Intellectual Property and TRIPS Compliance in China NEW HORIZONS IN INTELLECTUAL PROPERTY Series Editors: Christine Greenhalgh, Robert Pitkethly and Michael Spence, Senior Research Associates, Oxford Intellectual Property Research Centre, St Peter’s College, Oxford, UK In an increasingly virtual world, where information is more freely accessible, protection of intellectual property rights is facing a new set of challenges and raising new issues This exciting new series is designed to provide a unique interdisciplinary forum for high quality works of scholarship on all aspects of intellectual property, drawing from the fields of economics, management and law The focus of the series is on the development of original thinking in intellectual property, with topics ranging from copyright to patents, from trademarks to confidentiality and from trade-related intellectual property agreements to competition policy and antitrust Innovative theoretical and empirical work will be encouraged from both established authors and the new generation of scholars Titles in the series include: The International Political Economy of Intellectual Property Rights Meir Perez Pugatch Software Patents Economic Impacts and Policy Implications Edited by Knut Blind, Jakob Edler and Michael Friedewald The Management of Intellectual Property Edited by Derek Bosworth and Elizabeth Webster The Intellectual Property Debate Edited by Meir Perez Pugatch Intellectual Property and TRIPS Compliance in China Chinese and European Perspectives Edited by Paul Torremans, Hailing Shan and Johan Erauw Intellectual Property and TRIPS Compliance in China Chinese and European Perspectives Edited by Paul Torremans School of Law, University of Nottingham, UK and Faculty of Law, University of Ghent, Belgium Hailing Shan School of International Law, East China University of Politics and Law, Shanghai, People’s Republic of China Johan Erauw Faculty of Law, University of Ghent, Belgium NEW HORIZONS IN INTELLECTUAL PROPERTY Edward Elgar Cheltenham, UK • Northampton, MA, USA © Paul Torremans, Hailing Shan and Johan Erauw 2007 All rights reserved No part of this publication may be reproduced, stored in a retrieval system or transmitted in any form or by any means, electronic, mechanical or photocopying, recording, or otherwise without the prior permission of the publisher Published by Edward Elgar Publishing Limited Glensanda House Montpellier Parade Cheltenham Glos GL50 1UA UK Edward Elgar Publishing, Inc William Pratt House Dewey Court Northampton Massachusetts 01060 USA A catalogue record for this book is available from the British Library Library of Congress Cataloguing in Publication Data Intellectual property and TRIPS compliance in China : Chinese and European perspectives / edited by Paul Torremans, Hailing Shan, Johan Erauw p cm — (New horizons in intellectual property) Includes bibliographical references and index Intellectual property—China Foreign trade regulation—China Intellectual property (International law) Intellectual property (International law)—Compliance costs I Torremans, Paul II Shan, Hailing, 1959– III Erauw, Johan KNQ1155.I59 2007 346.5104′6—dc22 2006102434 ISBN 978 84542 875 Typeset by Cambrian Typesetters, Camberley, Surrey Printed and bound in Great Britain by MPG Books Ltd, Bodmin, Cornwall Contents List of contributors Foreword: the recent development and current status of judicial protection of intellectual property in China Hon Dr H.C Cao Jianming Preface Paul Torremans, Hailing Shan and Johan Erauw Table of cases Table of legislation Table of treaties and conventions Introduction: setting the scene Paul Torremans vii ix xix xxii xxiv xxx PART I TRIPS COMPLIANCE: SUBSTANTIVE RIGHTS Are Chinese intellectual property laws consistent with the TRIPs Agreement? Guo Shoukang and Zuo Xiaodong Substantive law issues in Europe a decade after TRIPs Paul Torremans 11 29 PART II TRIPS COMPLIANCE: ENFORCEMENT ISSUES The TRIPS Agreement and the changing landscape of international intellectual property Daniel J Gervais The fight against piracy: working within the administrative enforcement system in China Kristie Thomas Problems and new developments in the enforcement of intellectual property rights in China Jingzhou Tao Legal protection of copyright and trademarks in cyberspace in China Hon Jiang Zhipei v 65 85 107 125 vi Contents PART III NON-MAINSTREAM RIGHTS AND TRANSFER OF TECHNOLOGY 10 Confidentiality agreements and non-competition clauses John Adams Protection of know-how in Chinese enterprises and employment relationships Hailing Shan Protection of traditional knowledge: protecting poor countries’ intellectual property? Zhu Lanye Legal issues regarding contracts of technology import: a Chinese lawyer’s perspective Zou Weining 141 153 175 184 PART IV THE DEVELOPMENT AGENDA, TRIPS AND CHINA 11 12 The WTO–TRIPs patent regime after Doha: promises and realities Sigrid Sterckx Intellectual property rights and WTO compliance: Chinese and European perspectives Fientje Moerman PART V 13 195 212 POSTSCRIPT The agenda for the future Paul Torremans Bibliography Index 219 223 231 Contributors John Adams, Professor, Schools of Law, University of Sheffield (Emeritus), UK and University of Notre Dame, France Johan