According to Article 123 of the General Provisions of the Civil Law of the PRC, in China, intellectual property rights can be granted in the following seven main categories: (i) works (ie, copyrights); (ii) inventions, utility models and designs (ie, the three types of patents); (iii) trade marks; (iv) geographic indications; (v) trade secrets; (vi) layout designs of integrated circuits; and (vii) new varieties of plants.
Wherein, patents and trade secrets are the two main categories of intellectual property rights which may provide protection for inventions.
There are three types of patents (ie, invention patents, utility model patents, and design patents), as provided in item (ii) of the above Article 123. An invention patent protects a new technical solution relating to a product, a process or an improvement thereof; a utility model patent protects new technical solution relating to a product's shape, structure, or a combination thereof, which is suitable for practical use; a design patent protects new design of a product's shape, pattern or a combination thereof, as well as the combination of the colour and the shape or pattern of a product, which produces an aesthetic result and is suitable for industrial application.
Only invention patents and utility model patents protect technical solutions.
Trade secrets protect technical, business or other commercial information that is unknown to the public and of commercial value; and for which corresponding confidentiality measures have been taken by the owner. Wherein, technical secrets are available for protecting inventions fulfilling the prerequisites of trade secrets.
Other than patents and technical secrets, software can be protected as works by the Copyright Law. Layout designs of integrated circuits can be protected by Regulations on Protection of Integrated Circuit Layout Design, and new varieties of plants can be protected by Regulations on Protection of New Varieties of Plants, which are also related to inventions.
All intellectual property rights are based on statutory laws. This chapter will focus on patents and trade secrets.
The right holder shall file patent applications to the Patent Office of the China National Intellectual Property Administration (CNIPA) for the grant of patent rights. For an invention patent, both formality and substantive examinations will be performed before the grant of patent rights; for utility model patents and design patents, only a formality examination will be performed.
For an invention patent, the application will be published 18 months after the application is filed; and, within three years from the application date, the right holder can apply for substantive examination on the application. The CNIPA examiner will review the novelty, inventive step, clarity of the claims, sufficiency of disclosure, support of specification and other requirements stipulated in the Patent Law and regulations. During substantive examinations, the examiner may issue several rounds of office actions. If the application meets the requirements of the Patent Law and its implementing rules, and overcomes the challenges raised by the examiner, a patent will be granted. Otherwise, the application will be rejected. The patent comes into force on its announcement date.
There is no need to apply to an authority for a grant of trade secret rights, which automatically arise if the underlying technical solutions meet the requirements stipulated by the Anti-Unfair Competition Law, including that: (i) the technical information is unknown to the public; (ii) the technical information is of commercial value; and (iii) the proper confidentiality measures are taken by the right holder to prevent the technical solutions from becoming publicly available. If the technical information relating to a product can be easily obtained through simple reverse engineering after the product has entered the market, that information would not be eligible to be protected as a trade secret.
Because an invention patent application will be published 18 months before substantive examination will be initiated, the grant procedure may last for several years. For utility model patents and design patents, because only formality examination will be performed before the grant of a patent right, the granting procedure may last for only six to 18 months.
Foreign applicants, according to the Patent Law, need to engage a patent agency for patent prosecution, while domestic applicants may perform the prosecution on their own, and the engagement of a patent agency is not compulsory.
The actual costs of a grant depend on the complexity of the invention, the claims involved, and the patent agency engaged. For an invention patent, the cost may range from CNY30,000–50,000; while, for a utility model patent, the cost may range from CNY20,000–30,000. Typically, the costs would include official fees, agency service fees and also translation fees if the application is drafted in foreign languages. Usually, the translation fees are charged based on the number of words translated, and the agency service fee may be charged on hourly basis.
The term for an invention patent is 20 years from the date of filing, and the term for utility model and design patents is 10 years from the date of filing. There is no statutory term for trade secrets. As long as the technical information meets the requirements stipulated by the Anti-Unfair Competition Law, the technical information may remain protected as a trade secret.
Pursuant to the Patent Law, for invention patents and utility model patents, without the permission of the patentee, no entity or individual is entitled to exploit the patent for business purposes That is, to manufacture, use, offer to sell, sell, or import the patented product; use the patented process; or use, offer to sell, sell or import products directly obtained from the patented process. Regarding design patents, without the permission of the patentee, no entity or individual is entitled to exploit the patent for business purposes; that is, to manufacture, offer to sell, sell, or import the patented product.
The patent owner is also entitled to a licensing fee and royalty from other entities for exploiting the patent rights, and may assign the patent to other entities.
For trade secrets, the right owner is entitled to damages and may file petition for injunctions, as long as the information still fulfils the prerequisite of being a trade secret after the infringement – for example, when the information is not disclosed to the public by the infringement. The right owner of a trade secret is also entitled to license or assign that trade secret.
The patent owner is obliged to pay annual fees during the term of a patent, otherwise, the rights will be terminated. The owner of the trade secret is obliged to take continuous proper confidentiality measures to protect the trade secret's confidentiality.
Based on the Patent Law currently in force, there is no further protection after the lapse of the maximum term, but patent term extension for pharmaceutical patents is being considered for the draft amendment to the current Patent Law.
Any third party is able to submit (in person or by mail, and it may be done anonymously) observations to the CNIPA after the publication of a patent application. However, in practice, third-party observations are only available for invention patents, because utility model and design applications are not published before they are granted. The examiner is not obliged to provide any feedback, and no formal hearing or meeting needs to be arranged.
