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Mark Perry Editor
Global Governance
of IntellectualProperty in the
21st CenturyReflecting Policy Through Change
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Mark Perry
Editor
Global Governance of Intellectual Property
in the 21st CenturyReflecting Policy Through Change
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Editor Mark PerrySchool of LawUniversity of New England
Armidale, Australia
ISBN 978-3-319-31176-0 ISBN 978-3-319-31177-7 (eBook)DOI 10.1007/978-3-319-31177-7
Library of Congress Control Number: 2016940952
© Springer International Publishing Switzerland 2016This work is subject to copyright. All rights are reserved by the Publisher, whether the whole or part of the material is concerned, specifically the rights of translation, reprinting, reuse of illustrations,recitation, broadcasting, reproduction on microfilms or in any other physical way, and transmissionor information storage and retrieval, electronic adaptation, computer software, or by similar or dissimilar methodology now known or hereafter developed.The use of general descriptive names, registered names, trademarks, service marks, etc. in thispublication does not imply, even in the absence of a specific statement, that such names are exemptfrom the relevant protective laws and regulations and therefore free for general use.The publisher, the authors and the editors are safe to assume that the advice and information in thisbook are believed to be true and accurate at the date of publication. Neither the publisher nor theauthors or the editors give a warranty, express or implied, with respect to the material contained
herein or for any errors or omissions that may have been made.
Printed on acid-free paper
This Springer imprint is published by Springer NatureThe registered company is Springer International Publishing AG Switzerland
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For Priti
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Preface
This book is aimed at reaching all people interested in the global evolution of
intellectual property. This probably means every thinking person, as who could not
be interested in one of the underlying foundations of the diverse societies that
coexist today? Readers who are inventors, artists, and marketers will no doubt
gravitate to the parts that focus on patent, copyright and trade marks, but this would
be a narrow approach. The editor asks readers to contemplate the work as a whole,
and to see how the authors who come from Australia, Canada, China, India, Italy,
Nepal, Thailand, the United Kingdom, and the United States of America reflect
on issues in the globalised world of intellectual property. Other states are alsoconsidered by the authors in their various chapters, giving a broad international
perspective.
The provenance of this work started with the idea for a collaboration between
Beijing Foreign Studies University and the University of New England (Australia)
for a conference in the area of intellectual property. This rapidly developed into a
conference in May 2015, Intellectual Property Facing the 21st Century: Flux in the
Force, with a theme following the changes in the foundations of intellectual
property as seen through developments in a wide span of jurisdictions. Over the
last decade, approaches to intellectual property have been in a state of flux.Although fundamental precepts remain the same, the emphasis on the directions
being taken are changing around the world. This in turn led to the chapters in this
book. Not all speakers are authors of this work, and not all contributors were
speakers, but they have seized the idea of representing changes in the jurisdictions
that they examine, which can be seen as allegories for changes in the global
governance of intellectual property.
Readers may be surprised at the diversity of approaches to intellectual property
in what is often portrayed as a globalised collection of rights over the intangible,
and this is addressed in the first chapter. The following chapters are roughlygrouped by area of intellectual property addressed, but there is no clear-cut line
as intellectual property rights are not living in isolated silos. They could have been
grouped by type of state or geographical region, but again there are very strong
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interrelationships between national intellectual property developments. The threads
and connections between chapters are left to the reader. The themes include the
exercise of power by governments and industry, dominant states in governance,
health, innovation, disability, the Internet, branding, crime, investment and
patentomics. Readers should find issues on which they sympathise, agree and
dissent and others for which they are upset and happy. It is after all the reader
that makes the book.
Armidale, NSW, Australia Mark Perry
January 2016
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Acknowledgements
A work such as this depends on the direct input from many people and indirect
influences from thousands. However, convention suggests that most would like
mention in person, and although this is not possible, there are some to thank
specifically. Starting temporally at the end, Springer clearly has had a great role
in bringing this work to your hands or screen, in particular Dr Brigitte Reschke,
Executive Editor Law, for taking on this project and Manuela Schwietzer for her
editorial assistance to get the work to press. The beginning of this project has its
origin at Beijing Foreign Studies University, with Dean Meng Wan and Associate
Professor Lijuan Liu co-hosting the IP Flux conference at their university in 2015together with the University of New England. There has been a great deal of work
done by many people in between these two times, taking a year, and in addition to
the contributors, thanks must go to those peer reviewers who remain anonymous
and often unthanked for their quick work in providing excellent feedback on the
chapters herein.
Dr Kylie Lingard, apart from co-authoring a chapter with me, provided immense
assistance in preparing the materials. To the many others who helped, including my
relatively new colleagues and friends at the University of New England, Armidale,
NSW, Australia, who often provide assistance without even knowing—a word, or athought-provoking comment—I give my thanks. Of particular importance is Dr
Priti Krishna for her encouragement and her own stamina for scholarly pursuit that
provides daily inspiration.
I thank you all.
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Contents
The Changing Face of Intellectual Property: Global Forces andCompliance . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1Mark Perry
Prior Art Defence in the Chinese Patent System . . . . . . . . . . . . . . . . . . 11Lijuan Liu
Bio-Patent Pooling and Policy on Health Innovation for Access toMedicines and Health Technologies that Treat HIV/AIDS: A Need for
Meeting of [Open] Minds . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 29Sunita Tripathy
Patent Exhaustion on Trial in the United States . . . . . . . . . . . . . . . . . . . 51Shubha Ghosh
Code, Autonomous Concepts and Procedure: Stepping Stones forEuropean Law? . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 71Alison Firth
The Harmonisation of EU Copyright Law: The Originality Standard . . . 85Thomas Margoni
International Copyright: Marrakesh and the Future of Users’Rights Exceptions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 107Margaret Ann Wilkinson
Moments of Flux in Intermediary Liability for Copyright Infringementin Australia . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 129Nicolas Suzor, Rachel Choi, and Kylie Pappalardo
The Evolution of Domain Names and Their Impacts on Trade MarkRights . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 151Heather Ann Forrest
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Non-conventional Trademarks Under United States Law:An Unbounded New Frontier of Branding . . . . . . . . . . . . . . . . . . . . . . . 173Llewellyn Joseph Gibbons
The ASEAN Single Market: A Perspective on Thailand’s Trade Mark
Development . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 193Kanya Hirunwattanapong
Intellectual Property Rights and Foreign Direct InvestmentAgreements . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 209Ramesh Karky
Innovation Cartography and Patentomics: Past, Present and Future . . . 225Kylie Lingard and Mark Perry
xii Contents
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Brief Information on Contributors
Rachel Choi recently completed Bachelor degrees in Law and Film, TV andScreen from the Queensland University of Technology in Brisbane, Australia.
With a working knowledge of film production and film festivals, Rachel’s enthu-
siasm for the arts underpins her interest in intellectual property, media and Internet
law. Rachel is a law graduate at a national law firm where she started as a paralegal
in the Intellectual Property and Technology group.
Alison Firth originally studied physics, but curiosity about patents led her into thelaw, first into legal practice at the English Bar, then to academic posts. Her research
interests cover the laws of intellectual property and their interaction with other areas
of law, such as contract and competition law. She is Vice-President of the British
Literary and Artistic Copyright Association. She enjoys swimming and visiting well-
stocked law libraries. Topics of recent papers, talks and publications include devel-
opments in UK patent law and procedure, copyright exceptions for libraries and
archives, co-authorship and co-ownership of copyright in musical works, European
trademark norms in the context of the proposed Transatlantic Trade and Investment
Partnership and the Trans-Pacific Partnership, reception of EU trade mark laws in
New Zealand, the account of profits in relation to the EU’s IP enforcement directive,
essential facilities and other issues of competition in copyright.
