December 27, 2018 People’s Court Daily Page 5
Reporter: Yan Jianyi Correspondent: Chen Yingying
At a private enterprise forum held on November 1, General Secretary Xi Jinping pointed out that it is necessary to create an environment of fair play for private enterprises to give sufficient market space for their development. On November 7, General Secretary Xi Jinping put forward again during his visit to Shanghai that we should deepen the reform and opening-up, and take the lead in implementing policies that encourage, support and guide the development of private enterprises, so as to create a good institutional environment for them.
With the development of mass entrepreneurship and innovation, private enterprises have become the “new pioneers” of innovation and entrepreneurship, and IPR protection is a vital link in this aspect. How can Shanghai Intellectual Property Court, which has been established for nearly four years, give play to its role as the guardian of innovation achievements of private enterprises, so that they can participate in the market competition on a fair basis? Recently, the reporter visited the court to find out the answer.
“Open the door” & “door-to-door publicity”
Provide legal services and publicity on the rule of law for private enterprises
“How to avoid infringing on others’ rights by using their pictures on WeChat official accounts?” “How should we preserve the experimental data and work records properly in our daily work?” “Should a professional lawyer be hired to handle patent proceedings?”... In May, judges from Office of Judge Chen Huizhen, National Adjudication Expert visited Fengxian Park to investigate the management and need for judicial protection of intellectual property rights in the park. Representatives of ten private enterprises from various fields, such as Mercury, Chicmax Cosmetics and Mahle Technology, etc. consulted the judges on the IPR protection and defense encountered in their work respectively, and got satisfactory guidance and explanation.
Among 222 cases of dispute over the ownership of innovative achievements concluded by Shanghai Intellectual Property Court in the past four years, there’re 217 cases in which one or both parties are private enterprises, accounting for 97.7% in total. “Should the problems existing in the IPR management and protection of enterprises be noticed earlier, IPR infringement would have been avoided to a large extent. How to shift from post-trial to pre-warning and prevention remains a concern of Shanghai Intellectual Property Court.” Chen Yajuan, President of Shanghai Intellectual Property Court, said.
Perceiving the urgent needs of enterprises in trial practice, on June 25, 2015, Shanghai Intellectual Property Court and the Management Committee of Zhangjiang High-tech Industrial Development Zone set up an Office of Judge Chen Huizhen, National Adjudication Expert in Zhangjiang High-tech Enterprise Park, which will, on the 26th of each month, promptly provide advisory services for enterprise representatives in urgent need of help, many of whom are private entrepreneurs and innovators.
On the first day of operation, private enterprises came in an endless stream. Lin is the director of a bio-tech company. As soon as he entered the door, he complained to the judge: “How to prevent senior executive from taking away the company’s trade secrets when he/she is leaving? And how to discover possible IPR infringement?” Chen Huizhen answered Lin’s questions patiently one by one.
“I had never expected to get the most professional judicial solutions within the park. The usual impression of a judge is to distinguish right from wrong in court. However, in the office, judges are more like ‘doctors’ who diagnose stubborn diseases and then give prescriptions,” Lin said.
It’s a very good comment that judge is a “professional doctor” for enterprises additionally. Diagnosing and solving the problems of enterprises is the motive and pursuit of Office of Judge Chen Huizhen.
Sometimes, Office of Judge Chen Huizhen visits different parks to carry out researches, lectures or legal publicity, or invite enterprises in the park to observe the trial. By offering special lectures on IPR protection, providing professional advice and inviting enterprises to court, etc. Shanghai Intellectual Property Court is trying to guide private enterprises to establish risk prevention mechanisms to further create an atmosphere of respecting and protecting IPR.
In October, representatives of nearly ten private enterprises, including Shanghai DahanTricom Corporation and Shanghai Intellectual Property Park, etc., sit on the hearing of a case concerning dispute over copyright infringement and unfair competition before Shanghai Intellectual Property Court. The representatives said that this vivid observation would help them to enhance their awareness and ability of IPR creation and protection, and they hoped to have more opportunities to visit the court to learn about the rule of law.
In the past four years, Office of Judge Chen Huizhen has visited many parks, given special lectures, and organized enterprise representatives to observe court hearings for 34 times. A total of more than 1600 business representatives have participated in various activities. Besides, typical cases of intellectual property rights were collected and distributed to enterprises and entrepreneurs to legal awareness of IPR protection of private enterprises.