If CNIPA refuses to grant a patent right, the applicant may apply to the Reexamination and Invalidation Department of the Patent Office of CNIPA for re-examination, and a re-examination decision will be made. If the applicant is unsatisfied with the re-examination decision, it has the right to file an administrative litigation to the Beijing Intellectual Property Court to overrule the decision, which has exclusive jurisdiction over re-examination decisions. The first instance judgment made by the Beijing IP Court may be further appealed to the Intellectual Property Tribunal of the Supreme People’s Court of China.
Failure to pay annual fees will be regarded as an abandonment of the patent. If a patentee fails to pay the annual fee in a timely manner, the patentee has a six-month grace period to resurrect the patent. If the annual fee is paid within one month from the payment due date, there will be no additional cost. If the annual fee is paid more than one month after the payment due date, a fine amounting to 5%, 10%, 15%, 20% and 25% of the annual fee shall be additionally paid if the payment is made in, respectively, the second, third, fourth, fifth and sixth month.
The owner of a patent can initiate the following actions against infringement:
Cease & Desist
The owner can send a cease & desist letter to the potential infringer, informing the latter of the allegedly infringing conduct and the patent that is infringed upon, demanding that the latter cease infringement and may also ask for compensation.
The owner can file administrative complaints to the proper government authority (this used to be local Intellectual Property Offices and is currently the Administration for Market Regulation) for the infringing conduct, and the authority may perform an investigation, hold an oral hearing for determination of infringement, and issue an administrative decision. For a patent infringement administrative complaint, only a decision ordering the cessation of the infringement or a finding of no infringement may be issued. The government authority has no authority to determine damages or to punish infringers. However, the government authority may mediate between the parties to reach settlement on compensation.
The owner may file a patent infringement civil litigation with a court with proper jurisdiction, and both injunctions and damages may be requested.
In China, after the grant of a patent, any third party can file an invalidation petition with CNIPA to declare the patent invalid. Any third party can file an invalidation petition with the filing of the formality documents and there are no particular standing requirements relating to relative legal or commercial interests. If foreign companies or foreigners would like to file an invalidation in China, their identity documents and other formality documents must be notarised locally and legalised before the Embassy or Consulate of the PRC, which is required in all civil proceedings.
According to Articles 48 and 51 of the Patent Law, under the following circumstances, the CNIPA may, upon application, grant a compulsory licence to exploit the patent for an invention or utility model:
Seeking a declaration of non-infringement is also a possible action that can be filed against the assertion of patent infringement. After receiving a warning letter or a cease & desist letter from the right holder of a patent, a party or its interested party can send a counter notice requesting that the right holder file a patent litigation or withdraw the warning letter or the cease & desist letter. If the right holder fails to file a patent litigation or to withdraw the warning letter or cease & desist letter within one month after its receipt of the counter notice, or two months after the counter notice is sent, the party being warned or the interested party may file a litigation with a court and request the court to declare non-infringement.
There are three specialised Intellectual Property courts – Beijing IP Court, Shanghai IP Court, and Guangzhou IP Court – for all first instance patent cases arising in Beijing, Shanghai, and Guangdong Province (excluding Shenzhen) respectively. In the past, the local intermediate court approved by the Supreme People’s Court had jurisdiction over first instance patent cases, and now IP jurisdiction is being further centralised, with specialised IP tribunals of intermediate courts of certain regions having centralised jurisdiction over patent cases arising in the whole province or part of the province where the intermediate court resides. Currently, the three IP courts mentioned above, 20 specialised IP tribunals and 21 designated intermediate people’s courts have jurisdiction over first instance disputes involving technologies, including patent cases.
Beijing IP Court has exclusive jurisdiction for all administrative cases on re-examination or invalidation decisions issued by CNIPA.
The IP Tribunal of the Supreme People’s Court has exclusive jurisdiction over second instance civil cases for invention and utility model patents, and second instance administrative cases for invention, utility model, and design patents. For design patent civil cases, the local high people’s courts still have second instance jurisdiction, and as mentioned before, the second instance administrative cases over CNIPA’s re-examination or invalidation decisions and administrative decisions made by local government authorities on design patents will be heard by the IP Tribunal of the Supreme People’s Court as for invention and utility model patents.
In China, the second instance decision is final, and there is no court for further appeal. However, according to the Civil Procedural Law of China, a party may file a petition for retrial. Nevertheless, whether the retrial would be granted depends on the discretion of the retrial courts. Retrial petitions filed to the Supreme People’s Court, over the second instance court decisions would be reviewed by the No 3 Civil Tribunal instead of the IP Tribunal.
Apart from the court system, local Administrations for Market Regulation (formerly known as IP offices) are also authorised by the Patent Law to govern administrative actions filed by the right holder of a patent. The administrative decision will be subject to the two-instance judicial reviews, for which the jurisdictions are the same as for civil litigation.
Some provinces in China also establish local IP arbitration centres for resolving IP disputes through arbitration or mediation, upon the consent of the parties.
After the grant of a patent, the patent owner will be able to file a lawsuit on patent infringement, and there are no prerequisites to filing a lawsuit. Usually, the granted patent, a duplicate of patent register or the receipt of the annual fee would be filed for case filing.
In China, there are three types of patent licence, including sole licences, exclusive licences and non-exclusive licences. According to Chinese law, the difference between the sole licence and the exclusive licence is that, under a sole licence, the patentee would also be prohibited from exploiting the patent, while for an exclusive licence, the patentee is allowed to exploit the patent. The sole licensee is entitled to file a patent infringement lawsuit independently. The exclusive licensee is entitled to file a lawsuit if the patentee fails to file a lawsuit, while the non-exclusive licensee must have the explicit authorisation from the patentee. Therefore, apart from the licence agreement, a declaration of the non-filing of a lawsuit or an explicit authorisation from the patentee would be respective additional prerequisites for the exclusive and non-exclusive licensees to file a lawsuit.
