Opinion: New Pudong IP Office has high ambitions

The Pudong New Area IP Office, China's first integrated intellectual property (IP) office administrating all three major forms of IP rights – patents, trademarks and copyrights – was established in November 2014. The New Pudong IP Office is not a representative office established by the State IP Office of China (SIPO). Instead, the Shanghai Municipal People's Government established it as a department within the Pudong New Area People's Government. It covers Pudong New Area's entire administrative region, including areas such as the Zhangjiang High Tech Park and the Disney International Tourist Resort. This new kid on the block of China's IP protection framework is a local pioneer and pilot in the administrative protection of IP rights in China and may lead to a nationwide overhaul of IP Offices from central to local government levels.

China established SIPO in 1998 by reorganising the previously existing China Patent Office. Each lower level government, from provincial to county, has an IP Office as a division of the Science and Technology Bureau within its government body. But all these IP Offices essentially only govern patent related matters. Their real functions do not match the bigger hats they have been wearing for years. On the other hand, most countries use the same administrative agency to govern two or more forms of IP rights. To improve efficiency, streamline administrative and judicial protection of IP rights (the same court adjudicating all types of IP rights) and align with most other countries, the integration of SIPO and lower IP Offices has been advocated in China for years. The New Pudong IP Office unites the management and enforcement functions of patents, trademarks and copyrights that have been dispersed across the District Science and Technology Committee, the District Market Supervisory Bureau and the District Culture, Broadcast and Television Administration. It moves China one step closer to the majority of countries in the world.

In addition to consolidating the administrative groups relating to patents, trademarks and copyrights from the three district government agencies into the New Pudong IP Office, the Shanghai Municipal Government has also delegated certain Pudong-related IP functions that have been held by the Shanghai IP Office, Shanghai News and Publishing Bureau (Shanghai Copyright Office) and the Shanghai Cultural Market Administrative Law Enforcement Corps to the New Pudong IP Office in order to advance the pilot work for reform at both the city and district levels. In the area of patent enforcement, the Shanghai IP Office has commissioned the New Pudong IP Office to investigate and punish false patent claims; mediate patent right disputes; adjudicate patent infringement disputes in an administrative capacity; punish the use of false patent search reports or other similar ways to seek for illegal gains; and issue administrative penalties for aiding false patent claims. In the area of copyright enforcement, the Shanghai Copyright Office has commissioned the New Pudong IP Office to issue administrative penalties against illegal activities in violation of laws, regulations and rules related to copyright protection. In the area of copyright management, the Shanghai Copyright Office has commissioned the New Pudong IP Office to implement the registration of foreign book publishing contracts; foreign audiovisual copyright authorisation contracts; and overseas copyright trading activities.

The New Pudong IP Office is intended to strengthen key areas of IP enforcement, vigorously crackdown on various forms of IP infringement and make malicious infringement incidents part of a social credit check system. It is also supposed to strengthen IP protection assistance, especially overseas IP protection assistance; construct a complaint reporting service system; establish and improve administrative enforcement, litigation, arbitration, mediation and other alternative IP dispute resolution mechanisms; establish a joint mechanism of administrative and criminal enforcement; and establish a mechanism for IP case transfer, information reporting, and investigation cooperation. Moreover, the New Pudong IP Office aims to provide IP information public services and foster the development of the IP service industry by assisting a number of IP operation and management service providers, promoting the development of IP registration, transaction and consultation agencies, regulating IP service providers' qualifications and improving IP service industry's self-discipline and integrity building.

One apparent benefit for IP right holders and service providers is that the New Pudong IP Office will provide a one-stop service. The Shanghai Municipal Government has an ambitious plan for the new office, and hopes that it will play an important role and provide valuable pilot data in Shanghai's effort to become Asia-Pacific's IP centre by 2020. It is still unclear, however, how exactly the New Pudong IP Office is going to function and whether it will be adequately staffed with all the resources and authorities it needs to carry out its plans. Only time can tell.


Yufeng (Ethan) Ma, Orrick Herrington & Sutcliffe, Shanghai


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