Heather Ann Forrest is the Vice Chair of ICANN’s Generic Names SupportingOrganization (GNSO) Council representing the Non-Contracted Parties House. She
is a member of the leadership of ICANN’s Intellectual Property Constituency (IPC)
and represents the IPC on the GNSO Council. She serves as a co-chair of the CWG
on the Use of Country and Territory Names as Top-Level Domains. She is an
Associate Professor at the University of Tasmania. Her research focusses on the
interaction of international law, particularly relating to rights in names, and Domain
Name System policy. Her doctoral thesis, Protection of Geographic Names inInternational Law and Domain Name System Policy, is recognised as the global
authority on legal rights in geographic names and their use in the Internet Domain
Name System.
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Shubha Ghosh is the Crandall Melvin Professor of Law and Director of theTechnology Law Center at Syracuse University College of Law in Syracuse,
New York. He has written well-cited articles in the fields of intellectual property
policy, doctrine and commercialisation. He earned his BA from Amherst College,
his MA and PhD in Economics from Michigan and his JD from Stanford. He has
travelled extensively in Asia and Europe, learning and lecturing about the design of
social institutions for the promotion of innovation, openness and distributive
justice.
Llewellyn Joseph Gibbons researches in the area of the intersection of law andtechnology in creating new governing structures as well as their effect on economic
and cultural development. Llewellyn Joseph Gibbons is a professor of law at the
University of Toledo where he coordinates the intellectual property law
programme. He is also a fellow at the Intellectual Property Center of ZhongnanUniversity of Law and Economics (Wuhan, China). Llewellyn Joseph Gibbons has
written articles in the areas of intellectual property and economic development, the
governance of cyberspace, the role of mass market contracts in ecommerce trans-
actions and the use of arbitration as a means on online dispute resolution. Llewellyn
Joseph Gibbons’ articles have been cited by federal and state courts in the United
States.
Kanya Hirunwattanapong is the Assistant Dean for Foreign Affairs at theFaculty of Law and the Head of the European-ASEAN Legal Studies Unit at
Chiang Mai University, Thailand. She has taught intellectual property law andthe European Union law and is actively involved in organising IP activities
with both the Central Intellectual Property and International Trade Court and the
Intellectual Property Department. She has been a guest lecturer on IP and EU and
ASEAN Law. She earned her BA and MA in Law at Chulalongkorn University
and MA in Law (European Union Law) at Exeter University, UK. She has currently
written the following: (1) the series of Thai Intellectual Property Laws (the first
one in the series is Thai Patent Law, and the second book is Thai Trade Mark Law)
and (2) The Judicial Control in the European Union: Lessons for the ASEAN
Community (first draft).
Ramesh Karky specialises in the international economic law, intellectualproperty law and biotechnology law areas and has served as an international expert
consultant, Visiting Professor of Law, researcher and lawyer. Karky holds Diploma
in Law (LLB) from Tribhuvan University in Kathmandu, LLM from the Vrije
Universiteit Brussels and SJD from Golden Gate University in San Francisco and
completes three year ’s postdoctoral training in Law at Western University, Canada.
He was also an Invited Researcher at the Japanese Institute of Intellectual Property
(part of Japanese Patent Office).
Kylie Lingard is a Postdoctoral Research Fellow with the Australian Centre for Agriculture and Law, at the University of New England (Australia). Her research
areas include legal measures to better support the interests of indigenous peoples in
their traditional resources and knowledge, legal duties to consult indigenous
xiv Brief Information on Contributors
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peoples in land-use decision-making and equitable management policies for plant
material collections. Lingard’s PhD research looked at strategies to advance the
interests of Aboriginal and Torres Strait Island peoples in the commercialisation of
their traditional foods.
Lijuan Liu is Associate Professor, Beijing Foreign Studies University LawSchool, in Beijing, China. Lijuan has a PhD from Chinese Academy of Social
Science and a Master from Beijing University Law School. Research includes
especially trademark and unfair competition law. Teaching includes intellectual
property law for undergraduates, trademark law for postgraduates and intellectual
property law frontiers for postgraduates.
Thomas Margoni is a Lecturer/Assistant Professor at the School of Law, Univer-sity of Stirling, UK. His research and teaching interests concentrate on the rela-
tionship between law and new technologies from an EU, comparative andinternational point of view. He has published extensively in the field and teaches
courses in intellectual property and internet law. Dr. Margoni is a regular speaker at
national and international conferences, is a Marie Curie grant holder and conducts a
variety of studies for EU and international institutions, including the European
Commission, the Organisation for Economic Co-operation and Development
(OECD), the Office for Harmonisation in the Internal Market (OHIM) and the
Japanese Patent Office.
Kylie Pappalardo researches in intellectual property and innovation law, focus-sing primarily on the intersection between copyright and creativity and on the rights
of copyright users. She is a Lecturer in the Law School at the Queensland Univer-
sity of Technology (QUT), where she leads the research programme on copyright
law and creative communities. Kylie has recently completed her PhD on the
regulation of ISPs and other Internet intermediaries for online copyright infringe-
ment. She holds degrees in Law and Creative Writing from QUT and a Masters of
Law from Georgetown University in Washington D.C. Kylie has been a senior
researcher with the Open Access to Knowledge (OAK) Law Project and with
Creative Commons Australia. She has also worked with the Arts Law Centre of
Queensland and served on the board of Youth Arts Queensland.
Mark Perry is Professor of Law at the University of New England, Australia andBarrister and Solicitor of the Law Society of Upper Canada. He is also Professor
Emeritus of Computer Science at Western University in Canada. His research is on
the nexus of Science and Law, in particular focussing on biotechnology and
intellectual property. Professor Perry has prelected audiences around the world,
including Brazil, Bhutan, China, Italy, India, Japan, New Zealand, the United
States, the United Kingdom and Australia. He has been an invited and keynote
speaker at many international conferences regarding technology and law. Alongwith invitations to speak, he has organised several global conferences in Canada,
Australia and China and has been an advisor on other symposia overseas. Professor
Perry has published widely in both law and technology journals and has supervised
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many postdoctoral, graduate and undergraduate students, who have gone on to work
at law firms, industry, non-governmental organisations or taken positions in
universities.
Nicolas Suzor researches the regulation of networked society. He is a Senior Research Fellow in the Law School at Queensland University of Technology in
Brisbane, Australia, and a Chief Investigator of QUT’s Digital Media Research
Centre, where he leads a programme of research on the regulation and governance
of the Internet and social media. His research examines the governance of social
networks, the peer economy, digital copyright and knowledge commons. Nic is also
the Legal Lead of the Creative Commons Australia project.
Sunita Tripathy is Assistant Professor at the Jindal Global Law School as well asAssistant Director of Centre for Intellectual Property and Technology Law at the
O.P. Jindal Global University, India. She earned her LLM in Intellectual PropertyLaw as a NALSAR-Western Scholar while studying at the Faculty of Law, Uni-
versity of Western Ontario, London, Canada, and NALSAR University of Law,
Hyderabad, India, in 2010–2011; she has a degree in Bachelor of Socio-Legal
Sciences and Law (BSL, LLB) from the Symbiosis Law School, Pune, India.
Tripathy enjoys advanced scholarship and research about law and its role in society
with special focus on its nexus with technology, intellectual property and public
policy. She has published on issues interfacing intellectual property law and
competition policy, led seminars and lecture series on traditional and alternate
approaches to intellectual property protection and management and has spoken inseveral intellectual property conferences and forums in India and overseas.
