Witnessing the Changes in the Last Decade—An Interview with Jiang Zhipei

By Doris Li, China IP,[Comprehensive Reports]

Judge Jiang Zhipei took office as the Deputy Director of the IP Office of the Supreme People’s Court in February 1995, acted as the Deputy Chief Justice of the IP Tribunal of the Supreme People’s Court from October 1996 and became the Chief Justice and the Supreme People’s Court’s Judicial Committee member in August 2000. He worked in that position from then on until he retired in August 2008. He then became a law firm consultant. Judge Jiang has consistently been involved in works relating to IP.
This interview took place right after Judge Jiang joined King & Wood, and his new office is still full of books and awards waiting to be sorted out.
Memories of the busy Days before china Joined the wTo
When recalling the preparatory work for China’s accession to the WTO, Judge Jiang said: “Although the work was hard and full of tension, but considering the later law enforcement and the high degree of satisfaction at home and abroad, all that work was not done in vain.” The interview began with Judge Jiang’s reminiscence of the busy and intense work before China’s accession to the WTO in 2001. Before the IP Tribunal of the Supreme People’s Court’s establishment in October 1996, there was only an IP Office, in which Judge Jiang acted as one of the Deputy Directors. After the IP Tribunal was established, the position of the Chief Justice was held by Huang Chidong, Chief Justice of the Economic Tribunal and Judge Jiang took office as Vice Chief Justice.
In August 2008, the IP Tribunal became independent from the Economic Tribunal, and Judge Jiang was appointed as the Chief Justice and Judicial Committee member. At that time, in the IP Tribunal, there were only 5 to 6 staff working on very few cases and the majority of their work was devoted to studying and working out the framework of IP’s legal protection, making judicial interpretations from time to time and guiding and coordinating works. According to Judge Jiang, “When the IP Tribunal was newly established, it was required that the working staff not only meet the basic requirements, but also have years of experience in handling IP cases, science and engineering educational backgrounds and foreign language abilities. As a result, although we had only a few people, they were all extremely competent.”
Before China joined the WTO, cases relating to IP were few, and the majority of them were related to patent, especially utility model patent and design patent. “When being licensed, the utility model patent or the design patent is not subjected to substantive examination. The amount of licensing was large and lots of disputes have arisen consequently. At that time, enterprises’ IP innovative awareness was relatively weak, only universities, research institutes and large enterprises had realized its importance. Most SMEs had no such awareness at all,” said Judge Jiang.
Preparing for Accession to the WTO
For a smooth accession to the WTO, China has revised relevant IP laws, and developed a series of judicial interpretations upon the provisions on trademark, patent, copyright, plant varieties, layout designs, etc.. There were also revisions on legal procedures such as injunction and evidence. The whole work has set off a rapid development of China’s IP laws and greatly promoted them in a short period of time.
“All the work we did was for two main reasons. The first was that the Chinese government was determined to join the WTO, which entailed that we must fulfill our obligations in the international environment. In order to handle IP cases better and to respond better to legal and technical challenges brought by new types of cases, it was necessary to have a specialized IP tribunal in the court. This was indeed one of the measures made mainly for the accession to the WTO. The second reason was to provide a good legal environment for China’s economic development during its process of reform and opening up, especially to raise the level of IP law enforcement. In fact, professionals had begun this work in the 1980s, right after the IP laws came into force. It was just that the works were done separately and had not been integrated until 1996, when the industrial property trial group in the Economic Tribunal and the copyright trial group in the Civil Tribunal were combined and became the new IP Tribunal and the judges from the two departments finally got together. However, at that time the IP Tribunal still needed to work with the Economic Tribunal. In 2000, the IP Tribunal was separated completely from the Economic Tribunal and became a specialized and independent tribunal,” Judge Jiang said when recalling the work before China joined the WTO.
When talking about the preparatory work for entering the WTO, many people would consider the negotiations as the hardest part, which have drawn the most attention. However, although few people knew of the planning and the preparatory work, they were actually quite sophisticated and meticulous.
Even though he himself had not participated in the negotiations, Judge Jiang, as a justice, remembers the major part of legal preparatory work for China’s accession to the WTO quite clearly as if it happened yesterday. “IP was a hot issue. So many things were involved in it that each unit had to do a detailed and careful research, and lots of documents had to be co-signed cautiously. The Supreme Court actively offered references and reflected the actual situation for decision-making processes on problems related to the application of IP laws and legal procedures. The IP Tribunal was directly responsible for the major part of such work, and the rest of the work was followed up by law enforcement professionals. I had participated in a number of important bilateral negotiations as an expert,” said Judge Jiang.
After China joined the WTO, the Supreme Court and the whole trial system was faced with great challenges. As the highest judicial organ, the Supreme Court was empowered with making judicial interpretations by the Constitution. In order to better enforce the newly revised laws, there were a variety of legal standards and procedures to be clarified. Thus, there was a large amount of research work and work on the formulation of regulations waiting to be done. Besides, since there were so many new laws enacted in such a short period of time, the workload for those drafting judicial interpretations increased. Judge Jiang regards these works as “groundbreaking.” Training the judges was also an important task for the Supreme Court. It hosted a series of training courses for IP judges on the WTO rules and IP law provisions. Whether they could conduct proper enforcement of the new laws, whether the new system could be implemented smoothly, whether they could master the IP-related knowledge; these were all great challenges confronting the judges.
“The work was hard and intense, for it demands high efficiencies. A large amount of works at that time were groundbreaking, so I had to spend my spare time working, too. Many tasks were finished after days and nights of work so that the Supreme Court’s judicial interpretations could be issued as soon as the law was enacted. In retrospect, although the time was very limited, the work was very meaningful,” Judge Jiang finally reflected.
 
