mr. John Crittenden, partner of Cooley LLP moderated Panel 5 with presentations from Mr. Zhongqiang CAO, Former Deputy Commissioner of the Chinese Trademark Office, Professor Doris Long of the John Marshall Law School in Chicago, and Jason WANG, partner of Beijing East IP.

Mr. Zhongqiang CAO focused his presentation on the 2013 China Trademark Law amendments, and began with a short introduction of China’s trademark law history. Mr. CAO focused on the following three aspects of the amendments: 1) improve trademark registration regulation and facilitate the applicants, 2) maintain market order of fair competition, and 3) strengthen trademark exclusive right’s protection. During his presentation, Mr. CAO provided many detailed analysis and recommendations based on his experiences.

Professor Doris Long presented “The New Chinese Trademark Law: Sharper Tools for Trademark Enforcement?” to share and discuss with the audience the problems that are often faced when enforcing trademark rights in China, including: bootleg products, mistranslation, prior rights problems, enforcement problems in less developed cities due to China’s broad territory, etc. Not only did she pointed out these problems, Prof. Long also provided potential solutions to them.

Mr. Jason Wang used the Duck King trademark case that was selected by the Supreme People’s Court as the 2013 Top 10 Innovative IP Case. This case lasted for more than a decade, exhausted all possible legal procedures prescribed the law. It began with all the four administrative proceedings, i.e. rejection, rejection appeal, opposition, and opposition appeal, then both the two judicial proceedings (i.e. first and second instances), and then the first re-trial proceeding protested by the Supreme People’s Procuratorate and the second re-trial before China Supreme Court against the previous re-trial.Mr. WANG discussed the new standard of “Two Elements” established by the Supreme People’s Court, that is, “the knowledge standard” (knew or should have known) and “riding the goodwill standard” (with intention to free ride or invade other’s goodwill).

Finally, Mr. Bruce Lehman, president and chairman of the IIPI concluded the five panels with his presentation of “Cooperation or Conflict? The Way forward for the U.S. and China.” Mr. Lehman pointed out that U.S. and China are the two countries that holds the most patents in the world, therefore, the IP service industries in these two countries should cooperate in a great degree in order to assist the world’s IP development.

Beijing East IP hosted a cocktail reception after the conclusion of this one-day seminar for the panelists and the attendees. The atmosphere were very friendly, many attendees continued the discussion that they did not finish during the day, and exchange their views with the panelists or other attendees, which further elaborated the communication purpose of this seminar. Thereafter, the Gao Lulin Foundation hosted a banquet dinner to host all the panelists. Dr. GAO gave a special appreciation remarks to the panelists who were invited to this seminar. Dr. Gao concluded his remarks with the recognition of the this seminar’s purpose in improving the cooperation between the U.S. and China’s IP professionals.

Dr. Lulin GAO, Chairman of Beijing East IP gave his remarks at the banquet dinner

China’s rising economy puts intellectual property on the forefront of every major countries’ most concerned issues. Therefore, the communication scope, style, and representative-institutions between U.S. and China, two of the world’s most productive countries, seemed rather important. U.S. and China should consistently raise their trust in each other, minimize the difference between, increase the degree of cooperation. For this very idea, the Gao Lulin Foundation, SVIPLA, Beijing East IP, and Tsinghua University School of Law united to present the “2014 U.S. and China Intellectual Property Dialogue” Seminar, with the goal to provide a platform to strengthen the communication between the IP agencies between the U.S. and China, and create new energy into intellectual property practitioners in the many U.S. and China industries.