It is not required in the PRC law that parties in intellectual property matters are represented by a lawyer. An individual can represent himself or herself or be represented by relatives. An entity can be represented by an employee of that entity in the proceeding. In patent litigation, a party can also be represented by a patent agent recommended by the All China Patent Attorneys Association. According to the Civil Procedural Law, one party may have two litigation representatives at most at the same time.
An interim injunction may be granted in cases after considering the following factors prescribed by the Supreme People’s Court:
A bond is required for the interim injunction.
Before an interim injunction is granted, the court will normally arrange a hearing. During the hearing, the potential opponent may challenge the petition of the plaintiff based on the factors for court consideration mentioned in 2.7 Interim Injunctions.
To obtain an interim injunction, the plaintiff needs to post a bond for potential damages to the defendant if the interim injunction turns out to have been wrongfully ordered. The potential opponent may petition the court to order the plaintiff to increase the bond for recovering the opponent’s potential damages. The plaintiff shall be liable for the damages caused by the interim injunction if the patent is invalidated or the infringement is not found in the effective court decision.
The Patent Law provides a statutory limitation of two years for patent infringement cases, which shall be calculated from the moment the right holder knew or should have known about the infringement. According to the General Provisions of the Civil Law enacted in 2017, the general statutory limitation for a civil action has been increased to three years, which causes a potential controversy with the two-year period stipulated in the Patent Law. The draft amendment to the Patent Law increases the statutory limitation for patent infringement to three years.
In China, there is no discovery mechanism in place for a party to obtain relevant information and evidence from other parties. Therefore, the right holder of a patent has to collect evidence on its own from publicly available sources.
However, the Civil Procedural Law provides options for the parties if they encounter difficulties in collecting evidence on their own. According to Article 81, where any evidence may be extinguished or may be hard to obtain at a later time, a party may apply to the court for evidence preservation, and the court may also take evidence preservation measures on its own initiative. Normally, the evidence preservation application will be filed by a party before the evidence production deadline, or evidence exchange date designated by the court, or a date specifically approved by the court. In urgent circumstances, a party may apply for evidence preservation before initiating an action. A bond may apply to evidence preservation.
Article 64 of the Civil Procedural Law allows a party to the litigation to apply to the court to collect evidence from third parties if the party is not able to collect because of objective reasons (eg, the evidence is kept by a government agency). Similarly, the application for collecting evidence from a third party should be also filed before the closing date for evidence submission. As an alternative, for evidence collection by the court, the court may issue a court-investigation order requiring the attorneys representing the parties in the litigation to collect evidence from third parties.
To mitigate the difficulties in collecting evidence, the interpretations and precedents of the Supreme People’s Court also provide a “shift of the burden of proof” rule for the right holder of a patent. During the litigation, the plaintiff can petition the court to request that the defendant submit certain important evidence, if the plaintiff proves or shows such evidence is under the control of the defendant and it is impossible or difficult for the plaintiff to collect it. Another possibility is that, after the plaintiff has submitted the preliminary evidence for its case, the court may shift the burden of evidence production to the defendant. If the defendant refuses to provide such evidence, the court may rule against the defendant. For example, if the plaintiff has submitted preliminary evidence for calculating damages but the defendant refuses to submit its financial information to prove its profits relevant to the infringement, even if ordered to do so by the court, the court may make a decision unfavourable to the defendant – eg, to fully support the damages allegation of the plaintiff.
The initial pleading standards in intellectual property proceedings are not different from other civil proceedings. According to Article 119 of the Civil Procedural Law, the initial pleading standards require that: (i) the plaintiff is an interested individual, entity or other organisation; (ii) the defendant is definite; (iii) the claims, factual and legal basis are specific; and (iv) the court to which the plaintiff files the pleading has the jurisdiction over the case. For administrative actions, the initial pleading standards are also similar.
To be more specific, to fulfil the above initial pleading standards for filing a civil patent infringement case, the plaintiff is generally required to provide evidence proving its right over the asserted patent and the infringement of the defendant. To prove the patent right, the asserted patent and the duplicate of the patent register or the receipt of the annual fee for the patent shall be filed. If the plaintiff is a sole licensee, the licensee shall further file the licence agreement. For an exclusive licensee, it shall also file evidence showing the patentee’s declaration of not filing actions against the same infringement. For a non-exclusive licensee, it shall also file evidence proving it is authorised to file the infringement case independently. With respect to evidence of infringement, in a common patent infringement case, the plaintiff shall file preliminary evidence that it has collected (eg, samples of the allegedly infringing products) when the case is filed. Usually, the samples are purchased with the witness of a notary public.
The basic information of the defendant (eg, an online copy of the business register), shall be filed with the court if the defendant is a company, but documents proving the identity of the defendant do not need to be filed as an evidence.
A complaint or pleading is necessary for initiating an infringement case. In the complaint, the claims and the grounds for filing the case shall be submitted. The claims for a patent infringement action usually include an injunctive claim and a damages claim. The plaintiff shall also state the infringing acts of the defendant. According to Article 11 of the Patent Law, the infringing acts include making, selling, offering to sell, using and importing the patented products; using the patented method; and using, selling, offering to sell and importing products which can be directly obtained from the patented method. A claim chart is not necessary for filing the case.
The plaintiff may supplement pleadings with arguments in future proceedings, and the claims asserted in the complaint may be submitted and amended before the end of the court hearing. In particular, evidence of damages is not necessary for filing an infringement case and can be supplemented instead after the case filing and before the deadline for evidence production, the evidence exchange date, or a specific date designated by the court. For utility model and design patents, the court will usually ask the plaintiff to submit the patent evaluation report issued by CNIPA, as utility model and design patents are granted without substantive examination in China.