Erauw, Professor, Faculty of Law, University of Ghent Daniel J Gervais, Acting Dean, Vice-Dean (Research) and Osler Professor of Intellectual Property Law, Faculty of Law (Common Law), University of Ottawa, Canada Hon Dr H.C Cao Jianming, Vice-President of the Supreme People’s Court of the People’s Republic of China, Grand Justice of the first rank Jingzhou Tao, DLA Piper Rudnick Gray Cary UK LLP Zhu Lanye, Professor, East China University of Politics and Law Fientje Moerman, Deputy Minister–President and Flemish Minister for Economics, Business, Science, Innovation and Foreign Trade, Flemish Regional Government, Flanders, Belgium Hailing Shan, Professor, School of International Law, East China University of Politics and Law Guo Shoukang, Professor, Supervisor of PhD candidates, Law School of Renmin University of China, Chair of UNESCO Seminars on Copyright and Neighbouring Right Sigrid Sterckx, Professor, Department of Philosophy and Moral Science, University of Ghent, Belgium Kristie Thomas, Teaching Fellow, University of Nottingham in Ningbo Paul Torremans, Professor, School of Law, University of Nottingham, UK and Faculty of Law, University of Ghent, Belgium vii viii Contributors Zou Weining, Partner, Jun He Law Office (Beijing) Zuo Xiaodong, Director and Legal Counsel, Legal Department, China Grand Enterprises Group Hon Jiang Zhipei, Justice of the Supreme People’s Court of China, Director of the Third Civil Chamber, PhD in Law Foreword: the recent development and current status of judicial protection of intellectual property in China Hon Dr H.C Cao Jianming* INTRODUCTION In recent years, Chinese courts at all levels have strengthened all aspects of their work regarding the judicial protection of intellectual property rights These include increasing the degree of judicial protection for intellectual property rights, efficient fulfilment of judicial functions, acceptance and trial of cases in accordance with the law, strictly punishing crimes against intellectual property rights through a combination of all mechanisms of trial and enforcement measures, maintaining the order of the market economy with great resolve and creating a legal environment suitable for innovation Significant progress has been made GENERAL REVIEW OF JUDICIAL PROTECTION OF INTELLECTUAL PROPERTY RIGHTS IN CHINA The Chinese intellectual property regime has been established and has constantly been improved over the last 20 years, which coincides in time with the development of a market economy and the emergence and increase of intellectual property cases in Chinese courts Alongside the rapid growth of the Chinese economy, especially after China’s accession to the WTO and the adoption of innovation as a national strategy, the importance and urgency of protecting intellectual property rights has gained historical attention The focus of the construction of the intellectual property legal framework has shifted from legislation to implementation After years of efforts, China has primarily established a relevant and complete legal framework protecting * Vice-President of the Supreme People’s Court of the People’s Republic of China, Grand Justice of the first rank ix x Foreword intellectual property rights, which complies with the requirements of the WTO and is capable of meeting the needs of the nation’s development Judicial protection of intellectual property rights is an important component of such a framework for the protection of intellectual property rights Corresponding to Chinese procedural laws which divide into civil, administrative and criminal procedural law, judicial protection of intellectual property rights in China divides into three categories: civil, administrative and criminal judicial protection with civil judicial protection as the basis By carrying out their judicial duties in accordance with the law, Chinese courts have been effectively promoting works with respect to judicial protection of intellectual property rights, as a result of which the strength and the degree of protection has increased continuously Acceptance and Trial of all Types of Cases Involving Intellectual Property Rights in Accordance with the Law Chinese courts have been resolving various disputes involving intellectual property rights and protecting the lawful rights and interests of the proprietor through trial in accordance with the law of civil disputes between equal parties over intellectual property rights In recent years, and especially in those after China’s accession to the WTO, the following characteristics of civil cases involving intellectual property rights have manifested themselves First, there has been a wide range of different types of cases which have involved not only all types of rights covered by TRIPs, such as patents (inventions, utility models, industrial designs), new varieties of plants, trademarks, copyright, computer software, layout designs (topographies) of integrated circuits, trade secrets, geographical indications and so on, but also new types of intellectual property such as cyber copyright, practical arts and folk literature and folk arts Second, the number of cases has increased dramatically According to the statistics, in 2005, Chinese courts nationwide accepted 16 