June 26, 2016
Companies often rely on trade secret protection for their most valuable intellectual property. Trade secret can protect many different types of valuable information such as chemical formulas, business or manufacturing methods or processes, software programs or designs. In the US, trade secret protection has been a matter of state law. However, on May 11, 2016, President Obama signed into law the first federal trade secret law, the Defend Trade Secret Act (DTSA).
For an overview of the new law, take a look at http://www.finnegan.com/news/newsdetail.aspx?news=08ded6c4-1886-4dde-b8f2-86e1db18652c. Finnegan has also produced a podcast on the new law: http://www.finnegan.com/podcasts/PodcastDetail.aspx?pub=88e91d7c-89dc-46ba-9dfb-0a086e72d707. (Finnegan has long been a supporter of CERC IP work and Finnegan lawyer Shaobin Zhu contributed to the CERC IP Guide and is a member of the CERC IP Experts Group).
A more detailed description is available at http://www.jdsupra.com/legalnews/defend-trade-secrets-act-signed-into-law-73692/ and a comparison of the new DTSA and the EU Trade Secret Directive can be found at http://patentlyo.com/patent/2016/05/comparison-secrets-directive.html.
For some practical insights into protecting trade secret in the US and China, see Allen & Overy Partner, Benjamin Bai’s presentation to CERC at http://www.us-china-cerc.org/pdfs/Trade_Secrets_in_China_tutorial_BAI.pdf.
The Center for Responsible Enterprise and Trade (cREATE.ORG), is a non-profit organization that has long provided expertise to CERC. President and CEO, Pamela Passman is a member of the CERC IP Experts Group and cREATE.ORG has participated in CERC IP workshops, trainings and webinars.
cREATE.ORG has published a very useful eBook, Safeguarding Trade Secrets and Mitigating Threats, to help companies understand how to protect trade secrets and critical business information from cyber attacks, insiders and other threats. The free eBook includes:
- A five-step framework to help companies assess and safeguard trade secrets.
- Guidance about the elements of an effective program to protect critical business information.
- Checklists of top actions a company should take to improve business processes.
December 20, 2015
Only about 30 years old, China’s patent law has gone through three rounds of reform. China just released the “Draft 4th Amendments to the Chinese Patent Law” for public comments, which are due by Jan 1, 2016. The blog, IP Watchdog has posted a good summary of the new proposed amendments and China Law Translate has an English comparison between the old and new versions, which also details the 3 possible methods to submit comments.
DOE Video – Supporting Departments of Energy and Commerce Joint Trade Mission to China on Clean Energy – IP and China
August 20, 2015
Delegates in the US Department of Energy/Department of Commerce Trade Mission to China in April, 2015 expressed interest in further discussion of the management of intellectual property when an American company does business in China. The Chinese IP legal environment continues to evolve, with the addition of new IP courts, stronger enforcement and good and improving success rates for foreign patent holders in litigation in China. Produced by the US-China Clean Energy Forum for DOE and CERC, experts shed light on the current status of IP protection in China and provided their insights into best practices to protect IP when you take your business to China.
Topics presented, below, were followed by a lively panel discussion in this :90 video.
IP in China, a rapidly evolving story – an overview of the legal environment in China, including the litigation landscape, the new IP courts, and strategies to reduce risk for your business. Benjamin Bai, Partner, Allen & Overy LLP
Preserving Trade Secret – Smart management strategies and practices to protect trade secrets. Leslie Benton, Vice President, Advocacy & Stakeholder Engagement, CREATE.org.
Managing Patents – Strategies in establishing your business presence in China. Erik R. Puknys, Managing Partner, Palo Alto Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.
A Business Perspective – deciding to bring your business and IP into China’s market. Christine M. Lhulier, Corporate Counsel, DuPont Industrial Bioscience at DuPont.
