Overview of IPR in China: USPTO Perspective: Overview of IPR in China: USPTO Perspective Karen M. Hauda Attorney-Advisor Office of International Relations United States Patent and Trademark Office


IPR WTO Dispute: IPR WTO Dispute USTR formally requested WTO dispute settlement consultations with China on April 10, 2007 Deficiencies in China’s legal regime for protecting and enforcing copyrights and trademarks for a wide range of products Barriers China has placed on trade in books, music, video’s and movies Formal request for consultation is first step in pursuing WTO dispute settlement


China’s Legal IPR Deficiencies: China’s Legal IPR Deficiencies Excessively high thresholds for criminal liability Recently reduced from 1000 to 500 infringing works – amount of piracy or counterfeiting must be “serious,” “extremely serious,” “relatively large,” or “huge.” Disposal of Infringing Goods Permit seized goods to enter the channels of commerce Denial of Copyright Protection to Works Awaiting Censorship Review During review period unauthorized copies are placed into the market without threat of liability Scope of Criminal Law on Piracy China’s law appears to provide for prosecution of certain unauthorized reproduction only when accompanied by unauthorized distribution


Market Access Restrictions: Market Access Restrictions China maintains import and distribution limitations on certain copyright material Books, newspapers, periodicals, and audio and visual products These market access restrictions encourage rampant IPR infringement


Key U.S. – China Dialogues: Key U.S. – China Dialogues Joint Commission on Commerce and Trade (JCCT) – Intellectual Property Rights Working Group (IPRWG) USPTO and USTR co-chair the IPRWG U.S. - China Strategic Economic Dialogue (SED) Established in September 2006 Provides a broader strategic framework for issues related to innovation and IPR Limited progress in copyright and trademark IPR areas for which U.S. has requested WTO Consultations Consultations held first week of June 2007


Potential Areas for Progress: Potential Areas for Progress Patent Law Reform Several drafts developed by SIPO throughout 2006 Latest proposed amendment in December 2006 Provides for 6-month grace period Disclosure of source of origin (potentially retroactive effect) and leaves open other disclosure requirements and revocation of patent or no eligibility for a patent for inventions that “depend on genetic resources” and where the “acquisition and exploitation” of the genetic resource “are contrary to relevant laws and regulations of the State.”


WTO TRIPS Council: WTO TRIPS Council China has joined the Brazil/India et al. proposal in the TRIPS Council to amend the TRIPS Agreement requiring disclosure in patent applications of: Source and country of origin of inventions related to genetic resources and/or traditional knowledge Prior informed consent for use of the genetic resource or traditional knowledge Proof of benefit sharing agreement


TRIPS Council Proposed Amendment: TRIPS Council Proposed Amendment Consequences of incomplete/inaccurate/absence of disclosure is to not issue the patent or revoke the patent if it was issued Proposal is gaining momentum from developing countries Many developing countries have amended or are considering amendments to their patent laws in a similar fashion


New Patent Disclosure Requirements: New Patent Disclosure Requirements Will impact agriculture industry U.S. Concerns/Position on new disclosure proposal Doesn’t discourage/prevent misappropriation Doesn’t ensure PIC or equitable benefit sharing May upset ABS contractual agreements between parties if patent is revoked or not issued Creates uncertainty in patent system Hinders collaborative R&D/ joint ventures Role of patent system should not be a regulatory/enforcement regime New disclosure requirements will not improve the quality of patents


New Patent Disclosure Requirements: New Patent Disclosure Requirements U.S., Japan, Korea – Strongly opposed Australia, Canada – Not convinced appropriate way forward Switzerland – Voluntary national implementation of mandatory disclosure of source or origin, if known, OK EU – Mandatory disclosure requirement OK, but sanctions outside patent system Norway – Mandatory disclosure of source and country of origin, if known, and sanctions in patent system Brazil, India & large developing country contingency – Mandatory disclosure of source & country of origin, PIC, and proof of ABS agreement and heavy sanctions


USPTO IPR Efforts in China: USPTO IPR Efforts in China IPR attaché in Beijing; 2nd attaché in progress WTO request for dispute consultations put a chill on USG IPR dialog overall, but: USPTO & SIPO dialog still strong Collaborative efforts among the 5-largest patent offices USPTO, EPO, JPO, KIPO & SIPO Agreement to further enhance Worksharing efforts Information exchange Priority document exchange IT system harmonization/cooperation


PVP in China: PVP in China Strong emphasis on enhancing PVP IPR regime for domestic protection/enhancement Strong belief that many plant varieties indigenous to China have been exploited unfairly – TK/GR support is likely an attempt to clawback/recover benefits SED innovation dialog has emphasized desire to protect indigenous innovation Transparency of system remains problematic Recent evidence of recognition for stronger judicial protection – Highest People’s Court issued/passed Notification of the Highest People’s Court concerning trial proceeding in courts for disputes in new plant variety rights Rules for certain applicable legalissues concerning trial proceedings at the Highest People’s Court for disputes in new plant variety rights – effective February 1, 2007


PVP Protection in China: PVP Protection in China Recent publication (April 2007) in Xun-Ning Yi (editor Wei-wei Wang) discusses 10-year anniversary of PVP protection in China; Expresses that - “Establishing intellectual property rights in the agriculture field is vital to insuring the wellbeing of China’s agriculture and crop safety.” “Protection is the core.” “Further opening up and strengthening international cooperation and exchange on new plant variety issues, actively participating in establishment of UPOV international regulations, and enhancing China’s influence and position at UPOV”


Thank you. For further information, please contact: USPTOOffice of International Relations(571) 272-9300karen.hauda@uspto.gov: Thank you. For further information, please contact: USPTO Office of International Relations (571) 272-9300 karen.hauda@uspto.gov Karen M. Hauda Attorney-Advisor, Office of International Relations United States Patent and Trademark Office