After the court hearing, the parties may submit post-hearing briefs to supplement their arguments, but evidence is usually not allowed to be supplemented after the hearing. If a party petitions the court to consider supplemental evidence after the hearing and the court deems the evidence important for the case, the court may arrange additional cross examination for that supplemental evidence, but the party supplementing the evidence may be punished by the court if it is responsible for the evidence not being filed in a timely manner.
There are generally no specific restrictions on representative or collective actions in China for IP cases. According to the Civil Procedural Law, if there are numerous parties on one side of a joint action, those parties can select a representative to proceed with the litigation. Class actions may be instituted if the subject matter of various actions are of the same kind and there are numerous parties on one side of an action. However, in practice, we have not seen any representative or collective actions for patent cases.
The owner of a patent may be held responsible for abuse of a patent right if a malicious lawsuit is brought against a defendant and bad faith is revealed by the fact that the plaintiff initiated the action with knowledge that the patent right is invalid. In such cases, the defendant may accuse the plaintiff of instituting a malicious lawsuit and claim for damages.
For standard essential patents, an injunction petition would normally be scrutinised more strictly and prudently by the court.
The owner of the IP right and the alleged infringer are the necessary parties to an action for infringement. Other than the owner, the sole licensee also has the right to independently bring an action for infringement, and the exclusive licensee may also bring an action alone if the owner does not participate in the proceeding. A non-exclusive licensee may bring an action under the authorisation of the owner. The licensee shall submit evidence to show it is an eligible plaintiff as aforementioned.
The party actually implementing a patent without permission, and for business purposes, commits direct infringement. The party’s action constitutes infringement if it actually makes, sells, offers to sell, uses or imports the patented products, or actually uses the patented method, or uses, sells, offers to sell or imports the product which can be directly obtained from the patented method. In a recent case (Dunjun v Tenda), the IP tribunal of the Supreme People’s Court held that if the material contents of the patented method are solidified into products by the accused manufacturer for the purpose of production and business, and that act of solidification or its result plays a non-substitutable material role for all technical features of the claim of the patent being presented (ie, the process of the patented method can be naturally reproduced when an end user uses the accused products in a normal operation) then the acts of manufacturing, selling and offering to sell such products by the manufacturer shall be held as constituting direct infringement.
However, for a party not directly implementing a patent, indirect infringement theories may need to be resorted to, namely, contributory infringement or infringement by inducement, which are provided for in the judicial interpretations of the Supreme People’s Court.
For contributory infringement, it needs to be established that the party has full knowledge that its products, including materials, equipment, parts and components or intermediates, are made especially for the purposes of implementing the patent by a direct infringer.
Infringement by inducement requires evidence showing that the party has actively induced the direct infringer to implement the patent.
For both direct and indirect infringement, injunctions are available, and both the direct and the indirect infringer may be held jointly liable for damages.
The scope of protection of an invention patent or utility model patent is determined by claims of the patent.
With respect to specific rules for determining whether the allegedly infringing solution falls into the scope of protection of a patent, the most basic rule is the all-elements rule. Namely, it is a prerequisite for finding infringement that the accused product or method possesses all the technical features contained in the claims of the patent.
In ascertaining infringement, the court determines whether the accused product or method possesses the same, or equivalent, technical features as the claims. If all corresponding technical features of the accused product or method are the same as those of a claim of the asserted patent, the literal infringement will be found by the court. If no literal infringement could be found, the plaintiff may resort to equivalent infringement. Equivalent infringement means that one or some of the technical features of the accused product or method are not the same but equivalent to those of a claim. "Equivalent features" means that the features use substantially the same means, realise substantially the same functions and achieve substantially the same effects – without inventive labour – as the technical features contained in the claims.
In determining the scope of protection, the statements and amendments made by the patentee during the prosecution of the patent or during the invalidation proceeding of the patent and especially based on which the patent is granted or maintained valid, will also be used to define the scope of protection based on estoppel rules.
In China, the scope of a functional feature (or means-plus-function feature) shall be limited to the embodiments described in the specification and their equivalents. The equivalents for the functional feature have a narrower conceptual scope than equivalents for other types of technical features. The equivalent of a functional feature requires that the corresponding feature of the accused product or method be of substantially the same means, realising the same functions and achieving the same effects – without needing the inventive labour of someone skilled in the relevant art – relative to the indispensable technical features described in the written descriptions or drawings for reaching the functions or effects as limited in the functional feature.
In China, the main defences used by the defendant to avoid liabilities are as follows:
Although compulsory licence is stipulated by the Patent Law, it is not a defence for actions that were conducted before the licence. To our knowledge, no compulsory licence has been granted in China. Owning patent rights is not an available defence in China either. As long as the patent asserted is infringed upon and the patent is valid, the infringement will be found and the fact that the defendant holds its own patent does not serve as a legitimate defence.
In cases involving complicated technical issues, the parties might be permitted to introduce their own experts, but the courts generally would regard the experts’ statements as inherently biased and usually would choose not to adopt their opinions directly. For this reason, it is common practice in China for a party not to use an expert, and the influence of the said experts is insignificant. However, the explanation by the parties’ own expert may be helpful for the court to understand technical issues.
Along with the establishment of IP courts, a system for the courts’ own technical officers was also established. The Chinese courts may also consult court-engaged experts or technical investigation officers to address any technical issues involved. For complicated patent cases, the court will designate a responsible technical officer, who has a technical backgrounds in the same (or a similar) field and may be a former patent examiner. In some other trial courts, the people’s assessors who have technical backgrounds, such as professors in engineering universities would be engaged in patent cases as one member of the collegial bench. The technical officer will provide explanations and opinions on technical issues, which will be an important reference for – and will have significant influence on – the technical findings by judges.