The US-China Clean Energy Research Center – A new approach to joint innovation that puts a spotlight on IP management. Stacy Baird, Executive Director of the US-China Clean Energy Forum (CEF) Intellectual Property Program
February 17, 2015
In Considering Patent Law Changes, Don’t Forget Impact on Universities.Washington State University (WSU) and the University of Washington (UW) recently released a report that provides valuable insight into how university R&D spurs industry innovation and economic growth and highlights the need for careful consideration by Congress when thinking about any changes to our patent system. Brian Pomper, the Executive Director of the Innovation Alliance, a group that represents several research organizations on policy issues, summarizes. I encourage you to take a look at this summary and the UW/WSU report. (BTW, this post doesn’t represent an endorsement of Innovation Alliance).
December 11, 2014
Trade Secrets – A Viable Alternative to Patents – IPWatchdog.com | Patents & Patent Law. Attorney Peter Toren offers some thoughts on why it’s important to consider Trade Secret as one tool for IP protection.
October 12, 2014
Prior to October 8, 2014, electronic retrievals of priority documents between the United States Patent and Trademark Office (USPTO) and the State Intellectual Property Office of the People’s Republic of China (SIPO) were managed through an intermediary, the World Intellectual Property Office (WIPO) Digital Access Service (DAS), through the WIPO DAS agreement established in April 20, 2009.
On October 8, 2014, the USPTO and the SIPO implemented direct electronic exchange of priority documents. The more direct connectivity benefits both the SIPO and the USPTO by reducing administrative costs, and benefits applicants both by reducing the cost of ordering copies of priority documents and by providing priority documents to the Office of Second Filing in a more timely manner.
There is no fee for this service. Now that the direct electronic exchange program has been implemented, the USPTO no longer requires an Access Code and no longer uses the WIPO DAS to retrieve electronic priority documents from the SIPO. Also, design applications and international applications filed under the Patent Cooperation Treaty are not available through direct electronic exchange as of October 8, 2014.
Factors to consider during the change in the electronic retrieval method:
For U.S. applications filed:
- before June 1, 2012, which claim priority to an application(s) filed in the SIPO, applicants are required to furnish a form PTO/SB/38 to request retrieval under the direct electronic exchange.
- on or after June 1, 2012, and before March 18, 2013, which claim priority to an application(s) filed in the SIPO, and for which retrieval is set, but retrieval did not occur prior to the October 8, 2014 start date, the USPTO will take steps to identify the SIPO applications and request direct electronic exchange.
- on or after March 18, 2013, and before the October 8, 2014 start date, which claim priority to an application(s) filed in the SIPO, and for which an Access Code has been provided and retrieval is set but did not occur prior to the October 8, 2014 start date, the USPTO will take steps to identify the SIPO applications and request direct electronic exchange.
- on or after March 18, 2013, and before the October 8, 2014 start date, which claim priority to an application(s) filed in the SIPO, and for which no Access Code has been provided (information necessary for retrieval not provided) and retrieval is not set due to the missing Access Code, applicants are required to furnish a form PTO/SB/38 to request retrieval under the direct electronic exchange to reinitiate a priority document request if the certified copy requirement has not been satisfied.
Applicants are advised that they continue to bear the ultimate responsibility for ensuring that the priority document is filed by the time limit set forth in 37 CFR 1.55.
Questions about this announcement may be directed to Tamara Graysay, Special Program Examiner, International Patent Legal Administration, 571‐272‐6728, or to Don Levin, Director, Office of International Business Solutions, 571‐272‐3785.
Comments may be directed to the Priority Document electronic mailbox at email@example.com. Electronic mailbox inquiries are returned within one business day.
He Jing has long been an advisor on CERC IP issues and is a contributor to the forthcoming CERC IP and Technology Transfer Guide). He can be contacted at hejing [at] anjielaw [dot] com.
After an expedited legislative process over the last 9 months, China’s legislature passed a bill on August 31 announcing that three specialized IP courts will open up in Beijing, Shanghai and Guangzhou. Supreme People’s Court is in charge of the actual operational details and has vowed to have these courts up and running by the end of 2014. All the three specialized IP courts will be intermediate-level courts, meaning that they will handle many cases as the court of first instance and the decisions may be appealed to provincial-level higher people’s courts.