483 first instance, appeal and retrial cases concerning intellectual property, including anti-unfair competition cases, an increase of 20.66 per cent over the previous year They disposed of 16 453 cases, which represents an increase of 29.6 per cent over the previous year Third, the uneven geographical allocation of cases has become apparent Cases involving intellectual property are concentrated in economically developed areas such as Guangdong, Beijing, Jiangsu, Zhejiang, Shandong and Shanghai Civil intellectual property cases accepted in these six provinces/ municipalities have accounted for 65.38 per cent of the overall accepted intellectual property cases nationwide, and this percentage has been stable in recent years Index accomplice cumulative punishment and 119 action see case; claim Adams, John adjudication Criminal Offences Violating Intellectual Property Rights, Supreme Court Notice on xv Function of, Supreme Court Notice on xv quality, improving, judicial protection and xvi see also arbitration; mediation administration authority of, judicial organ and, poor coordination between 113–14 decision of, judicial review of 13, 18 penalties see fines regulations, technology import contract and 185 technology import contract and 186–7 see also administrative enforcement Administrative Authority for Industry and Commerce application to in accordance with Anti-Unfair Competition Law 159–60 criminal charges against infringer, filing 160–61 administrative enforcement fight against piracy and 4–5, 85–9, 105–6 system drawbacks 96–100 system strengths 94–6 trademark infringement, pursuing claim for 90–94 WTO entry impact on 100–105 poor, enforcement problem 108–11 see also administration; enforcemen Africa economics and 74 national knowledge optimization and 82 traditional knowledge protection and 178 WTO–TRIPS patent regime after Doha and 202, 206 see also South Africa AIC (Administration for Industry and Commerce) administrative enforcement system and 96, 97, 98, 102 contacting 91–2 powers 92–3 trademark infringement claim and 90, 94 weak criminal protection and 113 see also SAIC America see USA Anti-Unfair Competition Law application to Administrative Authority for Industry and Commerce in accordance with 159–60 compensation for infringement in accordance with 157–9 know-how protection and 153, 154, 167, 169 TRIPS compliance and 19, 24 see also legislation applicable law see legislation arbitration labour disputes 157, 158 see also adjudication; mediation Arbitration Committee for Labour Disputes 156, 157, 158, 171 assignment trademarks and 47–8 Australia traditional knowledge protection and 175, 182 author rights, to disseminate work 127 231 232 Index authority administrative, judicial organ and, poor coordination between 113–14 administrative action, of 95 awards national knowledge optimization and 83 Belgium trade relations with China 212–14 see also EU Bell, Mr Justice 150 Berne Convention for the Protection of Literary and Artistic Works copyright and, European substantive law issues and TRIPS 30–32, 37, 38, 39 TRIPS compliance and 21, 22, 23, 67, 68 WTO entry impact on administrative enforcement system and 100 Bhagwati, Jagdish 210 border measures enforcement and 26 see also Measures Boyle, James 197–8 breach of contract infringer’s liability for, confidence agreement and 156 see also contract burden of proof heavy 111–12 Butler-Sloss, Lord Justice 150 Canada WTO–TRIPS patent regime after Doha and 203 case all types of, acceptance and trial of x–xi civil, centralization of jurisdiction of xii criminal see criminal case judicial protection and x–xi patents infringement, Provisions on Several Issues in the Trial of Cases of Dispute over 190 trial of, Memorandum of Certain National Courts’ Working Conference on 165 see also claim; dispute; litigation China economics and 74 national knowledge optimization and 78 trade relations with Belgium 212–14 traditional knowledge and poor countries’ IP protection and 182–3 WTO–TRIPS patent regime after Doha and 203 civil jurisdiction centralization of, judicial protection and xii see also jurisdiction Civil Procedure Law copyright and trademark protection in cyberspace and 133, 134 enforcement and 114 jurisdiction of civil cases, centralization of xii know-how protection and 162, 163, 165 TRIPS compliance and 12, 14–15 see also legislation civil proceedings disputes involving domain names 133 inefficient 111–12 provisional measures application, judicial protection and xiii–xiv see also trial civil remedies jurisdiction hierarchy with criminal penalties 164–6 preventing further damage to trade secrets 161–4 see also damages; provisional measures; remedies claim trademark infringement 90–94 see also case; litigation coalition building national knowledge optimization and 81 Cohly, Hari Har P 177 Index compensation infringement, for, in accordance with Anti-Unfair Competition Law 157–9 insufficient 112 see also damages; remedies competition see non-competition compilations of data (Art 10 TRIPS) copyright and 21, 34–5 copyright updating and 33–4 Complaint Acceptance Unit 122 compulsory licensing copyright 23 patents 13–14 see also licensing computer programs (Art 10 TRIPS) copyright and 21, 34–5 copyright updating and 33 