An Interview with Judge Jiang Zhipei
China IP: What were the attitudes of the government departments on the revisions of IP laws for entering the WTO? What were their main differences?
Jiang Zhipei: The conflicts between government departments were mainly due to their different opinions and interests generated from their own functions, missions and emphases in work. There were indeed many controversies when making a suitable standard since each industry had its own development policies and layouts. Since the Court was a judicial organ mainly in charge of resolving disputes, it possessed a neutral standing. As such the Court’s main concerns were how to divide the rights and fulfill the obligations, as well as how to enforce the new laws through judicial power.
Taking the judicial power and the administrative power as an example, the division and convergence of functions and responsibilities between the Court and the Patent Office, the Trademark Office, the Copyright Office and other departments was a big problem. The final consensus we reached on this problem was that after China’s accession to the WTO, there must be judicial review and supervision over the implementation of the executive power’s decisions on intellectual property rights, which was completely different from the situation before the accession. In the past, the administrative organs were the final decision-makers for most patent, trademark and other IP right licensing cases, and other parties involved had no chance or right in appealing or seeking judicial remedy. But after China joined the WTO, right holders could bring the administrative organs to court and thus have generated cases in which the administrative litigation, licensing and rights ascertaining were invalid. Such a big change required a great range of adaptations and adjustments of the judicial organs and the administrative organs, and the potential for conflicts between these branches of the government was a sensitive issue. As a result, who had the final say, how to divide and respect each other’s powers, how to adjust and cooperate and how to supervise and administrate each other’s powers were critical problems at that time. It was only through years of adjusting and cooperating that all legal bodies involved in the resolution of IP disputes became accustomed to the new balance within the system. As a result, the IP practice now echoes the sort of system seen in international practice. Of course, the current IP system still has many weaknesses and shortcomings waiting to be studied, revised and improved.
 
