China has taken strides to increase protection of intellectual property. Generally, these efforts have been successful. However, in some areas of intellectual property where China’s discovery procedures are limited, intellectual property owners have difficulty in enforcing their rights. Courts and the national legislature in China have experimented with mechanisms for shifting the burden of proof in intellectual property disputes to better protect intellectual property rights. Recent developments, including data from specialized intellectual property courts in China, suggest that such efforts have resulted in greater protection of plaintiffs’ intellectual property rights.
“Chinese law does provide substantive protections for trade secrets; however, China’s limited discovery mechanisms have impeded the efficacy of these protections. Fortunately, some of these deficiencies have been remedied by a recent trend of shifting the burden of proof from the plaintiff to the defendant in trade secrets disputes […]”
From SHI v. Huaren (2007) to Guiding Case No. 49 (2015)
From Cases Decided After SHI v. Huaren to Codification in 2019
Regional Courts Were Likely Inspired by SHI v. Huaren
Adoption of Burden-Shifting Principles in the Broader Intellectual Property Context Produces Results
“[…] it is worth noting that changes in the burden of proof have indeed empowered patent holders to effectively protect their technology. The significance of these changes to technology companies cannot be overstated.”
Codification of Burden-Shifting Principles Regarding Trade Secrets
The Role of Local Courts in Helping Formulate Rules at the National Level
“[…] the fact that SHI v. Huaren […] was ultimately selected and reissued as Guiding Case No. 49, and that the Guiding Case led to the codification of the burden-shifting principles reveals that Guiding Cases are an important channel through which local courts’ voices can be heard in the development of important rules.”
The Value of Guiding Case No. 49 Has Not Been Reflected in Citations in Subsequent Cases
Guiding Cases Have Been Underused and Increased Citation of These Cases Would Benefit Inventors
Katharine A. Bostick
Assistant General Counsel and Director of Compliance & Litigation, Corporate, External, & Legal Affairs, Microsoft (China) Co., Ltd.
Based in Beijing, Katharine A. Bostick leads Microsoft’s Compliance & Litigation team for the Greater China Region. She serves as a trusted advisor on a broad range of complex compliance and litigation matters.
Ms. Bostick and her team at Microsoft focus on management of risk through programs, policies, and remediation strategies. Ms. Bostick also leads Microsoft’s internal investigations, including in the areas of the Foreign Corrupt Practices Act (the “FCPA”) and other governmental investigations, and litigation. Prior to her current role, she served as the Compliance & Litigation Director for Microsoft’s Asia Pacific from July 2007 to October 2014. She led Microsoft’s Intellectual Property and Digital Crime enforcement programs throughout Asia from January 2001 to June 2007. Ms. Bostick has been with Microsoft in Asia for over 18 years.
Before joining Microsoft, Ms. Bostick served as a federal prosecutor for over 11 years in three offices, including the offices in the Southern District of New York and the Northern District of California, as well as the Department of Justice office in Washington D.C. She is a member of the New York, California, and Washington D.C. bars.
Partner, Fangda Partners
Melody Wang heads Fangda Partners’ complex litigation practice in Beijing. She focuses her practice on resolution of complex disputes, as well as investigations and regulatory compliance related to Chinese law. She represents clients in high-stakes litigation and arbitration, often in a cross-border context. Ms. Wang is also an established industry leader in the areas of state secrets, information compliance, and information protection.
In addition to her work on behalf of clients before courts, arbitration tribunals, and Chinese government agencies, Ms. Wang has served as an expert witness or as consulting counsel in numerous proceedings in different jurisdictions, including the United States, Hong Kong, and Singapore, regarding issues of Chinese law. Completely bilingual in English and Chinese and with a background in business administration, she is a trusted counsel to many of the world’s leading international companies.
* The citation of this Experts ConnectTM is: Katharine A. Bostick & Melody Wang, How Guiding Case No. 49 Prompted Codification of Burden-Shifting Principles to Increase Protection of Trade Secrets, 7 China Law Connect 21 (Dec. 2019), also available at Stanford Law School China Guiding Cases Project, Experts ConnectTM, Dec. 2019, http://cgc.law.stanford.edu/commentaries/clc-7-201912-connect-11-bostick-wang.
The original, English version of this piece was edited by Nathan Harpainter and Dr. Mei Gechlik. The views expressed in this article are those of the authors alone and do not reflect those of Microsoft, Fangda Partners, or the China Guiding Cases Project.