Margaret Ann Wilkinson trained as both a lawyer and a librarian, practised lawbefore joining Western University and remains a member of the Law Society of
Upper Canada. She has been awarded the Ontario Library Associations’s Les
Fowlie Intellectual Freedom Award. Co-author of Canadian Intellectual Property
Law (Toronto: Emond Montgomery; 2013)), she has counseled the International
Federation of Libraries and Institutions [IFLA] at several World Intellectual
Property Association Subcommittee on Copyright and Related Rights [SCCR]
meetings considering the proposed “Treaty for Limitations and Exceptions for
Libraries and Archives.” Appointed to the Faculty of Law and affiliated with
graduate programmes in both law and health information science, Dr. Wilkinson
teaches, speaks and writes on pharmaceutical and health regulation, professional
ethics, intellectual property and information law. She is currently funded through
Canada’s Social Sciences and Humanities Research Council for research into data
protection, personal data protection and confidential information protection.
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Abbreviations
ACMA Australian Communications and Media Authority
API Active Pharmaceutical Ingredient
ARV Anti-retro Viral
ASEAN Association of Southeast Asian Nations
AWGIPC ASEAN Working Group on Intellectual Property Cooperation
BITs Bilateral Investment Treaties
CJEU Court of Justice of the European Union
CLM Committee on Copyright and other Legal Matters (IFLA)
COBI CobicistatDNA Deoxyribonucleic acid
DNS Domain Name System
EC European Commission
ECHR European Court of Human Rights
ECJ European Court of Justice
EPO European Patent Office
EU European Union
FDA Food and Drug Administration (United States)
FDC Fixed Dose CombinationsFDI Foreign Direct Investment
GATT General Agreement on Tariffs and Trade
GPML Globally Protected Marks List
ICANN Internet Corporation for Assigned Names and Numbers
IFLA International Federation of Library Associations and Institutions
IP Intellectual Property or Internet Protocol
IPR Intellectual Property Rights
ISP Internet Service Provider
JPO Japan Patent OfficeLDC Least developed countries
LMIC Low-and middle-income countries
MPAA Motion Picture Association of America
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MPP Medicines Patent Pools
NAFTA North American Free Trade Agreement
NDA National Drug Authority (India)
NGO Non-governmental organisation
NTIA National Telecommunications and Information Administration
OECD Organisation for Economic Co-operation and Development
PRB Patent re-examination board
PTIAs Preferential Trade and Investment Agreements
RIAA Recording Industry Association of America
SCCR Standing Committee on Copyright and Related Rights (WIPO)
TDF Tenofovir disoproxil fumarate
TFEU Treaty on the Functioning of the European Union
TLD Top level domains
TLIB Treaty for Libraries and ArchivesTPP Trans-Pacific Partnership
TRIMs Agreement on Trade-Related Investment Measures
TRIPS Trade-Related Aspects of Intellectual Property Rights
TTIP Transatlantic Trade and Investment Partnership
UDHR Universal Declaration of Human Rights
UDRP Uniform Domain Name Dispute Resolution Policy
UNCTD United Nations Convention on Trade and Development
UNESCO United Nations Educational, Scientific and Cultural Organization
URL Uniform Resource Locator USPTO United States Patent and Trademark Office
WCT WIPO Copyright Treaty
WHO World Health Organization
WIPO World Intellectual Property Organization
WPPT WIPO Performances and Phonograms Treaty
WTO World Trade Organization
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The Changing Face of Intellectual Property:Global Forces and Compliance
Mark Perry
Abstract Over the last three decades there has been constant pressure on devel-
oping nations to conform with the intellectual property ideals of the developed
world, in particular, it can be argued, those of the United States of America. Despite
this, many jurisdictions have managed to maintain at least some part of their own
inherent approach to how intellectual creations, whether invention, expression, or marketing concept, should be dealt with in their state. It can be argued that some
states where governance can be said to be in disarray are, on the other hand, readily
adopting protectionist international norms to validate their statehood.
It should also be noted that even in countries that are seen as having a very solid
view of how intellectual property rights, and the enforcement of those rights, should
be structured, there are still areas of uncertainty as how to implement their laws in
the face of changing technologies and changing global relationships.
1 Introduction
The last 150 years has seen accelerated activity at key times for what is called
global harmonisation of intellectual property rights by some, or the imposition of
colonialist/imperialist ideals for the propertisation of the expression of human
intellect on developing nations. The English Statute of Monopolies 1623 followed
by the Statute of Anne 1710 introduced the foundations of what we know today aspatent and copyright, in the common law world at least. There were many changes
over the centuries, but by the end of the nineteenth century we can see the first
major attempts to provide basic global norms of intellectual property protection
expressed in the Paris Convention for the Protection of Industrial Property (1883)
828 U.N.T.S. 305, with its initial 11 signatories (WIPO n.d.), and the Berne
Convention for the Protection of Artistic and Literary Works (1886)
828 U.N.T.S. 221, starting with eight signatories (WIPO 2015a). These
M. Perry (*)
School of Law, University of New England, Armidale, NSW 2350, Australia
e-mail: [email protected]
© Springer International Publishing Switzerland 2016
M. Perry (ed.), Global Governance of Intellectual Property in the 21st Century,
DOI 10.1007/978-3-319-31177-7_1
1
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international agreements have had significant impact and amendments over the
years with the former now standing at 176 contracting parties (WIPO 2015b), and
the latter currently 168 parties (WIPO 2015a). In recent decades other international
multilateral agreements have been introduced, such as Agreement on Trade-Related
Aspects of Intellectual Property Rights (1994) 1869 U.N.T.S. 299 (Annex 1C))
(‘TRIPS’) under the World Trade Organisation (‘WTO’), the many other agree-
ments under the auspices of the World Intellectual Property Organisation (‘WIPO’).
Some say that this movement to multinational compliance is driven by the notion of
natural law (Oddi 1996), although much political, and even court ( Mazer v. Stein
(1954) 347 U.S. 201),1 interpretation has been to treat the issue as a utilitarian
question.
This brief introduction raises the question as to how effective international
multiparty agreements have been in creating a homogenised approach to global
intellectual property governance. The survey below introduces some of the issuesraised by the scholars contributing to this work, albeit through the eyes of this
chapter ’s author.2
2 Harmonisation and Differentiation
A review of the current state of play in terms of international agreements, whether
under the auspices of WTO or WIPO is available via many fine publications andsources. For example, the introduction given by WTO on that website as to the
importance of intellectual property rights, which is also reflected in the material
provided by WIPO, and the many scholastic articles analysing in-depth the changes
in various agreements and relationships between various agreements, such as the
Berne Convention 1886 and WIPO Copyright Treaty 1996 . There is probably less
focus put on the divergence inside states. In other chapters of this book you will find
a range of discussions that are introduced in this chapter that illustrate the continu-
ing diversity, and sometimes increased diversity, amongst the way nations treat
intellectual property.In “Prior Art Defence in the Chinese Patent System” (Chapter 2), Lijuan Liu
discusses an aspect of the two streams of governance in patent disputes that are
embedded in the Chinese system, a bifurcated approach that is to the surprise of
some no doubt. On the one hand it is the courts that decide on patent infringement
issues, but the Patent Re-examination Board and two specific courts deal with
patent validity. The problem arises in the area of prior art as to whether a patent
1 “The economic philosophy behind the clause empowering Congress to grant patents and copy-
rights is the conviction that encouragement of individual effort by personal gain is the best way toadvance public welfare through the talents of authors and inventors in ‘Science and useful Arts’.”2 It should be noted that this chapter presents the views of this author, and perspectives presented
may not coincide with those of the other chapters. The reader, no doubt, with have their own
interpretation and views.