If the infringement mapping is not straightforward in a patent infringement case and some technical testing or experimentation needs to be done to confirm the infringement, the court will engage a judicial appraisal institute to conduct that testing or experimentation. The experts of the institute will issue technical opinions in an appraisal report. Unless the appraisal report has obvious defects, the court will be very likely to rely on the appraisal report to find or deny the infringement.
There is generally no separate procedure for construing the terms of the patent’s claims, and the claim construction is usually carried out in the process of comparison during the court hearing. The parties might choose to submit their unilateral comparison charts to the collegial bench for reference. The parties may also further submit written arguments or their opinions on claim constructions after hearing.
Any party in China can file an invalidation petition to CNIPA to invalidate a patent. Normally, the party filling the petition is a defendant in an ongoing or potential patent infringement case, as the infringement case would be dismissed by a court if the underlying patent is declared invalid.
The grounds for invalidation are stipulated in Rule 65 of the Implementing Rules for the Patent Law of China, and specifically provided in the Guidelines for Patent Examination. The invalidation reasons include that:
The invalidation petition will be reviewed by the Reexamination and Invalidation Department of the Patent Office of CNIPA. If any party is not satisfied with the decision of CNIPA, the party may appeal the decision to the Beijing IP Court, and the first instance court decision of the Beijing IP Court may be further appealed to the IP Tribunal of the Supreme People’s Court of China.
Partial invalidation is possible, as most of the invalidation reasons are independent for each claim. After an invalidation proceeding, certain claims may be maintained valid while other claims are declared invalid. The claims maintained valid can still be relied on for infringement claim.
For invention patents and utility model patents, after receipt of an invalidation petition by an opposing party, the patentee can choose to make amendments to the claims within the period designated by CNIPA, and the following types of amendments may be adopted during invalidation proceeding according to the current Guidelines for Patent Examination: deletion of a claim, deletion of a technical solution, further limitation to a claim by incorporating features in other claims, and correction of an apparent error.
In China, bifurcated proceedings are adopted for patent cases. Invalidation and infringement cases are not heard together and are heard by different authorities. The invalidation proceedings are heard by the Reexamination and Invalidation Department of the Patent Office of CNIPA, while the infringement proceedings are heard by the courts having jurisdictions over patent cases.
As the invalidation decision might be issued before the rendering of a first instance judgment by the court, the court hearing the infringement case may, in fact, wait for the invalidation decision before starting the substantive review of the infringement case, and under certain circumstances may issue a formal ruling suspending the case pending the invalidation proceeding.
If the patent is declared invalid before the rendering of judgment, the court will dismiss the case without waiting for the results of potential administrative litigations on the CNIPA decision on the validity of the patent.
Patent cases follow the procedural provisions for general civil or administrative litigation, and patent invalidation proceedings follow procedures provided in the Guidelines for Patent Examination of CNIPA.
In China, a patent case is determined by a collegial bench normally consisting of three judges, although the places of one or two judges may be taken by people's assessors. Some of the judges might have technical backgrounds, but it is not required that the case should be determined by technical judges. The judge is usually designated by the court, and the parties do not have the right to choose a judge for the case.
The proceeding and terms for settlement can be very flexible, and no mandatory settlement conference is required. The parties can have out-of-court negotiation to reach a settlement agreement, and once the agreement is executed, the parties can petition the court to issue a mediation order incorporating some terms of the agreement, or the plaintiff can choose to withdraw the case. A settlement can also be made under the mediation of the court. The scope of a court mediation order is normally limited to the matters related to the specific case and enforceable by a court, while an out-of-court settlement agreement is flexible, allowing the parties may settle various disputes. Parties can petition the court to enforce the mediation order if, subsequently, the opposing party violates the terms of the order, while for the terms that are not included in the court mediation order, one party will have to file a separate litigation to enforce an out-of-court settlement agreement.
In China, the infringement case is heard by a court while the invalidation proceeding is heard by CNIPA. For design and utility model patent cases, the court shall suspend the infringement proceeding if the defendant files an invalidation petition within the answering period, unless the patent evaluation report has provided a positive result, the prior art evidence has proved the alleged infringing solution is prior art, or the invalidation grounds filed by the defendant are obviously untenable. However, during an infringement case, a court may reject the defendant’s petition to stay the court proceeding if the patent involved is an invention patent. In practice, a court may actually wait for the invalidation decision before starting substantive review of the infringement case regardless of whether a stay decision is issued, because the invalidation proceeding in China usually goes much faster than the infringement proceeding.
The patentee is entitled to injunctive relief, damages, and reasonable expenses including attorneys’ fees. The injunctive relief is only available when the patent does not expire at the issuance date of the court decision.
Pursuant to the current Patent Law, the damages are calculated based on the losses incurred to the patentee, the gains obtained by the infringer, or the reasonable royalty. If the above is difficult to determine, the court can decide on compensation in the sum of no less than CNY10,000 but not more than CNY1 million, at its own discretion. Currently, no punitive damages for wilful infringement is available, but when deciding on the damages, the court might actually consider the nature of the infringement and the bad faith of the infringer. However, increasing the maximum statutory damages to CNY5 million and punitive damages are both considered in the draft amendment to the Patent Law.
The defendant is generally not entitled to compensation as a prevailing party in an infringement case, however, if the infringement case is initiated by the plaintiff in bad faith or in breach of antitrust law, the defendant might choose to file a separate case for damages.