Office of Judge Chen Huizhen has become a window for Shanghai Intellectual Property Court to learn about the needs of private enterprises for IPR judicial protection, which, through investigation, finds out their difficulties, pains and obstacles in IPR creation, protection and application, thereby providing accurate advice in the trial.
Build a bridge of technical translation to solve the problem of technical communication among private enterprises
For most private entrepreneurs, protection of innovation results is often directly related to their survival and development. However, small, micro and medium private enterprises often don’t have their own intellectual property professionals. When involved in legal proceedings, they are always unable to tackle problems relating to both technology and law, whereas judges usually don’t have relevant technical background, which discourages them from ascertaining technical facts when hearing technology-related intellectual property cases.
“If we have no idea of the technical facts, we can’t accurately grasp the focus of the dispute. How can private enterprises express themselves clearly and how can judges understand what they say? To eliminate the “estrangement,” Shanghai Intellectual Property Court built a bridge between judges and private enterprises with the help of external professionals.” Li Shulan, Vice President of Shanghai Intellectual Property Court, said.
On March 16, 2016, Shanghai Intellectual Property Court held a ceremony for the appointment of the first 11 technical investigators, who would participate in the trial of IPR cases to improve the trial quality and efficiency. Technical investigators have become the “technical advisers” of judges.
The first 11 technical investigators come from different organizations, including government agencies, industry associations, colleges and universities and scientific research institutions, etc., and all have strong professional background. In litigious activities, they will participate in the trial of cases as judicial assistants and give fully play to their professional advantages to ensure that technical facts are ascertained in a more scientific, professional and neutral way.
Last August, a silver and orange bicycle was placed in the middle of the courtroom. Under the bench, there’s a seat for technical investigator in addition to the clerk and assistant judge.
“That was last summer when Mobike’ patent infringement case (unlock the bicycle by scanning the QR code) was heard in court. I sat at the technical investigator seat, and then the presiding judge asked me if I had any questions to ask immediately after the two parties finished their statements.” Zhou Tao recalled to the reporter. Two years ago, Zhou Tao, chief engineer of Shanghai Research Institute of China Telecom Corporation, was appointed technical investigator by Shanghai Intellectual Property Court.
In that case, the plaintiff was an individual and the defendant was a private enterprise. During the trial, decoder, memory, comparator... countless technical terms hit over, and Zhou Tao, sitting at the technical investigator’s seat, was taking notes from time to time. When the presiding judge appointed Zhou Tao to ask questions, she asked both parties whether electric connection was a wireless connection or a physical connection and where its scope was. After the trial, Zhou Tao submitted a detailed Technical Examination Opinion to the judge.
“This submission deepened our understanding of technical issues involved in the case. The court rejected plaintiff’s claim in accordance with the law, and the defendant’s products didn’t constitute infringement.” Shang Jiangang, the responsible judge, said.
Data show that in the past four years since its establishment, Shanghai Intellectual Property Court has appointed 13 technical investigators successively. They have handled 734 technical consulting and related affairs, participated in 34 evidence preservation and crime scene investigations, appeared in 247 court sessions and issued 60 technical examination opinions and consultation comments.
Eliminate the obstacle
Solve the pains and difficulties encountered by private enterprises in right defense
“IPR infringement is very simple, sometimes you just need to move the mouse and then copy it; however, right defense isn’t easy. Collecting evidence, instituting legal proceedings...every step is time-consuming and laborious.” “Difficulty in providing evidence,” “low compensation” and “long period” have become a headache for many private entrepreneurs who are still in the stage of starting a business.
In this regard, Shanghai Intellectual Property Court has its own reflections and practice. In the past four years, the court had made beneficial exploration and practice on strict judicial protection of IPR by focusing on “three emphases,” that is, perfecting the judicial mechanism, giving full play to the role of deterrent power of laws and intensifying the punishment for infringement.