It is no secret that the establishment of the specialized courts is to better deal with “technology centric” matters such as patent and trade secret cases. The new courts will act as the court of first instance to handle civil infringement cases involving patents, new plant variety, layout designs of integrated circuit and trade secret cases. Also, the Beijing Specialized IP Court will be responsible to act as the court of first instance to review all the patent validity and patent prosecution decision coming out of Patent Review Board (PRB). The rational is that a specialized court will deliver more “consistent” decisions through a group of specialized judges especially on those patent case or IP cases involving complicated technological matters.
The idea of specialized IP courts went back as far as mid-1990s. Chinese IP judges and professors already proposed the idea of establishing specialized patent courts. The very idea was brought to life and was heavily researched in 2006-2008 at the time China was planning the third amendment of the patent law. Many people advocated the idea of establishing a higher court level IP court, similar to the US Court of Appeals for the Federal Circuit, Japan IP High Court, and Taiwan IP High Court. But the government dropped the plan. One reason is that the new establishment of the IP courts would require substantial changes of the various court organization legislations. It would have consumed significant amount of political capital to make the change.
While almost nobody believed the specialized court would become possible in China in any near future, China announced its new reform roadmap in the Third Plenum Resolution in October 2013, which stated that China will “explore” the establishment of specialized IP as a way to improve IP protection. This completely changed the momentum, directly resulting in a quick launch of the specialized IP courts.
What is notably interesting is the debate among leading scholars, IP judges and IP practitioners around what should be the form of the specialized IP court. People generally believe the specialized courts are indicative of pro-IP policy directions. At the same time, many observers strongly advocated that new specialized IP courts should be an appellate court at provincial level. Under the current model, an IP court at intermediate court level has no power to render final judgments in high stake cases, including those related to TRAB cases. The fact that the IP court decisions will be appealed to provincial higher courts somewhat compromises the very purposes of specialized courts, as people may argue.
Despite the debate, the new specialized IP courts should be a fairly positive development for IP owners, or at least provide better opportunities for IP litigations. The establishment itself continues to prove China has strong interest to improve quality of adjudicating IP matters. The new courts may have some incentives to delivery positive results. One particular area is damages. China Premier Li Ke Qiang just announced at Davos Forum that China is going to impose “massive sum” of damages against IP infringers. The specialized IP courts should be the place for reflecting the new trend.
At a deeper level, the new courts may be indicative of the upcoming judiciary reforms plan in China. China has commenced pilot programs for judiciary reforms in Shanghai and other cities. One key measure is to increase staff support for judges and improve the budgeting and other benefits for the courts. Another measure is to increase the “independence” of the judges that are assigned to specific cases, which means minimizing any interference from third parties. The specialized courts may be the place for implementing such pilot programs at full scales.
The same legislative bill requires Supreme People’s Court to report back in three years about the outcome of the specialized IP courts. We expect that some judges with very strong IP background will play key roles in the new courts. The feedback from the IP world may be helpful for China to decide whether and how the specialized IP courts should evolve to next level.
U.S. Patent Prosecution for Support Staff: A Desk Reference: Rosaleen A. Walsh. I have yet to read this, but it looks interesting. The Amazon description: U.S. Patent Prosecution for Support Staff is a practical desk reference, designed to promote ongoing learning and job proficiency for paralegals and secretaries assisting patent practitioners in submitting filings to the United States Patent and Trademark Office. It presents complex filing requirements in an easy-to-follow format, and reduces volumes of information into concise, accessible learning points that will assist both novice and seasoned support staff alike as they work to develop or update the breadth and depth of their knowledge of U.S. patent prosecution. A comprehensive guide, U.S. Patent Prosecution for Support Staff provides a detailed step-by-step guide to the filing requirements for the most frequently filed activities in U.S. patent prosecution, as well as more novel filings. The content includes the most recent provisions of the America Invents Act, the American Invents Act Technical Corrections Bill, and the Patent Law Treaty.
July 31, 2014
Preliminary Injunctions in China: the Pendulum Has Swung Back! | Kluwer Patent Blog. Author Benjamin Bai, head of Allen & Overy’s China IP practice and a member of the US CERC’s IP Experts Group recently succeeded in obtaining a patent-based preliminary injunction in China, his third in the last year. Here he describes two of the patent PIs and two trade-secret PIs – observing that Chinese courts have changed their posture in a significant and very positive way with regard to preliminary injunctions.