Spring 2011 Eye on China Newsletter

22 April 2011 Publication
Authors: James F. Ewing

Legal News: China


With unprecedented growth in and influence over the global market — coupled with an ever-evolving legal landscape — China presents as much complexity as opportunity. With internationally recognized IP capabilities and extensive hands-on experience in the Chinese business market, Foley is well positioned to provide legal insight to U.S., Asian, and European companies preparing to do or currently doing business in China. Moreover, China’s fast-growing industries and businesses are seeking to expand their international reach. With more than 160 years of experience, 18 offices in the United States, and a network of international partners, Foley is equally well positioned to assist Chinese companies as they expand globally.

We are pleased to offer Foley Legal News: China Quarterly Newsletter, Eye on China, designed to offer companies helpful insight as they successfully navigate China’s complex and ever-changing legal and regulatory environment.

News and Noteworthy

  • Foley Partner James C. Chapman co-authored an article, "Mergers and Acquisitions in China: Current Trends and Challenges in the Middle Kingdom," which appeared in ACG Advisor Link in January 2011 and again in Westlaw Business Currents in February 2011. The article identifies current trends in mergers and acquisitions in China and discusses the key challenges and common mistakes made in connection with acquisitions in the Middle Kingdom. 
  • Chapman also authored "JIAO PENGYOU" — A Guide for Successful Business Relationships in China," which was published in the March 2011 edition of Leader’s Edge. Chapman provides an overview of best practices for U.S. companies entering the business environment in China, including the use of strong contractual protections and early trademark and patent registration. He adds that building and maintaining successful business relationships in China is a challenge, but notes that companies can succeed by following a number of best practices for a rapidly changing business environment. View full article: http://tinyurl.com/6xqfwgj.
  • Foley Partner Antoinette F. Konski and Associate Max Lin co-authored the article, "IP: Are We There Yet? How to Meet Chinese Patent Law Data Disclosure Requirements," which was published in January 2011 on InsideCounsel.com. The article highlights how those seeking Chinese patent protection can help ensure that any Chinese patent filing and the underlying priority patent application comply with the enablement requirement as applied in Chinese Patent Law. View full article: http://tinyurl.com/442hjt7.

Current Topics

East Meets West — Current Topics in the United States

  • Akami Technologies, Inc. v. Limelight Networks, Inc.: Revisiting the Rules for Joint Infringement, by Marshall Brown, Foley & Lardner LLP
    In a recent decision, the U.S. Court of Appeals for the Federal Circuit clarified the requirements for finding infringement of a method claim under a "joint infringement" theory. In order to find joint infringement, the Court held that an agency relationship must exist between the parties who perform the steps, or one party must be contractually obligated to the other to perform the steps. View full article: http://www.foley.com/publications/pub_detail.aspx?pubid=8076.
  • Bilski’s Impact on Biotech and Pharmaceutical Method Claims, by Pei Wu and James F. Ewing, Foley & Lardner LLP
    Although the Supreme Court in 2010’s Bilski decision did not categorically exclude business method patents, it did not offer clear guidance on patent-eligibility for other types of method claims. For biotech and pharmaceutical method claims, there has been much speculation about how the lower courts will apply the patent-eligibility requirements under Bilski. This article briefly summarizes recent developments in Federal Circuit cases that may shed light on patent-eligibility for biotech and pharmaceutical method claims. View full article: http://www.foley.com/publications/pub_detail.aspx?pubid=8077.
  • Federal Circuit Revisits the Patent-Eligibility Test After Bilski, by Alex Nie, Foley & Lardner LLP 
    The Supreme Court in Bilski v. Kappos rejected the Federal Circuit’s machine-or-transformation test as the sole test for patent-eligibility. The Court also rejected categorical exclusion of certain patents from eligibility. At the same time, however, the Bilski decision lacks specific guidance on the determination of patent-eligibility. In the post-Bilski decision, Research Corp. Techs. v. Microsoft Corp., the Federal Circuit attempts to proffer such guidance. This article discusses this decision and provides a brief analysis. View full article: http://www.foley.com/publications/pub_detail.aspx?pubid=8078.

West Meets East Current Topics in China

  • Contractual Control Over Trademark License to a Chinese Licensee, by Danielle T. Brink, Foley & Lardner LLP
    A U.S. trademark owner looking to permit a Chinese manufacturer to use its trademark in commerce in China must ensure that the license agreement is in compliance with all relevant laws and mutually beneficial to both parties. This article addresses factors to consider prior to executing the license agreement and steps for maintaining contractual control over the licensing. View full article: http://www.foley.com/publications/pub_detail.aspx?pubid=8079.
  • China Bayh-Dole Act: A Framework Fundamental to Achieving the Economic Potential of China’s National Patent Development Strategy (2011 – 2020), by Max Lin, Foley & Lardner LLP
    China’s National Patent Development Strategy (2011 – 2020) (Plan) was announced in November 2010. The proposed measures focus on enhancing China’s IP system and encouraging local individuals, institutions, and companies to pursue IP protection domestically and abroad. Fully achieving the Plan’s potential economic value depends upon establishing an effective framework for the commercialization of government-sponsored technology through licensing and transfer. Those seeking to buy or license these cutting-edge technologies from Chinese universities or scientific research institutes should be familiar with China’s regulation governing such technology transfers or licenses — the so-called "China Bayh-Dole Act." View full article: http://www.foley.com/publications/pub_detail.aspx?pubid=8080.
  • An Overview of Amendment of Invention Patent Applications Under Chinese Patent Law, by Xiaomin Ni, Scihead Patent Agent Co. Ltd., and Alex Nie, Foley & Lardner LLP
    This article provides an overview of amendment requirements in China and some tips on preparing a patent application that conforms to the current Chinese patent law practice. View full article: http://www.foley.com/publications/pub_detail.aspx?pubid=8081.