China IP: The staff of the Trademark Review & Adjudication Board (TRAB) and the Patent Reexamination Board (PRB) often appear in court. How do you assess the change of the administrative powers in the past decade?
Jiang Zhipei: The TRAB and the PRB have undergone great changes since China’s accession to the WTO. There used to be no judicial review, and the parties had no way to appeal and seek remedial measures if they believed the conclusions to be in conflict with the law, but through years of adaptation and development, they have made great improvements. Today, the staffs of the two boards are quite competent, capable of dealing with appeals seriously, preparing documents, summarizing the courts’ jurisprudences, conducting communications with the court and correcting the past improper operations. At the same time, the reexamination of the IP authorization has also sped up. In the past, there were only a few people at the TRAB dealing with a large number of cases. This resulted in a large backlog and low efficiency. But now, they have not only improved the efficiency and have cleared most of the backlogs. Besides, they are also accustomed to responding to new issues before the court in a timely manner.
 
China IP: You have participated in the IP work for China’s accession to the WTO, and have witnessed the changes in China afterwards. Which aspect do you think has changed the most in China?
Jiang Zhipei: The attitudes, I think. When China just joined the WTO, the problem of attitude used to hold back the actual application of the law. Whether issues concerning China’s accession to the WTO and IP protection could be explored and reformed depended to a large extent on the attitude changes of all walks of life. If the attitudes had remained the same, there wouldn’t have been a long term strategy or political determination for change. In such a case, our work could have been obstructed now and then. But people considered the changes brought by the accession as beneficial to China’s long term development, thus some of the obstacles in practical work were overcome easily. So in my reflection, for governmental officials, departments, industries, the academic circle and common citizens, the process of joining the WTO is also the process of reeducating, re-understanding, restudying and re-practicing the reform and opening-up strategy in a deeper way.
 
China IP: Currently, the Copyright Law and the Trademark Law are undergoing the process of new amendments. Do you have any suggestions?
Jiang Zhipei: The Copyright Law and the Trademark Law are now at different stages of amendments respectively. Since the new technologies and phenomena on the internet are increasing both in numbers and influences, the amount of copyright cases has become the largest among all kinds of IP cases. Some basic principles, such as the obligations of the internet service providers, are not very clear, and have aroused many disputes in practice. The Copyright Law should make more effective provisions on the basic rules to regulate the rights and actions on the internet. In addition, as to the onus of proof, the existing principle of the burden of proof is upon the party who claims; however, the defendant should also bear the burden of proof when identified as infringers in order to determine the amount of damages caused by the infringement and the extent of losses. At present, infringement costs very little while the cost of enforcing one’s right is relatively high. One major reason for this phenomenon should be attributed to the difficulties in collecting evidences. As for the amendments of the Trademark Law, I suggest making more explicit provisions on trademark confusions and mistakes, counterfeit product dealings, compensations and other issues. It is also worth considering whether the amount of statutory damage could be raised to one million yuan as the stipulation in the Patent Law.
 
China IP: The past decade has witnessed significant changes in China’s IP protection. What do you think still needs improvements in the process of development?
Jiang Zhipei: Over the last ten years, the people’s courts have changed a lot. From the Supreme People’s Court to various levels of local courts, IP cases have received more and more attention. They all regarded the judicial protection for IP as a measure of changing the economic development mode, accelerating and protecting enterprises’ innovations and building the IP protection environment. This understanding is much better than before. Besides, the practical cases are accumulating. There were only about 40,000 cases in 2010 whereas the cases in the first half of 2011 alone have reached 27,000. In my impression, since 2000, the number of cases has been increasing 20% to 30% each year. The last two years witnessed a sharper increase rate of 30% to 40%. I often compare the IP judicial protection mechanism as a huge running machine. No one can stop it once it is started up.
The improvement of enterprises’ awareness of IP protection is also obvious. IP has been a main force in their development, and judicial protection has been a main channel of protecting their legal rights. Although there are still all kinds of problems, the scope of judicial protection has been extended and the legal procedures have been improved since the establishment of the IP tribunals. In the past, only intermediate people’s courts and higher people’s courts have IP tribunals; whereas today many local courts have established IP tribunals as well. These courts have heard many copyright cases and other IP cases.
Of course, the mechanism needs further improvement. For example, repeated actions have many layers, thus are time consuming to be dealt with and have caused a great burden on the parties involved. The connection between administrative organs and judicial organs also needs reforms. Another issue should be the local judges’ expertise and abilities. The training for judges is routine work. If the judges are more professional, and the mechanism is changed for the better, there will naturally be improvements on case handlings.
In addition, I have always suggested that a specialized IP court or IP appellate court which focuses on IP licensing, right ascertaining and infringement issues should be established in Beijing. China is now a big patent country and trademark country on the international stage with the highest license number in the whole world. It’s not enough to only rely on the IP tribunals of Beijing’s courts. The resources, the mechanism and the judicial power are all insufficient for them to deal with the large number of disputes involving enterprises home and abroad efficiently and in high-quality. If the purpose is to build an innovative country, the issues concerning the enforcement mechanism and the protection mechanism of IP laws should be brought into the agenda. This is not the business of the courts, especially the Beijing courts, alone. Although TRIPs did not require that every member state must establish a mechanism of IP protection, it’s necessary to establish an IP court to deal with such problems for China’s long term development. IP has its own significant position, and by setting such a court we will see a systematic effect.
 