For invention patents, utility model patents, and design patents, the types of remedies available are the same: injunctions, damages, and reasonable expenses. If an infringer of technical secrets causes severe consequences, the infringer may be also held liable for criminal liabilities, including fines and imprisonment of up to seven years.
If a patent is found both to be valid and infringed at first instance, and the defendant filed an appeal, the first instance judgment has not become effective. Thus, the plaintiff will not be able to apply to the court for enforcement of the first judgment. In other words, the defendant does not have the obligation to pay compensation or obey the injunction order unless the second instance judgment affirms the first instance judgment.
There are no special provisions concerning the appellate procedure for patent right proceedings. Regarding civil infringement cases based on invention patents and utility model patents, the IP Tribunal of the Supreme People’s Court has exclusive jurisdiction on appeal cases.
The appeal court conducts a full review of both facts and legal issues raised by the appellant(s) in the appeal and reviewed in the first instance judgment. The appeal court may also admit new evidence and review new legal issues when it sees fit.
Before filing a patent infringement lawsuit, the costs incurred to the plaintiff usually relate to collection of evidence of infringement and damages. Costs may also occur for evaluating the chance of establishing infringement and the validity strength of a patent it plans to assert. Costs may also be incurred for a unilateral test proving possession of certain technical features, although it is generally not required for case filing. If the plaintiff would like to try resolving the dispute through negotiations, an additional cost for sending the warning letter may take place. However, a warning letter is not a prerequisite for a plaintiff to file a lawsuit in China.
The court fee for commencing civil proceedings is calculated depending on the damages claimed in the complaint. For administrative proceedings, the court fee is fixed as CNY100.
The plaintiff would prepay the costs of litigation, including court fees, expenses including attorneys' fees, notarisation fees, investigation fees and judicial appraisal fees if applicable. After the rendering of judgment, the defendant would be ordered to pay the court fee based on the proportion of damages actually supported by the court, and the court fee excessively prepaid by the plaintiff would be refunded. The judicial appraisal fee, if any, would be assumed by the losing party, and the amount of reasonable expenses including the attorneys’ fees would be decided by the court based on the evidence of the plaintiff and to be assumed by the defendant if the plaintiff wins the case.
Litigation is the most common way of settling patent disputes. Alternatively, especially for patent infringement involving numerous independent infringers, filing administrative complaints to the local Administration for Market Regulation may be a better way of stopping infringement at a lower cost.
Both litigation and an administrative complaint case can be concluded by settlement of the involved parties or mediation of a court or local Administration for Market Regulation.
Arbitration and mediation are also available alternative solutions for IP cases. The parties’ consent, however, is required for these resolution methods. In patent infringement cases, the parties rarely reach such agreements.
For assignment of a patent right, a written assignment agreement needs to be executed by the parties and filed with CNIPA, and the assignment only becomes effective after registration. If the assignment is between a Chinese entity or individual and a foreign entity or individual, additional requirements and restrictions will apply, according to Regulations on the Administration of Import and Export of Technologies enacted by the State Council.
The parties involved in the assignment will sign an assignment agreement, and file the agreement together with other required documents to CNIPA. The assignment agreement will be reviewed and approved by CNIPA before public announcement of the registration.
A licence agreement becomes effective and binding after execution and satisfaction of all conditions. Filing of a licence agreement with CNIPA is voluntary, but without filing, the licence agreement cannot be relied upon against the claims of a third party without knowledge of the licence. If the assignment is between a Chinese entity or individual and a foreign entity or individual, the approval of or registration to the Ministry of Commence of the PRC is required.
No particular procedures are in place regarding licensing of patent rights. The licence agreement may be registered with CNIPA, which meets the formality requirements of CNIPA. However, the effectiveness of a licence agreement would not be influenced if the licence agreement is not registered.
IP is becoming an increasingly important topic in China, along with the growing importance of innovation to the nation’s economy. The Chinese state is sending a clear signal to the public of its strong desire to strengthen IP protection through legislative, judicial, and administrative reforms.
This article aims to help an international audience understand what has happened, and is happening, in China’s IP market.
Trends in China’s IP Policies and Laws
The legal framework for strengthening IP protection has been established in 2019. IP laws and regulations in China have been amended and come into force, raising penalties for infringement and affirming equal protection for foreign IP owners.
April 2019 saw the amendment of both the Trademark Law (effective as of 1 November 2019) and the Anti-unfair Competition Law (effective as of 23 April 2019). In the Trademark Law, punitive damages up to five times the value of the actual damages will now be imposed for wilful infringement. In addition, the Trademark Law makes a clear attempt to crack down on bad faith trademark filings. Meanwhile, the Anti-unfair Competition Law greatly lightens the plaintiff’s burden of proof in trade secret misappropriation cases and immediately shifts the burden to the defendant upon the plaintiff’s initial presentation of evidence of infringement.
Draft amendments to the Patent Law, from January 2019, raise punitive damages for patent infringement to up to five times the damages determined in cases of wilful infringement, corresponding to the level of punitive damages stipulated by the Trademark Law.
The equal protection of foreign investors IP rights is emphasised in Article 23 of the Regulations for the Implementation of the Foreign Investment Law, effective as of 1 January 2020.
IP Litigation Trends
The year 2019 was a significant one for IP litigation judicial practice in China, following fundamental changes that have been made to the legal system. This section will focus on efforts that have been made to achieve the following two goals: (i) unifying standards of judicial practice; and (ii) expediting the awarding of enforceable injunctive relief available to IP right owners.