confidentiality employee’s duty in respect of trade secrets 170–71 non-competition and 6–7 confidentiality agreement know-how protection and 141–2, 152 contracts in restraint of trade 143–6, 151–2 employer/employee covenant 146 infringer’s liability for breach of contract and 156 know-how and trade secrets 146–51 contract employment, application to Local Arbitration Committee for Labour Disputes on ground of 157 in restraint of trade 143–6, 151–2 technology, Memorandum of Nationwide Court Working Conference of Intellectual Property Trial on Several Issues Concerning the Hearing of 154 see also breach of contract; technology import contract Conventions see Berne Convention for the Protection of Literary and Artistic Works; International Convention for the Protection of New Varieties of Plants; Paris 233 Convention; Rome Convention; UPOV cooperation national knowledge optimization and 81 coordination poor 108–9, 113–14 copyright Chinese IP law consistency with TRIPS 20–24 cyberspace, protection of 6, 125–32, 137 infringement, network service provider’s liability for 129–32 European substantive law issues and TRIPS 30–39 piracy, criminal law and 26–7 see also IP Copyright Law administrative enforcement system and 85, 100, 101, 103, 104 copyright and trademark protection in cyberspace and 125, 127, 128, 131 enforcement and 110, 119, 120, 121 know-how protection and 163 TRIPS compliance and 11, 20, 21, 22, 23 see also legislation cost-effectiveness administrative enforcement system strength 94 costs administrative enforcement system drawback 96–7 enforcement, problem 110–11 courts acceptance and trial of all types of IPR cases x–xi jurisdiction of civil cases, centralization of xii trial organization improved xii see also ECJ; judicial interpretation; judicial protection; jurisdiction; Supreme Court covenant employer/employee 146 see also relations 234 Index criminal case high profile, supervision mechanism and, judicial protection xv judicial interpretation and xi, xvi, 117–19, 169 Phonograms and Videos in, Reply on Relevant Issues regarding the Handling of xvi theft, trial 168 unreasonable determination method for recording 114 see also case criminal charge infringer, against, enabling Administrative Authority for Industry and Commerce to file 160–61 Criminal Law administrative enforcement system and 104 enforcement and 114, 117 know-how protection and 153, 160 trade secrets and 154, 167, 168, 169, 170 TRIPS compliance and 26–7 see also legislation criminal penalties jurisdiction hierarchy with civil remedies 164–6 protecting trade secrets 166–7 see also criminal punishment; fines criminal procedure enforcement and 26–7 prosecution, WTO entry impact on administrative enforcement system 104–5 see also trial criminal protection judicial standards to improve 116–19 weak 113–14 criminal punishment few infringers receive 113 strengthening, judicial protection and xv see also criminal penalties; cumulative punishment; fines CSIR (Commission of Science and Industry Research) (India) 177 CSIR (Committee of Industry and Science Research) (South Africa) 181–2 culture administrative enforcement system strength 95–6 maximalist rights, TRIPS patent regime after Doha and 197–8 cumulative punishment accomplice and 119 see also criminal punishment cyberspace copyright protection in 6, 125–32, 137 trademark protection in 6, 125, 132–7 damage further, to trade secrets, civil remedies preventing 161–4 see also loss damages patents 15–16 trademarks 19 see also compensation; enforcement; remedies Das, Suman K 177 data, compilations of see compilations of data decision, administrative see administration, decision of definitions clearly know 118 contract in restraint of trade 143 for the purpose of making profit 118 geographical indicators 19–20 identical work 118 illegal amount of sales 117 illegal business volume 117 know-how 141 know-how characteristics and, trade secret as important component 154–5 network copyright infringement 118–19 protectable subject matter 41 rights conferred 43–4 ‘serious loss’, ambiguity regarding 167–9 trademark 16 trademarks and 41–5 Index use of marks 118 without authorization of copyright owner 118 see also judicial interpretation delay local protectionism and 97–8 Directives Database (96/9/EC) 35 Rental Right and Lending Right and on certain Rights Related to Copyright in the Field of Intellectual Property (92/100/EEC) 36 Software (91/250/EEC) 33 Trade Mark 42 see also EU; legislation dispute copyright, trial of 23, 27, 126, 127, 129 domain name, trial of 132, 133, 134, 136 labour, arbitration of 157, 158 new varieties of plants, hearing of 25 patent infringement, Provisions on Several Issues in the Trial of Cases of 190 technology contract, Memorandum of Nationwide Court Working Conference of Intellectual Property Trial on Several Issues Concerning the Hearing of 154 trademark, trial of 132, 136, 137 see also case dispute resolution see adjudication; arbitration; mediation distinctiveness acquired through use, trademarks and 18 domain names trademark protection in cyberspace and 133–5 see also trademarks duties employee, of confidence in respect of trade secrets 170–71 ECJ (European Court of Justice) 43 see also courts; EU 235 economics international IP and