May 01, 2011

Measures for the Administrative Enforcement of Patents

Issuing Body: State Intellectual Property Office
Issuing Date: December 29, 2010
Effective Date: February 1, 2011

Seeking to provide guidance to and clarify the increasingly important role of administrative authorities in enforcing patent law in China, the State Intellectual Property Office (SIPO) has amended the Measures for the Administrative Enforcement of Patents (Patent Enforcement Measures), which were originally enacted in 2001. The Patent Enforcement Measures, which took effect on February 1, 2011, better reflect the content of 2008 amendments to the PRC patent law (see the February 2009 issue of China Law Update) and amendments to Implementation Rules of the PRC Patent Law that were enacted in 2010. What follows is a summary of the measures.

Application Scope of the Patent Enforcement Measures

The Patent Enforcement Measures apply to patent administrative enforcement activities performed by patent administration authorities—typically SIPO and its provincial branches—including the resolution of patent infringement disputes, mediating patent disputes, and investigating and handling acts of patent counterfeit.

As defined in Implementation Rules of the PRC Patent Law, the term "patent administration authorities" refers to bodies established by the people's government of provinces, autonomous regions, and municipalities directly under the central government and the people's governments of municipalities divided into districts that have both a large volume of, and are capable of handling, patent administrative work.

Resolving Patent Infringement Disputes

If a patent administration authority is asked to resolve a patent infringement dispute, the following requirements should be met:

  • The applicant is the patentee or an interested party.
  • The respondent is clearly identified.
  • The content of the request is specific, and the facts and reasons are definite.
  • The case falls within the scope of acceptance by, and under the jurisdiction of, the patent administration authority.
  • The party involved has not instituted proceedings in a people's court with respect to the patent infringement dispute.

The following documents should be submitted by the applicant when applying to the patent administration authority for resolution of a patent infringement dispute:

  • An application letter.
  • Identification documents of the applicant (ID card if the applicant is an individual; business license if the applicant is an entity or organization); and
  • Documents evidencing the effectiveness of the involved patent.

When handling patent infringement disputes, the patent administration authority may resort to mediation, according to the wishes of the involved parties. If a mutual agreement cannot be reached in mediation, the patent administration authority should make a decision resolving the dispute.

According to the Patent Enforcement Measures, the patent administration authority should settle a case within four months of the date on which it is put on record. If a case is extremely complicated and the time limit needs to be extended, such an extension may be approved by the responsible person of the patent administration authority. In such a situation, however, the extended time limit will not exceed one month.

Mediating Patent Disputes

When applying to patent administration authorities for mediation of a patent-related dispute, the applicant should submit an application letter and, if the applicant is requesting mediation on the amount of damages for patent infringement, a copy of the prior resolution made by the patent administration authority.

If the involved parties reach a mutual agreement, the patent administration authority should draft a mediation agreement. If the involved parties fail to reach a mutual agreement, the patent administration authority should close the case and inform the parties.

If an application for mediation of a patent-related dispute has been made to the patent administration authority, the involved party may ask SIPO to suspend relevant procedures for patent application regarding the patent at the center of the dispute by submitting to SIPO the case acceptance notice issued by the patent administration authority.

Investigating and Handling Acts of Patent Counterfeit

Investigations of patent counterfeiting may be initiated by a patent administration authority through a third party's report or through discovery made by the patent administration authority itself.

After completion of an investigation, the patent administration authority may handle the case in the following ways:

  • An administrative penalty may be imposed in accordance with relevant PRC laws and regulations.
  • The authority may impose no penalty if the acts of patent counterfeit were not severe and the problem has been corrected in a timely manner.
  • The case may be handed over to a public security bureau if the infringer is suspected of committing a crime.

In accordance with the Patent Enforcement Measures, a patent administration authority should settle each case within one month of the date on which the case is put on record. If the case is extremely complicated and the time limit needs to be extended, an extension may be approved by the responsible person in the patent administration authority, with the extended time limit not to exceed 15 days.

Conclusion

In recent years, patent administration authorities across China have been playing a greater and more important role in enforcing laws and rules related to patents. In just the nine months from January to September 2009, for example, patent administration authorities in China accepted 748 patent infringement cases and 26 other patent-related disputes. The issuance of the Patent Enforcement Measures reflects the contents of the 2008 amendments to the PRC patent law and its implementation rules, providing clear guidance for patent administration authorities to carry out enforcement activities.

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