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On March 2, 2019, the State Council, the top administrative body of China issued the Decision on Revision of several Administrative Regulation, which includes the revision of Technical Import and Export Regulation (the “TIER”).

Notably, the TIER was enacted nearly 20 years ago when Chinese parties were still weak in terms of technical capacity in comparison with their foreign competitors. However, the situation has been changed significantly in recent years, as a result, the issues including forced technology transfer have been increasingly criticized as an unfair treatment to foreign companies and discussed as an important topic on the table of international negotiations for years. We would like to analyze the effect of the revision as follow.

1

Abolishment of Requisite Right Guarantee by Assignor

The abolished the Article 24.3 of TIER specifically provides Where an assignee of a technology import contract is using technology provided by the assignor in accordance with the provisions of their contract and an infringement of the legal rights and interests of any third party occurs, the assignor shall bear the liability.

Notably, the provision specifies the obligation of assignor to guarantee the cleanness and completeness of the assigned intellectual property rights. Therefore, if an implementation of assigned technology infringes upon the legitimate right of a third party, then the assignor shall bear the legal liability. Court have ruled that the assignor bear the liability of infringement due to the use of assigned technology.[1] Such provision aimed to protect Chinese parties when they lack competitive strength against foreign competitors. However, whether such provision is compulsorily necessary and cannot be circumvented through agreements in contract remains controversial since the enactment of the law.

Therefore, the abolishment of above-mentioned Article 24.3 clarified that the related party is authorized to arrange legal liability of infringement due to transacted technology according to their agreements.

2

The abolishment of provision on ownership of improved technology.

The abolished Article 27 of the TIER provides that the improved technology belongs to the party who conducts the improvement even such technical improvement is based on the assigned technology.

Correspondingly, Article 354 of PRC Contract Law provides that the related parties could arrange the share of technical fruits derived from the implementation of assigned patent or technological secret. If there is no agreement reached or the agreement is unclear and even cannot be affirmed according to Article 61 of the Contract Law, then the improved technology cannot be shared by other parties than the improving party.

In addition, Article 10.1.1 of the Judicial Interpretation of the Supreme People's Court on Issues relating to Applicable Laws for Trial of Dispute Cases involving Technical Contracts (the “JI”) provides that "Illegal monopoly of technology and obstruction of technological advancement" referred to in Article 329 of the Contract Law shall include the following circumstances and should be prohibited.

(1) Restriction of a party concerned from carrying out new research and development on the technical basis of the subject matter of the contract or restriction of its use of improved technology or unequal conditions for exchange of improved technology between both parties, including request for one party to provide its own improved technology to the other party free of charge or unreciprocal transfer to the other party, exclusive possession or sharing of intellectual property of the improved technology without compensation;

On basis of the above-mentioned provisions, it should be noted that although the Contract Law provides the complete freedom of contract, the JI had already prohibited the abuse of relative dominant position and acquirement of improved technical fruits through above unfair approach.

Therefore, the abolishment of Article 27 provides the freedom to relevant parties to decide the ownership of improved technical fruits through contractual agreement, while the freedom will be subject to the above-mentioned Article 10.1.1 of the JI, which prohibits the requirement of transfer of improved technology free of charge or unreciprocal transfer or sharing to the assignor or a third party.

3

 Abolishment of Restrictive Clause of TIER

(1) The abolished Article 29.2 provides that a contract cannot require the assignee pay fees for the usage of or bear related obligations for technology where the patent rights have expired or have been declared invalid;

The abolishment of the provision will make no legal basis to prohibit the charge of royalties from invalid or expired patent. Therefore, a party will have to rely on 10.1.4 of JI to solve the issue of royalties of expired or invalid patent by possibly explaining such patent as a non-essential technology. [2]

(2) The abolished Article 29.1 prohibits clauses requiring that the assignee must accept incidental provisions that are not essential to the importing of the technology, including the purchase of unnecessary technology, raw materials, products, equipment or services.

