Recap of Conference

Written by Gi-Kuen Jacob Li, JSD ’16

The 3rd Annual US-China IP Conference gathered senior policymakers, academics, and practitioners from US and China at Loyola Law School, Los Angeles on November 7, 2014. The participants discussed these five crucial topics in current international IP law field: (1) Revisions to the US and Chinese Copyright Law; (2) IP issues related to the entertainment industry; (3) Role of specialized IP courts; (4) Updates on patent and trade secrets legislation and protection; and (5) Challenges and strategies in cross-border IP enforcement.

Professor Robert Merges of Berkeley Law was invited as a co-host of Berkeley Center for Law and Technology, moderator, and presenter. Professor Merges presented “Court Coordination: The New Era of Patent Invalidity Proceedings at the PTO.” In the presentation, he pointed out that with passage of the America Invents Act, which came into effect in September 2012, the US patent system is now operationally closer than ever to other major patent systems around the world. Most attention has been directed to the new US priority rule, first to file (with grace period). He stressed that the new administrative procedures relating to patent validity in the US PTO will impact the patent application proceedings. These procedures now bring the US much closer to the international norm, because they involve the PTO more extensively in post-issuance validity determinations. He illustrated the major new procedures — particularly Post-Grant Review (PGR) and Inter Parties Review (IPR), and how these procedures interact with traditional litigation in court. Finally he concluded with these procedures will play in reducing the problem of excessive patent litigation and “patent trolls.”

Professor Merges also moderated for the Panel “Challenges and Strategies in Cross-Border IP Enforcement.” The panel included Mark Cohen of US PTO, MA Yide of Beijing Zhongguancun IP Research Institute, Prof. Marketa Trimble of University of Nevada, Las Vegas, Prof. YU Jun of Beijing University of Chemical Technology, Raymond Kurtz of Hogan Lovells LLP, Zheng Liu of Orrick, Herrington & Sutcliffe LLP, and David Wang of Winston & Strawn. Professor Merges raised some key questions regarding international IP enforcement for the panelists, including what are the indicators to functioning or effective enforcement? What are the best sources to tell the adequacy of enforcement? What is the weakest link in the enforcement chain at a practical level in the countries you practice? Are the formal or informal level of enforcement effective ways of coordinating cross broader enforcement? How significant are the judicial decisions influence from one jurisdiction to another? How common is a case being resolved by parties agreement on forum and/or choice of law? Which of the jurisdictions are commonly chosen to be the bench marks in worldwide disputes?