TRIPS and 73–5 IPR importance for 1, 7–8 education national knowledge optimization and 82 employee duty of confidence in respect of trade secrets 170–71 employer covenant 146 employment contract of, application to Local Arbitration Committee for Labour Disputes on ground of 157 relationship see enterprise, employment relationship and enforcement border measures 26 copyright 23–4 criminal procedures 26–7 developments 1–2, 107–8, 115–24 future agenda 219–22 inconsistent 99–100 Layout Designs of Integrated Circuits, Regulation on the Protection of (2001) 24 new varieties of plants 25 undisclosed information 24–5 problems 5, 107–15, 124 public, in Chinese legal system 96 see also administrative enforcement; damages England and Wales see UK enterprise employment relationship and 153, 155–6, 174 civil remedies 161–4 criminal penalties 166–7 employee’s duty of confidence in respect of trade secrets 170–71 infringement 159–60 infringer 156–9, 160–61 jurisdiction hierarchy for civil and criminal remedies 164–6 know-how definition and characteristics, trade secret as important component 154–5 236 Index enterprise (cont.) labour dispute arbitration 157 non-competition agreement/ promise, legislation 171–4 ‘serious loss’ 167–70 EPO (European Patent Office) 213 see also EU equality protection of Chinese and foreign parties, judicial protection and xiii EU (European Union) substantive law issues 29–30, 61 copyright 30–39 patents 48–55 related rights 39–41 trademarks 41–8 WTO–TRIPS patent regime after Doha and 202, 203, 206 see also Belgium; Directives; ECJ; EPO; UK exceptions copyright, term of protection 37 patents 51–2 trademarks 45 FDI (foreign direct investment) economics and 73–4, 75 enforcement and 68 national knowledge optimization and 76, 78, 79, 82, 83 WTO–TRIPS patent regime after Doha and 207–8 fees trademark infringement claim, for 93–4 Financial Times 210 fines level of, WTO entry impact on administrative enforcement system 102–3 non-deterrent 110 see also criminal penalties; criminal punishment Gadbaw, R Michael 196–7 GAO (Government Accountability Office) (USA) 107 General Administration of Customs 89, 115, 116 General Administration of Quality Supervision, Inspection and Quarantine 19 geographical indications trademarks and 19–20 traditional knowledge protection and 175–6 Gervais, Daniel Goulding, Mr Justice 149 Greene, Lord 147–8 Griliches, Zvi 213 guarantee licensor’s, technology import contract and 188–9 Hailing Shan 6–7, 221 Heald, Paul J 79–80 Hoen, Ellen ’t 206 idea-exception dichotomy TRIPS link with Berne Convention and 32 imports see parallel imports; technology import contract improvements, technical see technical improvements India traditional knowledge protection and 177 WTO–TRIPS patent regime after Doha and 203 information undisclosed, enforcement and 24–5 see also confidentiality infringement copyright, network service provider’s liability for 129–32 domain names, courts identifying alleged registration and use constituting 134–5 know-how protection and 157–60 trademark, pursuing claim for 90–94 infringer few receiving criminal punishment 113 know-how protection and 156–9, 160–61 injunctions see provisional measures Index institutions capacity building, national knowledge optimization and 82 intellectual property see IP intellectual property rights see IPR International Convention for the Protection of New Varieties of Plants 25 international IP TRIPS and 65–6, 73–5, 84 see also IP; national knowledge; traditional knowledge international IPR conflict between industrialized and developing countries 195–7 system reform, WTO compliance and 214–16 see also IPR Internet see cyberspace interpretation see judicial interpretation IP (intellectual property) Chinese system 100–101 see also copyright; design; international IP; patents; trademarks IPR (intellectual property rights) criminal protection, judicial standards to improve 116–19 existing, traditional knowledge and poor countries’ IP protection 181–2 judicial protection see judicial protection see also international IPR; rights Japan enforcement and 69 national knowledge optimization and 75 WTO–TRIPS patent regime after Doha and 202 Jianming, H.C.Cao 1–2 Jingzhou Tao 5, 220 Journal of Economic Literature 213 judicial interpretation copyright disputes, trials 23, 27, 126, 127, 129 criminal cases and xi, xvi, 117–19, 169 237 domain names civil disputes, trials 132, 133, 134, 136 new varieties of plants, hearing of disputes over 25 strengthening, judicial protection and xv–xvi technology import contract and xvi, 185 theft cases, trials 168 trademark infringement and preservation of evidence before trial 19, 23 trademarks civil disputes, trials 132, 136, 137 see also courts; definitions; legislation; Supreme Court judicial organ administrative authority and, poor coordination between 113–14 judicial protection general review ix–xii, xviii main measures xiii–xvii prospects for xvii trademarks in cyberspace, identifying infringement from alleged registration and use of domain names 134–5 WTO compliance and 212, 216 Belgian–Chinese trade relations 212–14 international system reform 214–16 judicial review administrative decisions 13, 18 WTO entry impact on administrative enforcement system 101 see also