[Federal Register Volume 76, Number 200 (Monday, October 17, 2011)]
[Notices]
[Pages 64075-64076]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2011-26757]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

[Docket No. PTO-C-2011-0056]


Request for Comments on Intellectual Property Enforcement in 
China

AGENCY: United States Patent and Trademark Office, Department of 
Commerce.

ACTION: Request for written submissions from the public.

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SUMMARY: As China has become a major trading partner for the United 
States, U.S. rights holders are increasingly seeking to protect and 
enforce their intellectual property (IP) in that country. China's 
patent and trademark offices are now among the largest in the world in 
terms of filings, and its IP enforcement system is being increasingly 
utilized by U.S. rights holders. Ensuring that the Chinese IP system 
works in a fair and timely manner for U.S. innovators is a top priority 
for the U.S. Government.
    To that end, the United States Patent and Trademark Office (USPTO), 
in collaboration with other U.S. Government agencies, is leading an 
effort to identify and assess the challenges U.S. inventors are facing 
with China's judicial and administrative patent enforcement systems. 
The USPTO would like to address the concerns of rights holders by 
working with them to identify problems--such as difficulties in 
gathering evidence, meeting evidentiary requirements, protecting 
proprietary information, obtaining adequate damages, and enforcing 
preliminary injunctions--to then find ways to address these issues with 
the Chinese Government.
    As part of this effort, the USPTO, in coordination with the White 
House Intellectual Property Enforcement Coordinator (IPEC), has 
conducted a series of roundtables to obtain the views of diverse 
members of the patent community who have first-hand experience 
enforcing their patents in China. Roundtables were held on July 19, 
2011, in Washington, DC; on July 26, 2011, in Beijing, China; on July 
29, 2011, in Shanghai, China; and on August 1, 2011, in Guangzhou, 
China.

[[Page 64076]]

Topics for discussion included: (1) Acquisition and enforcement of 
utility model and design patents; (2) evidence collection and 
preservation in Chinese courts; (3) obtaining damages and injunctions; 
(4) enforceability of court orders; and (5) administrative patent 
enforcement.
    To ensure that the USPTO receives a wide array of views, the USPTO 
would like to invite any member of the public to submit written 
comments on China's patent enforcement system, including, but not 
limited to, the five specific issues listed above. Examples of first-
hand experience using China's patent enforcement system, and 
recommendations on ways to improve the system, are encouraged. Based on 
these comments, the USPTO intends to produce a report that details the 
patent enforcement landscape in China and identifies any challenges 
faced by U.S. innovators, together with recommendations for improving 
the system.

DATES: Effective Date: October 17, 2011.
    Dates and Times: The deadline for receipt of written comments for 
consideration by the USPTO on the five categories of issues listed 
above, or on any other issues pertaining to China's patent enforcement 
system, is November 4, 2011.

ADDRESSES: Written comments should be sent by electronic mail message 
via the Internet addressed to [email protected]. Comments may also be 
submitted by mail addressed to: Mail Stop OPEA, United States Patent 
and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450, Attn: 
Elizabeth Shaw. Although comments may be submitted by mail, the USPTO 
prefers to receive comments via the Internet. If you would like to 
submit confidential business information that supports your comments, 
please contact Elizabeth Shaw at [email protected] or 571-272-
8494.
    The written comments will be available for public inspection by 
appointment only at the Office of Policy and External Affairs in the 
Executive Library located in the Madison West Building, Tenth Floor, 
600 Dulany Street, Alexandria, Virginia, 22314. Contact: Elizabeth Shaw 
at [email protected] or 571-272-8494.
    Because comments will be made available for public inspection, 
information that is not desired to be made public, such as an address 
or phone number should not be included in the comments.

FOR FURTHER INFORMATION CONTACT: Elizabeth Shaw, Office of Policy and 
External Affairs, by phone 571-272-8494, by facsimile to 571-273-0123, 
by e-mail at [email protected] or by mail addressed to: Mail 
Stop OPEA, United States Patent and Trademark Office, P.O. Box 1450, 
Alexandria, Virginia 22313-1450, ATTN: Elizabeth Shaw.

SUPPLEMENTARY INFORMATION: As the second largest economy in the world, 
China continues to attract U.S. businesses interested in tapping into 
its growing domestic demand and rapid market growth. As U.S. innovators 
continue to export their products and services into China, the 
effective functioning of China's patent enforcement system will be 
critical to the success of U.S. innovators in China.
    The State Intellectual Property Office (SIPO) of the People's 
Republic of China is now one of the largest patent office in the world 
in terms of patent filings. It received 1.2 million patent applications 
in 2010. Despite an increase in the number of patents obtained in 
China, the number of patent cases filed in Chinese courts has remained 
relatively unchanged since 2005.
    Patent enforcement in China comprises two mechanisms--judicial and 
administrative. Concerns over China's judiciary (such as lack of 
adequate discovery powers, evidentiary burdens, and low damages 
rewards) have been cited as reasons why U.S. and foreign companies do 
not file more patent suits in Chinese courts. Indeed, according to 
China's Supreme People's Court, only about 4 percent of civil IP cases 
in China involve foreign parties. Furthermore, China issues utility 
model and design patents that do not undergo substantive examination 
and have complicated actual inventors' pursuit and enforcement of their 
IP rights in China.
    In addition to judicial patent enforcement in Chinese courts, 
patent enforcement in China can also occur administratively in SIPO's 
provincial IP offices, which have the authority to issue cease-and-
desist orders, seize infringing goods, and exact penalties against 
infringers. The limited investigative powers of the agency and 
ineffectual penalties have been cited as reasons for the weakness of 
this enforcement route.
    The USPTO has conducted a series of roundtables to evaluate U.S. 
rights holders' views of China's patent enforcement system. These views 
have included first-hand experiences enforcing patent rights in China, 
defending against charges of infringement in China, as well as 
suggestions for future improvements to the system. The USPTO heard from 
a number of roundtable participants from diverse sources including 
practitioners, industry, trade organizations, academia, and government.
    To ensure that the USPTO receives a wide array of views on China's 
patent enforcement system, the USPTO is now seeking written comments on 
patent enforcement issues in China, including but not limited to (1) 
acquisition and enforcement of utility model and design patents; (2) 
evidence collection and preservation in Chinese courts; (3) obtaining 
damages and injunctions; (4) enforceability of court orders; and (5) 
administrative patent enforcement. Any member of the public may submit 
written comments. Examples of first-hand experience using China's 
patent enforcement system, and recommendations on ways to improve the 
system, are encouraged. Based on these comments, the USPTO intends to 
produce a report that details the U.S. view of the patent enforcement 
landscape in China and identifies any challenges faced by U.S. 
innovators, together with recommendations for improving the system.

    Dated: October 5, 2011.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2011-26757 Filed 10-14-11; 8:45 am]
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