2 M. Perry
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is questionable, in which case an infringement hearing needs to be suspended and
returned to the Board for determination. This type of procedure is not contemplated
in international agreements, as they do not deal with this kind of detailed jurisdic-
tional hearing procedure. In 2014, the total patent filings, both from residents and
abroad, reached 837,817 in China, an increase by a factor of ten over the decade,
and outstripping the United States of America’s 509,521 (WIPO 2014). This trend
is reflected in other IP filings in China, and realising that it is now the leading nation
for filing intellectual property registrations it is possible that the pressure for reform
to an effective system will bring more analysis for more effective governance from
that nation in the future.
India, on the other hand, has placed more emphasis on tailoring its intellectual
property regime to meet the needs of its own peoples directly, albeit within the
confines of TRIPS. This can be seen in a r ange of actions, whether addressing seed
saving, preventing patent “evergreening”,3 or the issues of access to drugs, whichwere not patentable in India prior to TRIPS. In “Bio-Patent Pooling and Policy on
Health Innovation for Access to Medicines and Health Technologies that Treat
HIV/AIDS: A Need for Meeting of [Open] Minds” (Chapter 3), Sunita Tripathy
looks at a novel arrangement for patent pooling drugs, known as Medicine Patent
Pools (MPP). Pre-TRIPS, when India had no patent protection for drug products,
the nation was a global leader in generic drug production. It was also provided for
modern drugs at extremely low cost to patients. The adoption of TRIPS has changed
the market in India, and as discussed in the chapter, good solutions to making
available anti-viral drugs more widely available such as the MPP can also haveunintended outcomes. India has adopted an approach to patenting, despite the
strictures of TRIPS, that still limits that power of large pharmaceuticals to maxi -
mise their profits, for example see Novartis v. Union of India (2013) S.C. 1311.4
The drug patent arena is not the only realm where India is criticised by other nations
for taking a less extreme approach to intellectual property protection, indeed the
nation falls within the United States Trade Representative’s Special 301 list
(Froman 2014) under the category “priority watch list” i.e. a country that has
“serious intellectual property rights deficiencies”. The 2014 Report to Congress
criticises India for its compulsory licensing policy on green technologies, and for trade mark “counterfeiting and copyright piracy” (Froman 2014, 19). Of course, it
is fair to say that most developing nations have issues with enforcement, and worth
noting that the report is heavily influenced by commentary encouraged from
3 “Evergreening” is the term used in the patent environment to describe the attempts by patent
holders, especially in the drug arena, to prolong the patent period of the basic compound by
seeking new patents on altered formulations, dosage types, data retention and other business
techniques (see Gaudry 2011).4 Wherein the Indian Supreme Court upheld the decision on the rejection of a patent application by
Novartis for its beta crystalline form of Imatinib Mesylate (Glivec).The Court observed Novartis
to be indulging a strategy that led to ‘ever-greening’ of its patents, a practice intended to extend the
term of the patent on the same compound; which is impermissible given the patented invention
ought to expire after the stipulated term of 20 years.
The Changing Face of Intellectual Property: Global Forces and Compliance 3
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“interested stakeholders”, typically those involved in the intellectual property
industry that would benefit from greater global compliance with the United States
perspective on rights protection.
The United States of America has its own internal struggles with determining
what falls within the boundaries of intellectual property protection as well. This is
illustrated by Shubha Ghosh in “Patent Exhaustion on Trial in the United States”
(Chapter 4), where he looks to an area that is not legislated in the United States but
rather relies on development in the common law tradition of cases. Exhaustion is a
doctrine that in effect protects the market from ‘reach-through’ rights after the
patented item is sold, so that the vendor cannot later claim on the purchaser.
However, there is a fine balance between selling a patented item and licensing its
use, and the limitation that the doctrine doesn’t apply to self-replication products
such as patents in sequences in seeds, Monsanto v. Bowman (2011) 657 F.3.d 1341,
1347—or perhaps limited to seed (Chapter 4). The limits on exhaustion doctrinesare also under review in the printer cartridges of Lexmark, which is currently in the
courts in the United States of America and discussed herein (Chapter 4).
Another front for challenge and change in the United States can be seen in
Llewellyn Joseph Gibbon’s “Non-Conventional Trademarks Under United States
Law: An Unbounded New Frontier of Branding” (Chapter 10), where trademark is
evolving to include attributes such as appearance, motion, scent, sound, smell, taste
and touch. In other common law countries, Trade Mark of such attributes of a brand
are often protected under the common law of passing off, classically in Perry
v. Truefitt (1842) 49 E.R. 749 where the Master of Rolls, Lord Langdale, expressed:
A man is not to sell his own goods under the pretence that they are the goods of another
man; he cannot be permitted to practice such a deception, nor to use the means which
contribute to that end. He cannot therefore be allowed to use names, marks, letters, or other
indicia, by which he may induce purchasers to believe, that the goods which he is selling are
the manufacture of another person.
Some legislation, such as Canadian Trade-Marks Act (1985) section 7, bring
passing off into a codified form, but the United States of America has taken a
different tack, for example in free trade agreements that insist on protection of
scents and sounds (Chapter 10, footnote 16). The Trans Pacific Partnership (‘TPP’)also adds requirements for sounds and “best efforts” to register scents (see
e.g. Office of the United States Trade Representative 2015).
Even in Europe, where civil law governs the great majority of jurisdictions, there
have been movements in the development of intellectual property that can be
attributed to the interpretation of the law by the courts, in particular by the adoption
of ‘autonomous concepts’ as discussed by Alison Firth in “Code, Autonomous
Concepts and Procedure: Stepping Stones for European Law?” (Chapter 5). The
introduction of detail and transparency, citing previous case-law and even
distinguishing earlier cases seems to be the adoption of aspects of the commonlaw doctrine of precedent, which will give a new twist to the governance of
intellectual property rights in the European Union. How these developments,
along with the aim of further harmonisation of European Union intellectual
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property governance, such as the proposed unitary patent system, in part brought
into effect by procedural reformation, will be interesting to watch over the coming
decade.
Staying with the European Union, Thomas Margoni in “The Harmonisation of
EU Copyright Law: The Originality Standard” (Chapter 6) delves into the origi-
nality requirement in copyright, from the changing common law standard, which
started with only origination from an author, to civil law countries where more
importance is placed on the personal relationship and inputs to the work in question.
The vertical harmonisation of the originality standard of “author ’s own intellectual
creation” in software, photographs and databases, combined with horizontal adop-
tion of the standard in other areas of copyright. Furthermore there has been
feedback into the legislation of member states (Chapter 6). Margoni also discusses
the significant influence of the courts, particularly the ECJ, is having in setting
norms of originality in the world’s largest single market (see also EuropeanCommission 2014).
One area of copyright that seems to get little attention is exposed in detail by
Margaret Ann Wilkinson in “International Copyright: Marrakesh and the Future of
Users’ Rights Exceptions” (Chapter 7), a treaty aimed at mandating limitations and
exception of users. The Marrakesh Treaty to Facilitate Access to Published Works
for Persons Who Are Blind, Visually Impaired, or Otherwise Print Disabled (2013)
(WIPO 2016),5 as Wilkinson points out, provides many interesting aspects of
intellectual property development on the international scene, including its incorpo-
ration of the TRIPS three-step-test, and also being a treaty focused on providinguser exceptions.
