By Moga, Thomas T.; Raiti, Jonathan
The China Business Review , Vol. 29, No. 6
Nearly one year after China's entry into the World Trade Organization (WTO), it is clear how difficult it will be for China, a country that remains a leading violator of intellectual property (IP) rights, to implement one of the most important WTO agreements-the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement).
TRIPS Agreement basics
All WTO members must comply with the TRIPS Agreement as part of their WTO obligations. The agreement provides basic standards for IP protection and includes rules related to the enforcement of IP rights. In brief, members must ensure that their enforcement procedures "permit effective action against any act of infringement of intellectual property rights covered by this agreement, including expeditious remedies to prevent infringements and remedies which constitute a deterrent to further infringements..." (TRIPS Agreement Article 41.1, emphasis added).
Members must also agree to abide by transparency requirements that call for the publication of laws and regulations, judicial decisions, and general administrative rules that pertain to IP matters (TRIPS Article 63.1). According to China's Protocol of Accession, China must, with some minor exceptions, make new laws and administrative measures available to the public for comment before adoption.
China changes its IP laws and regulations
Beijing added, deleted, and rewrote hundreds of laws during the run-up to its WTO entry because, by accession, China agreed to establish IP laws and enforcement procedures that comply with the TRIPS Agreement. Many of the provisions of these new laws were vast improvements over their predecessors. Some key provisions of the most important IP laws follow.
The Patent Law, enacted in 1985, was first amended in 1993. The changes included extending patent protection from 15 years to 20 years, pursuant to TRIPS Article 33, and allowing the patenting of chemical and pharmaceutical products as well as food, beverages, and flavorings, in compliance with Article 27.1.
China amended its Patent Law for the second time in 2001 (see The CBR, July-August 2001, p.38). Article 11 of China's Patent Law was amended to include unauthorized "offering for sale" as a violation of a patent holder's right. (Article 28 of the TRIPS Agreement defines .offering for sale" as an exclusive right conferred on the patent owner.) Article 53 of China's Patent Law parallels TRIPS Article 31-which aims to define clearly the relative value and type of patent that can be subject to a compulsory license. Article 57 of the Patent Law shifts the burden of proof of infringement to the defendant as required by Article 34.1 of the TRIPS Agreement. Finally, Article 61 of the Patent Law complies with TRIPS Article 44.1, which requires the availability of injunctive relief.
China enacted the Trademark Law in 1983, amended it in late 2001, and amended its implementing rules in late 2002.
Article 3 of the amended Trademark Law expands the definition of what may be registered to include collective marks and certification marks, and Article 12 provides protection for three-dimensional symbols. (TRIPS Article 15 requires protection for traditional subject matter, including signs, names, and words.) Articles 13 and 14 enhance protection for well-known marks and Article 57 provides pre-litigation injunctive relief, in compliance with TRIPS Article 44.1. Finally, Article 56 allows a court to assess damages for infringement in the form of either the amount of the improperly earned profit or, where it is difficult to determine the profit, in an amount not to exceed 500,000 ($60,474). The former law specified no such damage award.
The amended implementing rules allow the registration of geographic indications (Rule 6) and provide more detailed explanations of protection for well-known marks (Rules 45 and 53).
China's Copyright Law, first enacted in 1991, was amended in late 2001. …