enforcement; remedies judicial training strengthening, judicial protection and xvi jurisdiction civil, centralization of, judicial protection and xii copyright protection in cyberspace 126–7 hierarchy for civil and criminal remedies 164–6 trademark protection in cyberspace 133–4 238 Index know-how confidentiality agreements and noncompetition clauses and 141–2, 152 contracts in restraint of trade 143–6, 151–2 employer/employee covenants 146 know-how and trade secrets 146–51 enterprises and employment relationships and 153, 155–6, 174 civil remedies 161–4 criminal penalties 166–7 employee’s duty of confidence in respect of trade secrets 170–71 infringement 159–60 infringer 156–9, 160–61 jurisdiction hierarchy for civil and criminal remedies 164–6 know-how definition and characteristics, trade secret as important component 154–5 labour dispute arbitration 157 non-competition agreement/ promise, legislation 171–4 ‘serious loss’ 167–70 knowledge see national knowledge; traditional knowledge Korea WTO–TRIPS patent regime after Doha and 203 labour dispute arbitration 157, 158 Lanye, Zhu Lebo, M 178 legislation Company Law 172, 173 Consumer Protection Law 19 Contract Law 154, 156, 185, 187, 189 Criminal Procedure Law 165 Digital Millennium Copyright Act (DCMA) (USA) 121, 126 Foreign Trade Law 185 General Principles of Civil Law 129, 130 know-how protection and 153, 171–4 Labour Law 153, 157, 170, 171 Partnership Law 172, 173 Sole Proprietorship Law 172, 173 technology import contract and 184–5, 187–8 Trade Law (USA) 197 see also Anti-Unfair Competition Law; Civil Procedure Law; Copyright Law; Criminal Law; Directives; judicial interpretation; Measures; Notices; Patent Law; Regulations; Rules; Supreme Court; Trademark Law liability breach of contract, for, confidence agreement and 156 infringement, for, compensation in accordance with Anti-Unfair Competition Law 157–9 network service provider’s, for copyright infringement 129–32 licensing trademarks and 47–8 see also compulsory licensing licensor guarantee of, technology import contract and 188–9 limitations copyright, term of protection 37 reprinting of works 127–8 sales and parallel imports, technology import contract 190–91 trademarks 45 litigation regime improvement, judicial protection and xv–xvi see also case; claim Local Arbitration Committee for Labour Disputes 157 local protectionism delays and 97–8 enforcement problem 109–10 loss serious 167–70 see also damage Macnaghten, Lord 144 Marika, Bunduk 182 Index marketing FDI, national knowledge optimization and 83 Marrakesh Agreement Establishing the World Trade Organization (1994) 29 Maskus, Keith 74 Measures Administrative, on Internet Copyright Protection 119–21 Compulsory Licensing of Patents 13 Compulsory Licensing of Patents Involving Public Health 13 Implementing, of Trademark Law 17 Protection of Intellectual Property Rights during Exhibitions 121–3 see also border measures; legislation; provisional measures mediation emphasis on for timely dispute resolution, judicial protection and xiv–xv see also adjudication; arbitration Megarry, Sir Robert 148 Miller, Loren 177 Ministry of Agriculture 25 Ministry of Commerce 188, 189, 190 Ministry of Labour and Social Security 171, 172 Moerman, Fientje MOFTEC (Ministry of Foreign Trade and Economic Cooperation) 184–5 moral rights TRIPS link with Berne Convention and 31–2 see also rights morality patentable subject matter and 50 MSF (Doctors Without Borders) 206 national knowledge international IP and TRIPS and 75–83 see also traditional knowledge national treatment TRIPS and 30 WTO entry impact on administrative enforcement system 102 239 NCA (National Copyright Administration) 89, 108, 120 Neil, Lord Justice 149 network service provider liability for copyright infringement 129–32 non-competition confidentiality and 6–7 non-competition clause know-how protection and 141–2, 152 contracts in restraint of trade 143–6, 151–2 employer/employee covenants 146 enterprises and employment relationships, legislation 171–4 know-how and trade secrets 146–51 legislation 171–4 Norway WTO–TRIPS patent regime after Doha and 203 Notices Protection of the Intellectual Property Achieved from Key National Scientific and Technological Research Projects 173, 174 see also legislation; Supreme Court obligations see duties ordre public patentable subject matter and 50 ownership technical improvements, technical import contract and 189–90 see also right holder parallel imports sales and, limitation on, technology import contract 190–91 Paris Convention for the Protection of Industrial Property administrative enforcement system and 100 IPR conflict between industrialized and developing countries and 195 Patent Law 1984 (China) and 12 patents and 48 trade secrets and 141 240 Index Paris Convention for the Protection of Industrial Property (cont.) trademarks and 16, 17, 18–19, 41, 44–5 TRIPS compliance and 68, 76, 77 parties aggrieved, remedies for, judicial protection and xiii equality of protection of Chinese and foreign, judicial protection and xiii Patent Law administrative enforcement system and 85, 100, 101, 103 administrative judicial protection of IPR and xi enforcement and 110 know-how protection and 163 technology import contracts and 185, 