Copyright has seen dramatic expansion over the last couple of decades, in part to
face the challenges of digital technologies combined with global access to infor-
mation at the push of a button.6 Nicolas Suzor et al. in “Moments of Flux in
Intermediary Liability for Copyright Infringement in Australia” (Chapter 8), exam-
ine the regulatory shift in Australia with respect to addressing internet service
provider ’s liability. Providing systems of governance for copyright in the Internet
age is clearly not trivial, and many nations have struggled to find the balance
between crushing the sharing of socially useful information and allowing a copy-right free zone. Suzor et al. discuss the three major changes that were implemented
in Australia in 2015 and how these illustrate the struggle to find a governance norm
that can satisfy constitutional values and the value attributed to rightsholders, and
address the pressing question of how individual rights can be protected in a
protectionist environment (Chapter 8). Staying within the Internet environment,
Heather Ann Forrest in “The Evolution of Domain Names and their Impacts on
Trademark Rights” (Chapter 9) explores the issue of the changing meaning of
5 When Wilkinson was writing there were eight ratifications and accessions of the treaty, now
standing at 13.6 Of course, providing that you have access to world networks, the local infrastructure and at least
some equipment.
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domain names over the last 20 plus years. Moving from a simple system of naming
machine ‘locations’ to one that has challenged the courts as to how such names
reflect on branding (for an early discussion see Perry 1998, 1999). Forrest discusses
the relationship between Trade Mark holders and their uneasy relationship with
domain names, especially where there is the Trade Mark associated with a site
dedicated to complaining about the brand, as with the so-called ‘x-sucks sites”.
From the intellectual property perspective it is interesting how a non-profit body
such as The Internet Corporation for Assigned Names and Numbers, and an
interjurisdictional non-judicial body, such as those used under the Uniform Dispute
Resolution Process, and rightsholders of Trade Marks, all interact in a way that
could not have been predicted in the foundation days of the Internet. Forrest also
discusses how the new generic Top Level Domains are changing Internet user
perceptions.
Trade Mark issues are also of concern in the Association of South-East AsianNations (ASEAN), as reviewed by Kanya Hirunwattanapong in “The ASEAN
Single Market: A Perspective on Thailand’s Trade Mark Development”
(Chapter 11). The ASEAN Single Marked was targeted to take effect from
December 2015, although full implementation of a unified trading space will likely
take some time. There is still much divergence amongst ASEAN countries as to
their approach to intellectual property rights, for example only few are members of
the Madrid Protocol (Chapter 11). Following the experiences that European coun-
tries have had, it is not that surprising that forming a trading group is easy to say,
hard to achieve politically, and extremely difficult in practice.It is clear that intellectual property rights have inroads into much policy and
international agreements outside those treaties that directly deal with them. One
area of importance is the number of agreements, multilateral and bilateral, dealing
with foreign direct investment. Ramesh Karky, in “Intellectual Property Rights and
Foreign Direct Investment Agreements” (Chapter 12), takes a close look at the
relationship between investment and intellectual property. Like TRIPS, the Agree-
ment on Trade-Related Investment Measures (1999) is something of a compromise
between the dichotomy posed by the developing and developed nations. However,
most of the progress with investment has been made by bilateral arrangements, andsometimes these include specific terms relating to intellectual property, such as the
Agreement between Australia and China on the Reciprocal Encouragement and
Protection of Investments (1988) (Chapter 12). As Karky notes, today often it is
intellectual property based investment that is fuelling development, so the relation-
ship between these two areas should not be overlooked.
A relatively new area of intellectual property analysis comes in the form of
patentomics,7 and this comes under scrutiny (and development) by Kylie Lingard
7 Following the recent history of development of the ‘omics age’, ‘patentomics’ can be considered
to be the systematic study of the structure, function and evolution of a select body of patents. The
tools are now developing that allow this to be done in a high throughput and readily
accessible way.
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and Mark Perry in “Innovation Cartography and Patentomics: Past, Present and
Future” (Chapter 13). The patented databases that are now available online provide
researchers, innovators, businesses and governments access to a wealth of infor-
mation as to the type of patented innovation happening at any given time, and who
is working in which field. As test case for patentomic exploration the authors have
looked at the crop innovation landscape as expressed through patents. Patent
cartography, patentomics, is bringing a chest of tools available to anyone with the
skills and time to make discoveries about discoveries, for example, by explor-
ing which companies are focusing on which sector, or where in a particular field is
innovation receiving a large number of patents.8
3 The Future
Despite pressures for conformity, sovereign states still try to work as independent
actors, where there is room for them to negotiate or legislate variations, and attempt
to protect their own interests. The changes in intellectual property that are occurring
around the globe can provide a practical touchstone to show the condition of
development of a state. How the topic has become internationalised, a part of
trade, an icon of prosperity and culture development, shows international
approaches to a topic that firstly has been fundamental to development and nation-
hood, and secondly one that has felt the increasing pressure to treat creations of human intellect, or some may argue animals and computers too, as a property right
much the same as other property rights.
The issues discussed in this work are not the only areas where intellectual
property is being recast due to the pressures of technology, the courts, business
and policy directions. There are multitudes of instances where the tension is
apparent. In India for example, Super Cassetts Industries Ltd. v Music Broadcast
Pty. Ltd. (2012) Civil Appeal Nos. 4196-4197 seeks to clarify the compulsory
licensing provisions of the Indian Copyright Act (1957), section 31. Even in the
United States of America, which has for decades been feted for promoting patentsfor human endeavour, such flux is evident. As noted in the Committee Reports
accompanying the 1952 Act telling us that the United States Congress intended to
“include anything under the sun that is made by man” in the subject matter for
patent (S.Rep. No. 1979, 82d Cong., 2d Sess., 5 (1952); H.R.Rep. No. 1979, 82d
Cong., 2d Sess., 6 (1952)), the United States has generally been a jurisdiction that
makes it easy to get a patent. However, even this is subject to interpretation and
8 Some equate patents with innovation, however in this author ’s view this is not the case. Patents
represent invention that is patented. A lot of innovation is not patented.
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refinement as seen in Association for Molecular Pathology v. Myriad Genetics
(2013) 569 U.S. ___,9 where the court rejected the BRCA patents. Australia has also
recently altered its position on gene patents in its ver sion of the same case, D’ Arcy
v. Myriad Genetics & Anor [2014] F.C.A.F.C 115.10 In the last two years we have
seen a number of instances where the utilitarian perspective is promoted, for
example in the negotiations for international agreement attempting to give more
protection to drug companies (Trans Pacific Partnership). On the other hand, some
courts, such as the Supreme Court of Canada in CCH , have started to recognise the
rights of users (of intellectual property) (CCH Canadian Ltd. v. Law Society of
Upper Canada (2004) S.C.C. 13). Copyright reforms in Australia to block web
sites, China’s political determination to dominate the innovation sector through
patent, the global struggles at the political level to find leverage through intellectual
property rights. It is fair to say that the great protection for intellectual property
rights agenda is strongly promoted by the United States, which focuses on gettingother countries to come to their own perspective. Effects are global, for example the
governance of intellectual property in Arab countries has seen “an unprecedented
wave of legislative reforms aimed at meeting their obligations under [TRIPS and
free trade agreements]” (Elmahjub 2016).
Even Switzerland, for example, cannot escape the wrath of the United States
Special 301 Trade commentaries:
The United States continues to have serious concerns regarding Switzerland’s system of
online copyright protection and enforcement. The United States strongly encourages
Switzerland to demonstrate its commitment to copyright protection and to combatingonline piracy by taking steps to ensure that rights holders can protect their rights (Froman
2014, 21).