Unification of the standards of judicial practice
Two major measures were taken to unify the application of the law in respect of IP. Firstly, starting from 2019, the IP tribunal of the Supreme People’ Court began to exclusively review all appeals of IP cases from the high courts, the intermediate courts, and the IP courts all over the country, which covers the vast majority of IP appeals. Secondly, although there is no principle of stare decisis under the Chinese legal system, judges are now required or encouraged to give greater deference to cases previously decided.
1) Jurisdiction of the IP tribunal of the Supreme People’s Court
Since 2019, the IP tribunal within the Supreme People’s Court has had exclusive jurisdiction to adjudicate appeals that originally went to the local high courts scattered across 34 provincial regions. Chinese court judgments, including those for the IP cases, become final and effective after adjudication by two of the four levels of courts: basic people’s courts; intermediate people’s courts, including the three specialised IP courts in Beijing, Shanghai and Guangzhou; high people’s courts, and the Supreme People’s Court. Two primary factors determine which courts hear an IP dispute: the type of case and the amount of damages the plaintiff claims. Since 1 May 2019, the damages threshold for filing a civil IP case before a high court has been raised to RMB5 billion, from RMB100 million (if a party does not reside within that court’s jurisdiction or the case involves foreign, Hong Kong, or Macau elements) and from RMB200 million for all other cases. This means that, in practice, most IP cases, including all patent cases, trade secrecy cases, software cases, and other cases with technical issues as well as certain administrative cases, will be tried by the IP courts or the IP tribunals established within the intermediate people’s courts. All appeals from these IP tribunals and IP courts were previously adjudicated by the high courts of each province. Now, these appeals all go directly to the Supreme People’s Court. The benefit of this arrangement is a marked reduction in disparities in the application of IP laws among cases from different regions.
In practice, this change may also come to unify the adjudication of patent infringement and the examination of patent invalidity. China has adopted a bifurcated system to allow the Chinese patent office, the National Intellectual Property Administration of China (CNIPA), to retain the exclusive authority to review the validity of patents. If a party is not satisfied with the invalidity decision made by CNIPA, he or she can initiate an administrative lawsuit before the Beijing IP Court, the judgment of which was previously appealable to the Beijing High People’s Court. Meanwhile, an infringement lawsuit over the same patent-in-suit could be filed at a different court, in which case the final say regarding the validity and the infringement would have been issued by different high courts. Based on the new arrangement, the Supreme People’s Court now may take on both of these matters simultaneously by consolidating the two different appeals. In fact, the Supreme People’s Court published the first judgment for this type of consolidated case on 9 December 2019. It is foreseeable that this will become standard practice in the near future.
2) A quasi-stare decisis system
Every year, Chinese courts publish their typical cases of the year to clarify controversial issues in judicial practice. The courts realise that these previous cases can only be authoritative if they are given sufficient deference. On 2 , the Beijing High Court published the pioneering "Work Guidelines on the Standardization of the Exercise of Discretion in Civil Disputes to Ensure the Unified Application of Law (Trial)", requiring judges in Beijing to consider and discreetly analyse previous similar cases when trying cases, especially those presented by parties in a civil case. It is without a doubt that a quasi-stare decisis system is under development in China.
Expedited injunctive relief for IP owners
China’s effort to build a robust IP protection system can also be seen in efforts made by the courts to expedite the awarding of injunctive relief for IP infringement. Significant developments include the Supreme People’s Court’s issuance of its first judicial interpretation on preliminary injunctive relief for IP cases in December 2018, the "Provisions on Several Issues concerning Application of Law in Review of Cases involving Behavior Preservation in Intellectual Property Right Disputes" (Provisions on Behavior Preservation), and the first partial judgment to involve liability and permanent injunction decided in March 2019.
1) Preliminary Injunctions
In China, permanent injunctions are awarded purely based on the establishment of the infringement and the request of the plaintiff. There are only very limited exceptions for denying a permanent injunction, where national interests or public interests are involved or where the patent-in-suit is standard-essential. However, permanent injunctions may only be enforceable following appellate review if a party has appealed the first instance decision. Therefore, permanent injunctions, especially for patent cases, have been criticised for not being available quickly enough. The promulgation of the Provisions on Behavior Preservation is a clear signal from the Supreme People’s Court to encourage the use of preliminary injunctions in IP cases. Specifically, they set stringent procedural and substantive standards for the award and review of preliminary injunctions in IP disputes, as they are such a powerful tool for patentees. In contrast to permanent injunctions, preliminary injunctions are effective and enforceable upon being granted, and respondents have almost no quick or effective countermeasures against them – they cannot be appealed, and the only review process is a reconsideration conducted by the same court that issued the preliminary injunction. Furthermore, the enforcement of preliminary injunctions is not suspended during reconsideration. Permanent injunctions remain effective until the final appellate judgment is issued. Therefore, a judge may conduct a full and thorough adjudication of the merits of the case for purposes of being discreet and cautious, and then issue a preliminary injunction that is immediately effective and enforceable, rather than issuing the first instance judgment with an appealable permanent injunction. The time period to complete such a review might be limited to less than a year, or even less when the patent-in-suit only involves simple and straightforward technical solutions.
2) Partial Judgments
The use of partial judgments is another creative attempt by the Chinese courts to obtain speedy injunctive relief for patentees. Partial judgments, which have long existed within the Chinese legal framework, allow courts to issue judgments to conclude a partial set of issues while leaving the remaining issues for later adjudication. In Valeo Systèmes d'Essuyage v Xiamen Fu Ke Auto Parts Co., Ltd. et al.((2016) Hu 73 Min Chu No 859), the Shanghai IP Court issued the first partial judgment for an IP dispute in China on 22 January 2019, and awarded a permanent injunction based on the establishment of infringement, leaving the monetary damage issues to be adjudicated at a later point. On March 27th, 28 days after the acceptance of the appeal, the IP Tribunal of the Supreme People’s Court held a hearing to conduct the appellate review of the partial judgment and upheld the Shanghai IP Court’s first instance decision. As a result, the permanent injunction became enforceable while the first instance court was reviewing the monetary damage issues. While it is uncertain whether this practice will be broadly applied in the future, the mechanism at least provides another option for IP owners to expedite the process of obtaining injunctive relief.