190 trademarks and 16, 19 TRIPS compliance and 11, 12–13, 14, 15 see also legislation patent mining national knowledge optimization and 83–4 Patent Review Committee 13 patentee rights further expanded 13 patents Chinese IP law consistency with TRIPS and 12–16 European substantive law issues and TRIPS 48–55 TRIPS regime after Doha 210–11 Doha declaration on TRIPS and public health 198–206 industrialized and developing countries, conflict over IPR between 195–7 maximalist rights culture 197–8 need to rethink 207–10 see also IP penalties see criminal penalties; punishment; fines performer rights, copyright and 22–3 phonograms producers of, rights, copyright and 22–3 videos and, in criminal cases, Reply on Relevant Issues regarding the Handling of xvi plants new varieties of, enforcement and 25 powers AIC 92–3 PRC see China PREB (Patent Re-Examination Board) 87 priority right trademarks and 17–18 see also rights priority setting national knowledge optimization and 81–2 private prosecution regimes unfeasible 114 see also prosecution prohibition certain signs being used as trademarks, Chinese IP law consistency with TRIPS 18–19 prosecution criminal, WTO entry impact on administrative enforcement system 104–5 private, regime unfeasible, enforcement problem 114 protection see criminal protection; judicial protection; term of protection protectionism, local see local protectionism provisional measures civil proceedings and, judicial protection xiii–xiv copyright 23 injunctions, WTO entry impact on administrative enforcement system and 103–4 patents 14–15 trademarks 19 see also civil remedies; legislation; remedies PSB (Public Security Bureau) 86, 108, 109, 113 public awareness poor 115 Index public enforcement role in Chinese legal system 96 see also enforcement public health TRIPS and 69–71, 198–206 punishment see criminal punishment; cumulative punishment reasonable use copyright and 22 see also use reform international IPR system, WTO compliance and 214–16 TRIPS, suggestions for 3, 59–60, 207–10 regulation non-IP adaptation, national knowledge optimization and 83 reprinting of works 127–8 Regulations administrative, technology import contract and 185 Administration of Contracts of Technology Import 184, 185 Administration of Import and Export of Technologies 185, 186–7, 188, 189, 190 Customs Protection of Intellectual Property 11, 26, 115–16 Implementing, of Copyright Law 22, 103 Implementing, of the Law on the Administration of Pharmaceutical Products 25 Implementing, of Trademark Law 20, 91, 92, 93, 103 Intellectual Property Rights Customs Protection 115–16 Prohibiting Activities Infringing Trade Secrets 154–5, 158–9, 170–71 Protection of Computer Software 21 Protection of Enterprises’ Know-how 173 Protection of Layout Designs of Integrated Circuits 11, 24 Protection of New Varieties of Plants 25 241 Provisional, on the Invocation of the Right of Priority in Trademark Registration 17 Shanghai, on Labour Contracts 173 Threshold of Prosecuting Economic Crimes 168 see also legislation related rights European substantive law issues and TRIPS 39–41 see also rights relations central-local 99 see also covenant; enterprise, employment relationship and; trade relations remedies rights holder and aggrieved party, for, judicial protection and xiii trademark protection in cyberspace 136–7 see also civil remedies; compensation; damages; judicial review; provisional measures rental rights (Art 11 TRIPS) computer programs and 35 copyright and 20, 36 see also rights Reply on Relevant Issues regarding the Handling of Phonograms and Videos in Criminal Cases involving Infringement of Copyright 2005 xvi Richards, Timothy J 196–7 right holder patent use without authorization of 53–5 remedies for, judicial protection and xiii rights author’s, to disseminate work 127 maximalist, culture of 197–8 moral 31–2 patentee’s, further expanded 13 patents and 51–2 performers and producers of phonograms, copyright and 22–3 priority, trademarks and 17–18 242 Index rights (cont.) related 39–41 rental 20, 35, 36 see also IPR Rome Convention (1961) 39 Rules Detailed, Implementing the Patent Law 13, 14 IPR, new 123–4 ministerial, technology import contract and 7, 185 see also legislation SAIC (State Administration for Industry and Commerce) administrative enforcement system and 87, 89, 98, 102 enforcement and 107, 109, 114 know-how protection and 154–5, 158–9, 160, 170–71 TRIPS compliance and 19 see also AIC sales parallel imports and, limitation on, technology import contract 190–91 Shanghai People’s Congress 173 Shoukang, Guo 2–3 Shulman, Seth 195 signs trademarks, as, prohibition on certain 18–19 SIPO (State Intellectual Property Office) 87, 108 social factors administrative enforcement system strength 95–6 South Africa traditional knowledge protection and 181–2 see also Africa State Administration of Building Materials 173, 174 State Forestry Administration 25 State Security and Technology Commission 172–4 strategy administrative enforcement as part of wider IP 95 Staughton, Lord Justice 148, 150 Sterckx, Sigrid 7–8 subject matter patentable 48–51 subsidies national knowledge optimization and 83 supervision mechanism high-profile criminal cases and, judicial protection xv Supreme Court Adjudicating