Newsletter
Administrative Adjudication: New Approach for Solving Patent Infringement Disputes
On May 26, 2021, the China National Intellectual Property Administration (CNIPA) issued the 426th announcement “Measures for Administrative Adjudication of Major Patent Infringement Disputes” (the “Measures”), followed immediately by the 427th announcement on May 28, 2021, in which the CNIPA announced that, as of June 1, 2021 (the same day the new Patent Law came into force), the CNIPA would formally accept administrative adjudication of cases involving major patent infringement disputes in accordance with the Measures. As such, a new approach for solving major patent infringement disputes in China has been provided. As per Article 60 of the old Patent Law, there were originally only two paths for solving patent infringement disputes via public remedy process, i.e., filing lawsuits to the court, and requesting the local patent office to handling the dispute. The introduction of the Measures means that, as of June 1, 2021, there is a third path for cases involving major patent infringement disputes: filing with the CNIPA a request for administrative adjudication.
Actually, the Measures provides specific and detailed requirements in response to Article 70.1 of the newly amended Patent Law which reads: the patent administration department under the State Council may, at the request of a patentee or a stakeholder, handle patent infringement disputes with significant impact to the country.
Then it comes a question: how to define a major patent infringement dispute? As per Article 3 of the Measures, a case is deemed as a major patent infringement dispute if it involves one of the following senarios:
(1) of great significance to the public interest;
(2) with severe impact to industry development;
(3) major inter-provincial case; or
(4) other patent infringement dispute that may result in significant impact.
Furthermore, in accordance with Article 5 of the Measures, when requesting the CNIPA for administrative adjudicationof a major patent infringement dispute, the requester shall furnish evidential documents “issued by the authorities for patent affairs in the provinces, autonomous regions or municipalities where the person(s) to be requested is located or where the infringement occurs, proving that the infringement dispute falls under one of the situations stated in Article 3 of the Measures,” apart from an application and supporting evidence prescribed in pertinent rules of the Directions for Patent Administrative Enforcement (the “Directions”). Should the requester fail to submit the aforesaid documents, the CNIPA will issue a notice for not docketing the case along with a statement of reasons within five working days upon the receipt of the application.
In addition to requests filed by the parties involved, as per Article 7 of the Measures, authorities for patent affairs in provinces, autonomous regions or municipalities (i.e., local intellectual property administrations, local administrations for market regulation, etc.) themselves may also report requests for settlement of patent infringement disputes within their respective jurisdictions to the CNIPA for administrative adjudication if they deem the cases as major patent infringement disputes.
Other requirements of the Measures are similar to pertinent provisions of the Directions. For example, according to Article 12 of the Measures, if there is evidence uncollectible for the parties involved due to objective factors, the parties may submit preliminary evidence and a statement of reasons and then request the CNIPA in written format to carry out investigation or inspection. The CNIPA itself may also carry out investigation or inspection in light of the needs to clarify the factual matters of a case. According to Article 22 of the Measures, the CNIPA shall close a case involving patent infringement disputes within three months upon docketing the case. If the CNIPA is unable to close the case within the prescribed time period due to complexity of the case or other reasons, a one-month deferral is allowed upon approval. If the case is extraordinarily complicated or due to other special reasons to the extent that the case still could not be closed even after the deferral, a reasonable time period shall be determined after a further deferral is approved. Additionally, according to Article 25 of the Measures, matters not covered in the Measures are governed by the Directions and CNIPA’s regulations with respect to the administrative adjudication of patent infringement disputes.
A novel requirement is set forth in Article 23.2 of the Measures, i.e., an administrative adjudication, after being made, shall be publicized according to Regulations on Open Government Information and other regulations. When the administrative adjudication is published, trade secrets related information shall be deleted. This requirement is not included in the Directions.
The introduction of the Measures is expected to further facilitate efficient settlement of major patent infringement disputes of great impact, and would, to some extent, lighten the courts’ workload in hearing patent infringement cases.