Trade Secret Protection in China Before, and After, the 2020 US-China Trade Agreement

USA and ChinaWe are delighted to share a recent journal article by our China IP expert, Paolo Beconcini, as published in the Review of Intellectual Property Law (RIPL). In this article, Dr. Beconcini provides a thorough and well-documented review of recent changes in China’s regulations on trade secret protection and enforcement. Many of these changes were made in response to the U.S. WTO lawsuit of 2018 and the U.S.-China Trade Wars, including shifting the burden of proof and lowering thresholds for criminal enforcement. The article assesses the implementation of promised changes, and provides suggestions for further changes as well as guidance to practitioners for navigating trade secret enforcement challenges in China.

© Copyright 2021 Squire Patton Boggs

Trademarking Common Foreign Words – Yes You Can

We are delighted to share an interesting article by our colleagues in France, Catherine Muyl and Marion Cavalier, about whether and how a common word in a regional dialect can qualify as a trademark in France. They describe a case where a company named Krampouz that makes plates for cooking crepes registered the marks “KRAMPOUZ” and “KRAMPOUZ BILLIG.” The word “krampouz” means crêpe in Breton, and “billig” indicates the cast iron plate on which crêpes are traditionally cooked. As they explain, such trademarking of local language terms that would be generic if translated can be successful under French law. As explained here, this approach can also be successful under US law.

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Delaware Reminds Litigants Not to Wait to Disclose Infringement Theories Under the Doctrine of Equivalents

Back in July and December 2020, we wrote about the seeming rise in allegations of infringement allegations under the doctrine of equivalents (DOE) in life sciences cases. We noted that in those recent cases the Federal Circuit provided in-depth analyses of the application of DOE, prosecution history estoppel, and the various other limits on the DOE, and suggested that potential infringers needed to keep an eye on the substantive evolution of the doctrine.

But a recent decision in Arendi S.A.R.L. v. Motorola Mobility LLC, Civ. Action No. 1-12-cv-01601 (D. Del.) (docket entry 250), reminds practitioners that before addressing the substantive elements of DOE, they should make sure it’s properly in the case at all. In that case, Arendi’s original complaint accused Motorola of infringing “literally or under the doctrine of equivalents.” Its initial disclosures, filed under the Default Standard for Discovery, accused Motorola of “infringing,” but did not mention the DOE. Similarly, Arendi’s claim charts referred to “infringement” without distinguishing between literal infringement and the DOE. After the close of fact discovery, Arendi submitted its infringement expert reports, noting that “[t]o the extent that the foregoing evidence does not demonstrate literal infringement of this element, the evidence demonstrates infringement . . . under the doctrine of equivalents.” Its reply infringement expert reports, Arendi included substantive opinions relating to the DOE. Continue Reading

Understanding IP in China: Design Patents

In the last of his recent series of blogs on IP in China, Dr. Paolo Beconcini discusses amendments expanding the scope of design protection in China and predicts a new flood of “junk” design applications. He discusses the basis and requirements for Chinese design patents, including issues relating to functionality. He also discusses some structural issues that have contributed low-quality filings, including the lack of required substantive examination. The blog can be found here.

Squire Patton Boggs Recognized for Trademark Expertise Around the World

gold winner cup on blue backgroundWe are delighted to share the recent recognition of our global trademark practice by World Trademark Review for 2021.  Squire Patton Boggs received renewed recognition as a leading firm in the “China (foreign)” chapter, and for its UK and Germany practices.  In addition, two of our US partners – Deborah Lodge and Phil Zender – were recognized as “Recommended Experts.”  As reported, Ms. Lodge “has a deft touch on strategic branding matters and adds value with her granular privacy and internet law insight. Licensing is a strong component of her practice and something she excels at.” As also reported, Mr. Zender “has a complete command of trademark law and advocates strongly for clients. His advice is extremely thorough and reflects the strategic aspects of his thinking. Highly responsive, he has a way of making each client feel like his only client – his service is second to none.”  Importantly, and as also noted in its WTR 1000 rankings, the China, UK, Germany, and US experts of Squire Patton Boggs “link[] up closely . . . to address cross-border issues as if the borders simply weren’t there.”

Congratulations to our experts Kerry Lee (UK), Reinhart Lange (Germany), Iliana Haleen (Germany), Paolo Beconcini (China), Deborah Lodge (US – DC), and Philip Zender (US – California).

Understanding IP in China: The Rules of Evidence

In his continued blog series, Dr. Paolo Beconcini and Elisa Li discuss the principles of evidence pertaining to IP disputes in China, including recent and substantial changes to those rules. In China, evidence must be collected prior to the filing of a case, as there is no discovery. The changes address commonly-occurring issues of authenticity, foreign documents, and damages, and are likely to impact litigation strategies. The blog can be found here.

 

© Copyright 2021 Squire Patton Boggs

New Procedures Indicate China’s Patent System is Now Focused on Quality, not Quantity, of Patents

As is often the case in China, a critical change in the IP system has taken place without the publicity of a new law but with an internal administrative document hidden on a government website. With an administrative Circular issued on January 27, 2021, the China IP office is rewriting the rules that led to the massive surge in low-quality patent filings (a/k/a junk patents) by Chinese firms during the last decade, while subtly changing the scope of the statutory rules on the examination of utility models and design patents. The ultimate goal is another implementation of an old Marxist rule, namely, the transformation from quantity to quality.

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Foreign Defendants, You’ve Got Mail! Substitute Service By Email Increasingly Permitted

Serving foreign corporate defendants with a complaint filed in a U.S. Federal Court has never been an easy task, but the COVID-19 global pandemic and regional shut-down orders have made finding someone to physically serve with process nearly impossible in many locations. Contrary to conventional wisdom, one district court recently made it clear that The Hague Convention is not the only means for effectively serving foreign defendants. Where not expressly prohibited, courts may grant leave to serve foreign defendants by email under certain circumstances. Continue Reading

The Danger of the Social Media Filter – ASA Rules Adverts are Misleading

The beauty industry faces a constant challenge in relation to the truthfulness of the products it sells. Through the power of social media, beauty brands use influencers to endorse their products, adding a dimension of apparent authenticity to their advertising.

In an attempt to regulate such practices, the Advertising Standards Authority (ASA) has focused on transparency, requiring that brands disclose their commercial relationship with the influencer, usually with the hashtag “#ad”. The beauty industry now faces yet more regulation, as the ASA has restricted certain uses of filters on photos that promote beauty products.

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Buy Now, Pay Later: New Advertising Guidance

With online shopping at all-time high, ‘buy now, pay later’ (BNPL) options are becoming increasingly popular. BNPL is an option that enables customers to delay paying for goods or allows them to pay in instalments. The service typically bears interest which consumers have to pay. It differs from hire purchase because with BNPL, the customer owns the goods on purchase, it is just that the due date for payment for the goods is delayed. This seemingly easy way to get credit is now, for better or worse, subject to regulation in the UK. Continue Reading

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