Criminal Offences Violating Intellectual Property Rights, Notice on xv Adjudication, Notice on xv Employees of Enterprises, Transfer of, Notice on 172, 173, 174 Intellectual Property Cases, Trial of, Memorandum on 165 Intellectual Property Judgements Available Online, Notice on xvii Patent Right before Trial, Application of Law to Preventing Infringement of 15 Patents Infringement, Trial of Cases of Dispute over 190 Technology Contracts, Hearing of Disputes over, Memorandum on 154 see also judicial interpretation; legislation technical improvements ownership of, technical import contract and 189–90 technology import contract legal issues 184, 191 administration 186–7 applicable law 187–8 legislation evolution and current legal environment 184–5 licensor’s guarantee 188–9 sales and parallel imports, limitation on 190–91 technical improvements, ownership of 189–90 see also contract tensions bureaucratic 98–9 Index term of protection (Art 12 TRIPS) copyright 37–9 trademarks 46 Thomas, Kristie 4–5 trade contract in restraint of 143–6, 151–2 trade relations Belgium–China 212–14 IPR importance for see also relations trade secrets see confidentiality; knowhow Trademark Bureau 18 Trademark Law administrative enforcement system and 90, 92, 93 administrative judicial protection of IPR and xi Chinese IP system criticisms and 85 copyright and trademark protection in cyberspace and 136, 137 criminal prosecutions and 104 enforcement and 110, 120 injunctions and 103 judicial review and 101 know-how protection and 163 national treatment and 102 TRIPS compliance and 11, 16–19, 100 see also legislation Trademark Review Committee 18 trademarks Chinese IP law consistency with TRIPS and 16–20 counterfeiting, criminal law and 26 cyberspace, protection of 125, 132–7 European substantive law issues and TRIPS and 41–8 infringement, pursuing claim for, administrative enforcement system 90–94 see also domain names; IP; wellknown trademarks traditional knowledge international IP and TRIPS and 71–2 poor countries’ IP protection and 175–6, 183 Chinese perspective 182–3 international level 176–81 rights, existing 181–2 243 protection see also national knowledge transparency improvement of, judicial protection and xvii lack of 98, 114–15 training, judicial see judicial training trial judicial protection and x–xii time-consuming process 112 see also case; dispute TRIPS (Trade-Related Intellectual Property Rights) Agreement Chinese IP law consistency with 2–3, 11–12, 27–8 copyright 20–24 enforcement issues 24–7 patents 12–16 trademarks 16–20 compliance impact on IP system 100–101 Doha and public health and 69–71, 198–206 emergence of 66–9 enforcement and European substantive law issues 3, 29–30, 61 copyright 30–39 patents 48–55 related rights 39–41 trademarks 41–8 industrialized and developing countries, conflict over IPR 195–7 international IP and 65–6, 73–5, 84 maximalist rights culture 197–8 national knowledge and 75–83 objectives and principles 56–9 reform suggestions 3, 59–60, 207–10 regime after Doha 210–11 traditional knowledge and 71–2 WTO context 55–6 see also WTO UK (United Kingdom) contracts in restraint of trade and 143–6, 151–2 know-how and trade secrets and 147–50 see also EU 244 Index UK Commission on Intellectual Property Rights 65, 75, 83, 210–11 UN Commission on the Promotion and Protection of Human Rights 199 UNCTAD (United Nations Conference on Trade and Development) 77–8, 141 UPOV (Union Internationale pour la Protection des Obtentions Végétales) Convention 51 US Trade Representative 107, 108 USA (United States of America) copyright protection in cyberspace and 126 enforcement and 68, 107, 108 moral rights and 32 patent use without authorization of right holder and 54 traditional knowledge protection and 175, 176, 177–8 WTO–TRIPS patent regime after Doha and 195–6, 197, 201, 202, 206 use distinctiveness acquired through, trademarks and 18 domain names, courts identifying infringement from alleged registration and 134–5 patents, without authorization of right holder 53–5 reasonable, copyright and 22 signs as trademarks, prohibition on certain 18–19 trademarks and 46–7 USPTO (United States Patent and Trade Office) 108, 177, 178, 213 WIPO 180 Weining, Zou well-known trademarks determination and protection of by courts 136 identifying in accordance with law, judicial protection and xiv protection of 16–17 see also trademarks WIPO (World Intellectual Property Organization) IPR conflict between industrialized and developing countries and 196 maximalist rights culture and 198 traditional knowledge protection and 177, 179, 180, 181, 183 TRIPS compliance and 28, 41, 72, 84 work reprinting of, regulation and limitations, copyright protection in cyberspace 127–8 right to disseminate, remains in hands of author, copyright protection in cyberspace 127 see also computer programs; labour WTO (World Trade Organization) Agreement Art XVI:4, implementation undertaking 11 China as member of 11 Chinese entry, impact on administrative enforcement system 100–105 compliance with, IPR and 212–16 judicial protection of IPR in China and ix, x, xi see also TRIPS Velasquez, German 206 Xiaodong, Zuo 2–3 website addresses Chinese Intellectual Property Rights Judgements xvii Zipei, Jiang Zoellick, Robert 202