Correspondingly, the Article 10.1.4 of JI makes no substantial difference other than the additional prohibition of requirement that assignee to takeover non-essential personnel from assignor. In addition, the provision will be equally applicable to both assignor and assignee as well.          

4

Summary

In sum, the revision of the TIER will facilitate the direct application of Contract Law and JI to foreign related technology transfer in place of related abolished provision of former TIER. The Contract Law and JI will be equally applied to foreign and Chinese parties regardless of nationalities.

Such encouraging progress will benefit the implementation of principle of freedom of contract as well as secure the national treatment to foreign parties under agreements of WTO.

Abolished Provisions in TIER

附录：删改法律规定

第二十四条   

技术进口合同的让与人应当保证自己是所提供技术的合法拥有者或者有权转让、许可者。

技术进口合同的受让人按照合同约定使用让与人提供的技术，被第三方指控侵权的，受让人应当立即通知让与人；让与人接到通知后，应当协助受让人排除妨碍。

技术进口合同的受让人按照合同约定使用让与人提供的技术，侵害他人合法权益的，由让与人承担责任。

第二十七条   

在技术进口合同有效期内，改进技术的成果属于改进方。

第二十九条   

技术进口合同中，不得含有下列限制性条款：

（一）要求受让人接受并非技术进口必不可少的附带条件，包括购买非必需的技术、原材料、产品、设备或者服务；

（二）要求受让人为专利权有效期限届满或者专利权被宣布无效的技术支付使用费或者承担相关义务；

（三）限制受让人改进让与人提供的技术或者限制受让人使用所改进的技术；

（四）限制受让人从其他来源获得与让与人提供的技术类似的技术或者与其竞争的技术；

（五）不合理地限制受让人购买原材料、零部件、产品或者设备的渠道或者来源；

（六）不合理地限制受让人产品的生产数量、品种或者销售价格；

（七）不合理地限制受让人利用进口的技术生产产品的出口渠道。

Article   24.   

Assignors of a technology import contract shall   guarantee that they are the legal owners of the technology supplied or have   the right to transfer or permit the use of such technology.

Where an assignee of a technology import   contract is using technology provided by the assignor in accordance with the   provisions of their contract and is accused by a third party of infringing   the legal rights, the assignee shall immediately notify the assignor. After   receiving notification, the assignor shall assist the assignee in removing   any obstacles.

Where an assignee of a technology import contract   is using technology provided by the assignor in accordance with the   provisions of their contract and an infringement of the legal rights and   interests of any third party occurs, the assignor shall bear the liability.

Article 27.   

During the period of validity of the technology   import contract, the results of any improvements in the technology belong to   the party that makes the improvements.

Article 29.   

The following restrictive clauses must not be   contained within a technology import contract:

(1) clauses requiring that the assignee must   accept incidental provisions that are not essential to the importing of the   technology, including the purchase of unnecessary technology, raw materials,   products, equipment or services;

(2) clauses that require the assignee pay fees   for the usage of or bear related obligations for technology where the patent   rights have expired or have been declared invalid;

(3) clauses that restrict the assignee from   improving the technology provided by the assignor or that restrict the   assignee from using the improved technology;

(4) clauses that restrict the assignee from   obtaining from other sources the technology similar to or that competes with   the technology provided by the assignor;

(5) clauses that unreasonably restrict the   channels or sources that the assignee may procure raw materials, parts,   products or equipment from;

(6) clauses that unreasonably restrict the   quantity, type or sale price of the assignee's products;

(7) clauses that unreasonably restrict the   assignee's export channels for products that are produced using the imported   technology.

注释

[1] See Wuhan Jingyuan v. Fujikasui and Huayang  Supreme People’s Court (2008) Min San Zhong Zi No.8

[2] imposing on the assignee of the technology conditions which are not essential for the implementation of technology, including purchase of non-essential technologies, raw materials, products, facilities, services and takeover of non-essential personnel

冯超

天达共和合伙人

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