In another dimension of the intellectual property spectrum there has been
increased ‘normalisation’ of the use of an open philosophy for sharing works, at
least based in part on one of the jurisprudential underpinnings of intellectual
property that in order to progress the Arts and Sciences there must be, minimally,
access to the materials, and the more open the access the greater societal benefit.
The Creative Commons licences are a good example of this, as is the Open Science
movement and efforts by independent groups such as Cambia. These individualinstances can be seen as pointing away from an international norm of a fixed,
harmonised, and possibly the more protectionist extreme view of rights in the
underpinnings of intellectual property. Indeed, there is a flux in the force.
9 Justice Thomas: “We hold that a naturally occurring DNA segment is a product of nature and not
patent eligible merely because it has been isolated, but that cDNA is patent eligible because it isnot naturally occurring”.10 The Australian High Court (the highest court in the judicial system) allowed the appeal from the
Federal Court of Appeal. Interestingly the latter court had openly criticised the United States
Supreme Court judgement Association for Molecular Pathology v. Myriad Genetics.
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Prior Art Defence in the Chinese PatentSystem
Lijuan Liu
Abstract The prior art defence in China is quite different from that of most
countries. It is complicated and cannot be easily understood, requiring researchers
to explore deeply into the legal system and specific circumstances of China. There
is currently a duel stream system in place that is addressed in this chapter. The prior
art defence is regarded by the Supreme People’s Court as a tool to solve the problemof prolonged patent infringement litigation, and has acquired a different purpose
from that of the defence in other countries. There are many disputes in the patent
arena occurring both before and after the establishment of the prior art defence in
China. With the evolution of China’s general legal system and the intellectual
property regime, it is likely that the prior art defence will develop into a more
globally standard form, although with particular Chinese characteristics.
1 A Case and Disputes Related
1.1 A Case
A relatively recent case heard by the Supreme People’s Court of the Peoples
Republic of China in 2010 is of key importance ( Bridgestone Corporation v
Zhejiang Hang Ting Dun Bull Rubber and Beijing Bang Li Xin Tire (2010) Civil
Ruling No. 189).1 The complaint was from a tyre tread design patent owner,
Bridgestone Corporation, a famous Japanese tyre-producing company. The alleged
infringer was a small rubber-related products producer,2 which was manufacturing
L. Liu (*)
Faculty of Law, Beijing Foreign Studies University, Beijing, China
e-mail: [email protected]
1 hh株式会社普利司通与浙江杭廷顿公牛橡胶有限公司、北京邦立信轮胎有限公司侵犯专利权案ii[Bridgestone Corporation v. Zhejiang Hengtingdun Rubber Ltd [Design Patent Infringe-ment Case], 最高人民法院 [The Supreme People’s Court] (2010) 民提字 第189号 [Min Ti Zi
No. 189].2
So small that the company does not even seem to have a website.
© Springer International Publishing Switzerland 2016
M. Perry (ed.), Global Governance of Intellectual Property in the 21st Century,
DOI 10.1007/978-3-319-31177-7_2
11
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a type of tyre that had a tread design similar to that of the complainant. The
defendant raised the prior art defence when it was sued for design patent infringe-
ment. Given that there were severely different opinions among the courts on how to
decide the prior art defence, the Supreme People’s Court issued writ of certiorari to
hear the tyre case by itself and made a decision that established the rule on prior art
that corrected the lower courts’ opinions.
The main difference between the Supreme People’s Court and the lower courts
in this case was whether the comparison should be made between the alleged design
and the prior design, or between the alleged design, the prior design and the
patented design; in other words, whether the patented design should be included
when making prior art defence comparison. The two lower courts of the first
instance and the appeal held that the comparison should be made just between the
alleged design and the prior design and there is no need to involve the patented
design, as this was the meaning given in the words of Chinese Patent Law article 62.The Supreme Court overruled that decision and held that the comparison should be
made with the patented design partially involved.
1.2 Disputes on Prior Art Defence
There have been many different opinions in China on how the prior art defence should
be interpreted and operate. Those opinions are still influencing the ways in which thedefence is implemented. The arguments mainly concern these issues: The first, is it
literal infringement or equivalent infringement that prior art defence should be applied
to? The second, is the prior art defence to be established for the allegedly infringing
product in terms of whether it is identical or similar? The key issue is whether or not the
patent itself should be involved in the prior art defence comparison.
The starting point is that the defence may apply only when an equivalent
infringement is established, as it has been regarded as a way to prevent patent
owners from broadening the scope of the patent to cover prior art through this
equivalent infringement doctrine. With this kind of the prior art defence there is noneed to check the validity of patents, and it would not authorise courts to examine
the validity of the patents themselves and therefore would not harm the current
patent authorities (He 2008). This is the reason why this line of reasoning was
supported by Patent Re-examination Board (hereafter referred to as ‘Board’) and
Beijing Higher People’s Court, the latter being a very important court in patent
cases since it is the only appeal court for all cases that rest on the validity of patents.
In its 2001 version of “Guidelines for Determination of Patent Infringement”,3 the
3 The Guidelines by the Beijing High People’s Court are not considered as Interpretations, part of
statutes only coming from the Supreme People’s Court. The Guidelines are rather a generalised
publication of certain regional court’s official opinions aimed at guiding the judges of that specific
court on specific issues and informing the public of the attitude of the court as a whole. Guidelines
have quasi-binding effect for the judges of that specific court and are not binding for other courts,
although they do have a persuasive effect.
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Beijing Higher People’s Court provided in article 100 that when the allegedly
infringing product is regarded as an equivalent product to that covered by the
patent, the prior art defence can be utilised if the alleged infringer can prove that
the product fell within a prior art under this opinion. However, under this interpre-
tation, prior art defence would have a rather limited role in the patent system, which
is the exact reason why it has been abandoned by the Supreme People’s Court.
This conservative thought of never breaking the current distribution of author-
ities, however, still holds sway. This was the reason for the other opinion of the
Beijing First Intermediate People’s Court, which was the court of first instance in
the Bridgestone. According to this Court’s opinion, the defence could apply in both
literal and equivalent infringements, but the comparison should be made only
between the alleged art and the prior art, in other words, the patented art should
not be included as a factor for consideration.
Another important view was proposed by the plaintiff, the patent owner, in Bridgestone and supported by some other courts. This line of reasoning holds that
the prior art defence is established only when the prior art is identical to the alleged
art. However, when the prior art is not identical but similar to the alleged art, the
court should not decide directly that the prior art defence has been established.
What the court should do in this situation is to follow the current distribution of
power, that is to say, to suspend the infringement case and wait for the decision of
the Board on the validity of the patents in question. The reason for this narrow
application of the defence is based on the belief that the courts should not be
allowed to examine the validity of the patents during the patent infringementcases, since it is inevitable to involve the patented art into the comparison in the
“similar” situation while there is no need to do this in the “identical” situation.
Other courts, in contrast, insist that it is necessary to compare the prior art with
the patented art and thus it is therefore inevitable that the novelty or inventiveness
of the patented art be examined, as this is the real basis for the prior art defence.
From this perspective, the prior art defence should definitely be aimed at breaking
the current distribution of authorities by letting courts examine novelty and even
inventiveness during patent infringement cases (First Intermediate People’s Court
of Beijing 2011, 22). They insist that this is the norm in all other countries.
2 Introduction of China Prior Art Defence
Chinese patent law protects three kinds of subject matter, namely inventions, utility
models and designs. The first two are technologies and the third is basically a
question of aesthetic appearance of industrial products, similar to Industrial Design
laws in other countries, such as Australia. The prior art defence is therefore dividedinto two categories: the prior technology defence and the prior design defence. The
two defences are not always confronting same issues, although the term “prior art
defence” is used to address the basic issues in China.