Patent Prosecution Trends
The year 2019 also showcased the enhanced protection of innovation, especially artificial intelligence (AI) and other contemporary innovations.
In order to adapt patent examinations to the fast development and wide application of computer-related technologies such as AI and big data, CNIPA posted, on 31 December 2019, a new amendment to the Guidelines for Patent Examination regarding computer-implemented inventions, which will come into effect on 1 February 2020. These amended Guidelines clarify the examination rules for examining invention patent applications involving algorithms and business rules, and also provide examples to show how the examination rules should be applied in practice. These examination rules and examples give patent applicants clearer guidance on what can be patented and how to draft a better patent application for computer-implemented inventions. Although the patent system in China is fairly friendly to algorithm- and business-related inventions compared to some other jurisdictions, it may be helpful for patent applicants to know the following examination rules and drafting tips so that they can be better prepared for their computer-implemented invention patents in China.
Pure algorithms or business rules are not patent eligible
An important signal that should be noted from the amended Guidelines for Patent Examination is that pure algorithms (eg, AI algorithms such as neural networks) and pure business rules are not patent eligible because they are “abstract” but not technical.
For example, one cannot seek patent protection for a method for establishing a mathematical model or a training method for a neural network if the method fails to define in which technical field the method is to be applied. It is also not possible to claim a business rule for rewarding customers if technical innovation does not exist to implement the business rule.
Technical elements can render an algorithm or business-related invention patentable
The good news for prospective patentees is that the above examination rule in the amended Guidelines for Patent Examination does not rule out the possibility of patenting an invention that involves algorithms or business rules, and technical elements in a claim will be very helpful in this regard. More specifically, a claim is patent-eligible if the claim includes not only algorithms or business rules but also technical features, and the solution as a whole uses technical means to solve a technical problem and achieve a technical effect.
In an example provided in the amended Guidelines, a method of training a convolutional neural network is considered patent-eligible because the claim clearly recites that the training data is image data and the features are feature images. It can be seen that an algorithm, if applied to a specific technical field, will no longer be “abstract” but becomes “technical”.
In another example provided in the amended Guidelines, a method for managing use of shared bicycles is considered patent-eligible because the claim includes technical features for obtaining the location of a user and their bicycle through GPS signals, and performing the server authentication of the user through the use a 2D QR code. Since such technical means are adopted to solve a technical problem and achieve a technical effect in implementing the business rule regarding managing the use of the shared bicycles, the solution as a whole is not considered a pure business rule and thus is patent-eligible.
Prospective patentee strategy
Before a patent application is filed in China, the applicant should make sure they have technical elements described in their description and claims. For example, the technical elements can include the technical field (eg, image processing, industrial control or wireless communications) to which the algorithm is applied, how the algorithm is applied in a technical field, or how the business rules can be implemented by specific technical means, etc.
Detailed descriptions of technical effects are also important to show that the contribution of the invented solution is not merely in terms of mathematics or business but also in terms of technology. For example, compared to the effect of attracting more customers or reducing financial risks, the technical effects of reducing the power consumption of a computer or achieving better network security may be more helpful in making the solution “technical”. It is also recommendable to highlight how the technical features (or the technical features and the algorithms or business rules as a whole) function to achieve the technical effects, which would be even more persuasive in convincing the examiners of the technical substance of the solution. Note that a merely general computer or a merely general internet platform is usually considered not to contribute to the technical attributes.
Functional interactions between technical features and algorithms or business rules are important for inventiveness assessments
Even if the patent eligibility criterion has been met, the inventiveness bar might still be a challenge for algorithm- or business-related inventions.
In particular, differences from the prior art which only include algorithms or business rules do not necessarily contribute to inventiveness in some cases. Features of algorithms or business rules are considered to contribute to inventiveness only if the algorithms or business rules and technical features functionally support and interact with each other.
For example, algorithms that are applied in a specific technical field to solve a technical problem in that field can be considered to functionally support and interact with the technical features. In addition, business rules – the implementation of which requires the improvement of technical means – can also be considered to functionally support and interact with the technical features. Such algorithms or business rules should be considered with the related technical features as a whole and can thus render a solution inventive over the prior art.
As an example to the contrary, if a solution includes business rules but those rules do not require the improvement of technical means and can be simply implemented by a well-known general computer or the internet, such business rules are not considered to functionally support or interact with the technical features and thus do not contribute to the inventiveness of the solution.
Prospective patentee strategy
It can be seen that merely “something technical” might not be sufficient in some cases, and the connection between the “non-technical” features and the technical features may help in proving inventiveness. In other words, the patent specification may advantageously include descriptions of how these “non-technical” features are supported by or interact with the technical features.
For example, if an invention relates to an algorithm that can improve the internal performance of a computer, in addition to the algorithm per se, the patent specification should include how the algorithm may interact with the specific hardware components of the computer – eg, how to change the operations of the processor, the memory, the firmware or the database to improve the performance of the computer.
In another example, if an invention relates to a new business rule, it is also important to describe what special technical means are adopted to implement the business rule. Note that a simple description of a general computer or the internet may not be sufficient, instead there should be some closer connection between the business rule and the technical means of its implementation. That is to say, the technical means are preferably recited in more detail and directed more specifically to the related business rule.
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