China IP: In the near future, what do you think should be done in promoting IP protection?
Jiang Zhipei: Generally speaking, I think the first thing should be the reeducation of the IP awareness of the whole society. In this aspect, targeted publicity, trainings and educations on IP are still very important. The second is that the courts should handle cases professionally with higher judicial levels and fair procedures and offer the public and enterprises home and abroad a place to solve their disputes fairly. If the laws and systems are transparent, people can predict the consequences and therefore comply with the laws. Thus, disputes will be fewer and the normal operations of the social production and social life can be ensured.
 
China IP: You began to work in law firms as a consultant after retirement. How do you comment on the development of the Chinese IP law firms in the first decade after China’s accession to the WTO? Are there any problems existing in the development?
Jiang Zhipei: Three years have passed since I retired from the Supreme People’s Court and began acting as a consultant in law firms. Legal services provided by lawyers are important and I’m familiar with a lawyer’s work. I have participated in compiling the text paper for China’s first national bar examination and worked with lawyers a lot when I was in the court. But I have a deeper feeling after three years of personal working experiences. In the last decade, there have emerged many Chinese law firms capable of competing with international ones. They have an international perspective, commendable business and individual capabilities, and are proficient in different languages and familiar with the Chinese laws and international rules. In my opinion, law firms also belong to the service industry. They need to compete in open markets. In fact, Chinese law firms’ competition with the international ones has become increasingly fierce. Highly skilled lawyers who can adapt to China’s rapid economic development are of urgent need.
 
China IP: Working in law firms, you must have more contacts with enterprises than before. Has their IP protection awareness changed greatly compared to ten years ago? In what aspects of practice do these changes appear to be happening and what are their shortcomings?
Jiang Zhipei: The changes of enterprises over the last decade are obvious. In recent years, enterprises are active in attending IP courses, and some people even pay for the courses themselves. Many enterprises set up their own legal departments, and large companies even set up IP departments. They have also changed attitudes in paying IP fees. Chinese enterprises also began to understand the international rules, and protect and safeguard the IP rights of their products. However, they also have shortcomings. There are still many Original Equipment Manufacturers (OEMs) in China which are at the bottom of the industrial chain. If these enterprises want to reverse the present situation, on the one hand, they need to know the importance of IP and learn to use the IP system; on the other hand, the government should guide their transformation and offer policy assistance.
 
China IP: China has undergone significant changes and has made great achievements after joining the WTO. Do you have any expectations on the future of China?
Jiang Zhipei: I have many wishes. I believe China’s IP work will be prosperous with the development of China’s economy. The practical significance of promoting IP concepts and the legal protections of IP rights will become more prominent and thus boost economic development and social progress. However, when analyzing the current situation of China from the international situation, different international interests and China’s deep-seated social and economic development issues, the development of Chinese enterprises will be full of potential risks and crises because there are many uncertainties internationally and the enterprises will encounter all kinds of problems in the process of development. The test for us all is whether the government, enterprises, and relevant entities continue to believe that IP plays an important role in economic development and to implement the IP system effectively when facing different situations.

(Translated by Monica Zhang)

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