In August this year, Shanghai Intellectual Property Court accepted an application for evidence preservation in a case involving computer software copyright infringement. The plaintiff, a private equipment manufacturing company in Shanghai, believed that the defendant had infringed upon the copyright of computer software of its intelligent vehicle service system and applied to the court for evidence preservation before litigation. To this end, Shanghai Intellectual Property Court assigned technical investigators, enforcement judges and judicial police to the defendant’s production plant to carry out evidence preservation. By virtue of his professional and technical skills, technical investigator Wang Chuanji obtained the target program of vehicle-borne system involved from the replicate computer of the production line, and successfully preserved several versions of the target program of vehicle-borne system involved, laying a good foundation for the trial of the case.
In addition to evidence preservation, property preservation can prevent the infringer from hiding property to a certain extent and will help to promote the settlement of disputes and the performance of obligations. In the case of dispute over computer software copyright infringement filed by Mexxen Technology (Shanghai) Inc, Shanghai Intellectual Property Court gave full play to the functions of system for network enforcement inquiry and control at the party’s application and successfully preserved the plaintiff’s property valued at RMB 8.5 million in fully. On this basis, the parties reconciled and withdraw the lawsuit.
In the past four years, Shanghai Intellectual Property Court has ruled in favor of 799 preservations according to law, of which 92 were carried out before litigation and 707 during litigation, laying a solid foundation for the effective hearing of cases and the resolution of disputes.
At the same time, Shanghai Intellectual Property Court aims to establish a judicial determination mechanism for infringement damages, which is guided by the market value of intellectual property and meets the market expectation of right holders. It’s actively exploring a scientific calculation method of infringement damages.
In the case of dispute over patent infringement filed by Shanghai Xinbaiqin Special Vehicles Co., Ltd, the defendant deliberately submitted an application for waiver of patent right to the State Intellectual Property Office though it had been decided in a separate case that the patent right he enjoyed belonged to plaintiff. As a result, the plaintiff lost the patent right. After the trial, Shanghai Intellectual Property Court held that the defendant waived its patent right in bad faith and therefore should compensate for the plaintiff’s corresponding losses. After the announcement of the judgment, many enterprises rejoiced and held that the severe punishment of the court for willful infringement fully reflected the protection of legitimate interests of the right holders.
In September 2016, Dong Mingzhu, deputy to the National People’s Congress (NPC), pointed out the problem in a survey conducted by Shanghai Intellectual Property Court that enterprise won the case but lost the market. As the market is changing rapidly, private enterprises can’t afford the time-consuming IPR litigation.
To this end, Shanghai Intellectual Property Court took full advantage of external powers, including technical experts, mediation organizations and the Internet, to improve the efficiency of litigation as far as possible.
A few days ago, Shanghai Intellectual Property Court received two letters of thanks from both parties in a case involving invention patent infringement. After hearing the case, Shanghai Intellectual Property Court entrusted Shanghai Commercial Mediation Center with the mediation based on the parties’ will, which ended up with a package of mediation agreements and reconciliation in the court.
In fact, Shanghai Intellectual Property Court has received a lot of such letters of thanks, and this can be attributed to its flexible use of pre-action mediation and court mediation, which realized win-win for enterprises. It’s learned that in view of the high expertise and technology involved in IPR cases, Shanghai Intellectual Property Court has established cooperation mechanisms with 13 social mediation organizations and trade associations in software, bio-medicine and other fields to enhance the specialization, professionalism, and standardization of mediation. The success rate of pre-action mediation and court mediation has reached 30% or so.
In June, a case of dispute over computer software development contract between two private enterprises was concluded by Shanghai Intellectual Property Court in only 51 days. Ling Zongliang, the responsible judge, told the reporter that Internet technology played an important role. Given that the defendant was far away in Chongqing and that evidence collection and cross-examination at the early state had been completed, the second trial and sentencing were carried out by remote video links with the consent of both parties, saving the time and cost of rushing about.
“We will resolutely implement the policy of “two never waivers” and 27 Opinions of CPC Shanghai Municipal Committee on promoting the development of the private sector of economy, adhere to the equal treatment of private, state-owned and foreign-funded enterprises, stick to strict, equal and efficient protection of intellectual property of all kinds of rights holders, and focusing on resolving the “difficulty in providing evidence,” “low compensation” and “long period” in IPR protection, continue to intensify the punishment for infringement while reduce the cost of safeguarding their legitimate rights to prevent private enterprises from ‘winning lawsuits but losing the market’, thereby fully vitalizing the innovation in the private sector of economy.” Chen Yajuan said.