Staying Connected

Please Join Us — Future Events

Foley’s Eye on China series programs are designed to offer companies helpful insight as they successfully navigate China's complex and ever-changing legal and regulatory environment. Upcoming events include:

  • Eye on China Workshop Series, IP Opportunities and Challenges in the United States
    On May 26, Foley will host a U.S. IP workshop at LexisNexis’ Sixth Annual Conference on Corporate Intellectual Property in China. The two-day conference, entitled "Successfully Managing Your IP Strategies and Protection Rights in Multiple Jurisdictions," will feature an international panel of speakers providing practical analysis of recent IP developments in China and other jurisdictions. During the first day of the conference, Foley’s panelists will discuss the latest developments in the U.S. IP landscape and their impact on IP strategies by Chinese businesses, as well as how to manage patent risks when doing business in the United States.
    When: Thursday, May 26, 2011; 2:30 p.m. – 3:15 p.m. (Foley's U.S. IP workshop)
    Where: Shanghai, China

In Case You Missed It — Recent Events and Activities

  • Eye on China Workshop Series, Zou Chu Guo Men — Developing a Successful Strategy for Entering the U.S. Market
    On April 19, Foley co-hosted the ChinaBio® Executive Workshop in Guangzhou, China, which examined China’s "going-out" policy — Zou Chu Guo Men. The policy encourages Chinese companies to expand abroad and actively engage in foreign investment. During the half-day workshop, Foley China Practice attorneys and Chinese biotechnology and life sciences corporate executives discussed the critical aspects of developing an effective going-out strategy and a plan to protect and leverage a company’s life sciences technology and intellectual capital in the U.S. market.
    View Event Page and Presentation Materials: http://www.foley.com/news/event_detail.aspx?eventid=3674
  • Eye on China Roundtable Series, U.S.-China Business and Trade Issues: A Discussion With the Chinese Consul General
    Foley, in cooperation with the Metropolitan Milwaukee Association of Commerce (MMAC), welcomed Yang, Guoqiang, Consul General of the People's Republic of China to Chicago, as the special keynote speaker at our Eye on China Roundtable Series program in Milwaukee on March 4, 2011. During the roundtable, Consul General Yang discussed a wide range of business and trade issues. His presentation was complemented by Foley's International Business Transactions Partner Julie Lee and Intellectual Property Of Counsel Barry L. Grossman as they discussed real-world strategies for doing business in China.
    View Event Page and Presentation Materials: http://www.foley.com/news/event_detail.aspx?eventid=3633
  • Eye on China Roundtable Series, Smart Strategies for U.S. Companies Investing and Doing Business in China
    On December 7, 2010, Foley and JPMorgan Chase co-hosted an Eye on China Roundtable Series program at Foley’s Chicago office. This program was geared toward U.S. companies expanding or starting business in China as well as U.S. private equity funds looking to expand their investment portfolios by acquiring equity interests in Chinese companies. During the session, panelists discussed how U.S. companies can successfully navigate China's changing regulatory and business landscape, as well as the common pitfalls of and practical strategies for doing business in China.
    View Event Page and Presentation Materials:
  • Eye on China Roundtable Series, IP Enforcement in China 2010: Myth or Reality?
    On November 1, 2010, Foley hosted an Eye on China Roundtable Series program in Silicon Valley tailored for corporate counsel and business decision-makers with significant stakes in China. Foley's China Practice attorneys and business executives experienced in China IP enforcement discussed the latest developments in and best practices for IP enforcement in China.
    View Event Page and Presentation Materials: http://www.foley.com/news/event_detail.aspx?eventid=3477

Legal News: China Quarterly Newsletter, Eye on China is part of our ongoing commitment to providing legal insight to our clients and our colleagues preparing to do or doing business in China. If you have any questions about this publication or would like to discuss the topics presented here, please contact your Foley attorney or the following:

Hon. Sharon R. Barner
Deputy Under Secretary of Commerce for Intellectual Property
and Deputy Director of the USPTO (2009-2011)
Partner, IP Department
Chicago, Illinois

Steven J. Rizzi
Chair, China Practice
New York, New York

James F. Ewing
Vice Chair, Chemical, Biotechnology & Pharmaceutical Practice
Boston, Massachusetts