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The prior art defence was not available in previous versions of China Patent Law
(1984, 1992, and 2000), and it was not until the promulgation of the revision in
2008 that it was introduced. The defence was added in article 62:
In a patent infringement dispute, if the alleged infringer can prove that the technology or design exploited is actually practicing a prior art, the exploitation shall not constitute a
patent infringement.
According to article 62, if the defendant under a patent infringement challenge
can find a prior art that is the same or similar to the alleged infringing art, the court
shall not support the patent infringement complaint because the accused would be
considered just in using a prior art, which should be already freely available and
thus not excluded from the public domain by the patentee.
If a prior art is found, the alleged infringer may also challenge the validity of the
patent in China at the same time, which was the only way to fight against a patenteebefore the 2008 Revision. Both mechanisms are available after 2008, but they are
dealt with through different channels. The prior art defence is raised by the alleged
infringer to deny the infringement complaint during the patent infringement litiga-
tion. The defence is addressed by the same judges in the same court, and the
conclusion addresses whether the accused could avoid the infringement claim
without considering the validity of the patent. The alleged infringer may, however,
choose not to propose the prior art defence and instead challenge the validity of the
patent directly. However, once they challenge the validity of the patent, the court
has to suspend the infringement case to wait for the decision of patent validity,
which is determined by the Board (as this is currently the only authority enjoying
the power to examine the validity of patents). The court is not allowed to examine
the validity of a patent during an infringement case. Furthermore, the validity of a
patent may also be challenged by almost anyone, other than the alleged infringer,
and may be based on all the patentability conditions, which extends the basis of
potential challenges to a much wider range of issues than prior art.
Article 62 is too basic to provide any specific information, but a subsequent
interpretation on patent infringement by the Supreme People’s Court in 2009 pro-
vides some further detail in article 14:
Where all the alleged technical features fall within the scope of patent protection and are
identical to or without material difference from one of the corresponding technical features
in an existing technical proposal, the trialling people’s court shall conclude that the
technologies applied by the alleged infringer are the existing technologies under article
62 of the Patent Law (Lehman 2009).
Where the alleged infringing design is identical to or without material difference
from an existing design, the People’s Court at trial shall conclude that the design
used by the alleged infringer is the existing design under Article 62 of the Patent
Law. The prior technology part of this Interpretation has been made clearer through
a subsequent important case. In 2012, The Supreme People’s Court published
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Zetian Machinery v. Yancheng Greater Machinery (2012) Civil Ruling No. 184 in
which the Court clarified the application of the prior technology defence (see
Xiaodu 2014). The Court held that the comparison in the prior technology defence
is supposed to be made with reference to the claims of the patent. It should be
between the technical features of the alleged infringing technology falling within
the extent of protection of the patent and the prior art, instead of between whole
technical features of the alleged infringing product and the prior art, since the latter
would result in ridiculous and non-logical conclusions. The Court stressed that it
does not mean the validity of the patent would be examined in the Court. The patent
is regarded as a reference to specify which technical features are to be compared
with the prior art, given the alleged infringing products are usually specific products
or processes which comprise much more technical features than the prior art.
The Interpretation is less informative with regard to prior design defence. It
basically just says that if the alleged infringing design is identical or having nosubstantial disparities from the prior design, the defence would be established.
However, this design did not concern technology, and thus not involve comparing
any technologies. So the Zetian doctrine cannot be applied in the prior design
defence. The tyre case is even more complicated and will be discussed specifically
later.
3 Prior Art Defence in Other Countries
Prior art defence seems quite different in other countries.
3.1 Prior Art Defence in US
Prior art defence has been clarified clearly through two cases delivered by the
United Stated Court of Appeals for the Federal Circuit: Wilson Sporting Goodsv. David Geoffrey & Associates (1990) 904 F.2d 677 and Tate Access Floors
v. Interface Architectural Resources (2002) 279 F.3d 1357. Generally speaking,
prior art can be used to dispute equivalent infringement instead of literal
infringement.
According to the Court in Wilson Sporting Goods v. David Geoffrey & Associ-
ates, the prior art defence can be used to dispute equivalent infringement:
4 hh盐城则天机械有限责任公司与盐城市格瑞特机械有限公司侵犯实用新型专利权纠纷案ii[Zetian Machinery Co., Ltd. v. Yancheng Gereite Machinery Co., Ltd [Utility Model Patent
Infringement Case], 最高人民法院 [The Supreme People’s Court], [2012] 民申字 第18号 [Min
Shen Zi No. 18].
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There can be no infringement if the asserted scope of equivalency of what is literally
claimed would encompass the prior art (Wilson Sporting Goods v. David Geoffrey &
Associates (1990)).
Tate addressed this point more logically:
The doctrine of equivalents expands the reach of claims beyond their literal language. That
this expansion is guided and constrained by the prior art is no surprise, for the doctrine of
equivalents is an equitable doctrine and it would not be equitable to allow a patentee to
claim a scope of equivalents encompassing material that had been previously disclosed by
someone else (Tate Access Floors v. Interface Architectural Resources (2002)).
The prior art defence is, in short, aimed at constraining the extent of patents
broadened through the doctrine of equivalents instead of challenging the validity of
patents.
In Tate, the Court made it clear that the prior art defence cannot be used to
overturn a literal infringement complaint:
The presence of the prior art and its relationship to the patent claim language matters for
invalidity (Tate Access Floors v. Interface Architectural Resources (2002)).
And:
Where such claim language clearly reads on prior art, the patent is invalid (Tate Access
Floors v. Interface Architectural Resources (2002)).
If the prior art were allowed to be a defence against literal infringement, the
accused infringers would be able to do the following:
Flout the requirement of proving invalidity by clear and convincing evidence by asserting a
‘practicing prior art’ defence to literal infringement under the less stringent preponderance
of the evidence standard (Tate Access Floors v. Interface Architectural Resources (2002)).
They would be able to do this because:
Law requires patent challengers to prove invalidity by clear and convincing evidence.
Where an accused infringer is clearly practicing only that which was in the prior art, and
nothing more, and the patentee’s proffered construction reads on the accused device,
meeting this burden of proof should not prove difficult (Tate Access Floors v. Interface
Architectural Resources (2002)).
Both patent validity and prior art defence are heard in the same litigation by the
same court in the United States.
In China, however, the prior art defence applies not just in equivalent infringe-
ment but also in literal infringement cases and the comparison is made between the
alleged infringing art and the prior art, which is not permitted in the United States.
Then under the literal infringement case, the accused may raise prior art defence as
well as challenge the validity of the patent in China. But in the latter situation, the
courts are supposed to suspend the infringement case to let the challenger go to
Board to doubt the validity of the patent, since the courts hearing patent infringe-ment cases do not enjoy the power to examine the validity of patent. This ability
belongs exclusively to Board.
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3.2 Prior Art Defence in Japan 5
In Japan, the prior art defence is also used by the accused to dispute patent
infringement claims. That the accused art is the same as a prior art would definitelyresult in the conclusion that the accused art is not infringing the patent for it
obviously just used an art existing earlier than the patent. The comparison made
here is similar to that in China, that is, between the alleged infringing art and a prior
art, and is different from that in the United States. The reason is that Japan has a
similar dichotomy of authorities between patent infringement and validity.
The prior art defence was weakened in 2004 when the defence of definite
invalidation of patent was established into the new version of Japan Patent Act ,
article 104.3. The new legislation provides for the following:
Where, in litigation concerning the infringement of a patent right, the said patent isrecognised as one that should be invalidated by a trial, the patent may not be exercised
against the adverse party ( Japanese Patent Act (2004) article 104.3).
Given the accused party challenges the validity of the plaintiff ’s patent, the trial
court may examine the validity of the patent and refuse to support the patentee to
exercise their patent when the patent is found by the court as one that ‘should be’
invalidated. However, it is different from the system in the United States as the trial
court is still not allowed to invalidate the patent directly, but rather authorise the
examination of the patent and decide whether to support the plaintiff ’s infringement
claims based on a presumed future conclusion of the Japanese Patent Office(‘JPO’). When the patent ‘should be’ invalidated for not meeting some substantial
patentability conditions, the court may decide that the defence has been established
and refuse to support the plaintiff instead of announcing the invalidity of the patent.
This mechanism of defence applies only in obvious situations, that is, where the
patent would obviously be invalidated by the JPO. In China, this is seen as a
“defence of definite invalidation of patent”.
The defence of definite invalidation of patent is breaking the serious dichotomy
of patent-related powers and can be seen as great progress. Some scholars believe
that the invalidity defence would completely take the place of the prior art defence,while more scholars insist that the two defences are applied in different situations.
The invalidation defence applies under the whole patentability situation, even
involving prior art, whereas the prior art defence can be established when the
alleged infringing product is the same as a prior art and the invalidation defence
can be established when the patented art is same or similar to a prior art.
It can be concluded that China’s current prior art defence is more like that of
Japan than that of the United States. The reason is that the two countries have
similar division of power dichotomy in the patent system, as well as having similar
general legal systems, being Civil Law countries. However, the prior art defence is
5 Information on Japanese relevant systems comes mostly from Yang (2012) and Tumura (2010),
257–266.
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addressing much simpler situations in Japan after the invalidation defence has been
formally established, while the prior art defence is still confronting an extremely
complicated environment in China where the invalidation defence doesn’t exist in
the same way. In China, the courts depend heavily on prior art defence to solve
serious problems.
4 Complicated Situation in China
4.1 The Real Issues: Behind the Veneer
All disputes, no matter how they are presented, are rooted in China’s specific
mechanism of power and even in Chinese culture: the powerful administrative
branch.
There has been a steady dichotomomy between patent-related authorities in
patent infringement cases (civil cases) and patent validity examining cases (admin-
istrative cases). Administrative decisions may also be reviewed judicially but only
through special administrative litigation in which the administrative authority is
always the defence. The Board and the two Beijing courts (that is, the Beijing First
Intermediate People’s Court and the Beijing High People’s Court) are in the same
jurisdiction. They form the only route to examine and decide the validity of patents,
and this is basically an issue under administrative power. The intellectual propertyJudges in more than 70 local intermediate courts enjoy the power to hear patent
infringement cases, but they are not permitted to examine the validity of patents
(administrative cases) during patent infringement cases (civil cases).
This system should work well, at least theoretically, since the Board is made up
of professionals from various technological areas and is believed to be more
capable in examining the validity of patents that involve essentially technological
issues. Decisions on the validity of patents would be more consistent when coming
from the single channel, that is, the Board and the two Beijing courts, rather than
from more than 70 regional courts. This system does have these above advantagesexcept for one problem: the overly complex and protracted processes. In most
patent infringement cases, the defendant would challenge the validity of the patent.
Once that happens, the case has to be suspended to wait for the decision of Board on
the validity of the patent. If one of the parties does not accept Board’s decision, the
only relief provided is to raise an administrative litigation to challenge Board’s
decisions.6 So, the complete procedures of a typical patent infringement case in
6 Administrative litigations are different kind of cases from civil cases since the defendants are
always administrative authorities who make administrative orders about something, in this case,
the validity of patents. What is discussed here is not even a normal kind of administrative litigation
because the only defendant is the Board located in the jurisdiction of Beijing First Intermediate
People’s Court who therefore becomes the only court of first instance to review the Board’s
decision and Beijing High People’s Court who become the only appeal court.
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China would be, first, civil infringement case of first instance (heard by local
intermediate courts), which is to be suspended once the validity of the patent is
challenged by the defendant, then the examining procedure of the validity of the
patent by Board, and then the administrative litigation by Beijing First Intermediate
Court of the first instance on the decision of Board concerning the validity of the
patent, and then the appeal administrative litigation, which is normally the final
decision on the validity of the patent unless the case is accepted by the Supreme
People’s Court, which rarely happens. Following this, the case would return back to
the original patent infringement litigation to decide whether the infringement exists.
Any party dissatisfied with the decision on the infringement could still appeal. The
decision of the appeal court on the patent infringement is normally the end of this
whole litigation unless the civil infringement case is accepted by the Supreme
People’s Court to review. Quite a lot of patent infringement cases will go through
all the above procedures as long as the party can afford it. It is not unusual in Chinafor a company to be struggling in those endless procedures.
The real issue underneath all the different views on prior art defence, we might
find, is a question of power distribution: Should we keep the Board and the two
relevant Beijing courts as the only channel to check the validity of patents? Or
should we allow the 70 or more regional courts to step in through prior art defence
to check the validity of patents? People have different thoughts on that. Some
believe that it is a worldwide and unavoidable trend to let courts check the validity
of patents during civil infringement cases (Huaiwen 2008). Others insist that it is
more realistic in China to limit the power of checking the validity of patents to theonly channel given the special situation.
The real purpose and value of the prior art defence in China, at least for the
Supreme People’s Court, on behalf of the many local courts hearing patent infringe-
ment cases, is to let the judge decide directly whether the patent has been infringed
without suspending the case and thus shortening the processes of patent infringe-
ment cases and freeing the parties from litigation sooner.
4.2 The Supreme People’ s Court ’ s Way to Apply Prior Art
Defence
The Supreme People’s Court expressed its attitude of the way to apply the defence
in the Zetian and Bridgestone. The tyre case will be analysed here since it reflects
the complicated situation of a typical defence.
First, the Court believed that the defence should not be limited to the ‘identical’
situation and should also be applicable to the similarity situation, otherwise the
defence would have a rather limited role since the alleged art is rarely identical to
the prior art. When an alleged design is similar to a prior design, however, the result
would be ridiculous if comparing the alleged design with the prior design without
involving the patented design. We could see this ridiculous situation in
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Bridgestone. In this case, comparing only the alleged design with the prior design,
shows a good degree of similarity. At the same time the patented art was found to
have some important differences from the prior design, which means that patent
validity would probably be sustained by the Board. The allegedly infringing art was
actually using the features which the patented art had but the prior art didn’t have,
which means a real infringement exists. However, the prior art defence was still
established to relieve the infringer according to the courts of first instance and the
appeal, which believed that the prior art could be established as long as the alleged
design is found similar to the prior design and no need to involve the patent design.
The reason for this dilemma is the conscious or unconscious denying, or
ignorance, of the fact by our judges and analysts that China’s current prior art
defence has the same roots in novelty or even inventiveness of patents, an under-
standing that is not lacking in other countries such as the United States. Whether we
admit it or not, the logic of China’s prior art defence is still that the patent shouldnot be granted in the first place if there is a prior art, and of course then there is no
possibility of infringement. When the allegedly infringing art is identical to the
prior art, the result of the prior art defence after comparing the prior art with the
alleged one is in consistent with the result of validity of the patent: if the allegedly
infringing art is identical or similar to the patented art, the prior art will be identical
or similar to the patented art too, which definitely means the patent should not have
been granted for the lack of novelty or inventiveness, and of course then there is no
infring