Stopping infringement of Patent Right Before Instituting Legal Proceedings
July 1, 2009
(Several Provisions of the Supreme People’s Court for
the Application of Law)
With a view to protecting the lawful rights and interests of patentees and other interested parties, these several Provisions have been made for the application of law to stopping infringement of patent right before instituting legal proceedings according to the relevant provisions of the General Principles of the Civil Law of the People’s Republic of China, the Patent Law of the People’s Republic of China (hereinafter referred to as the Patent Law), the Civil Procedure Law of the People’s Republic of China (hereinafter referred to as the Civil Procedure Law):
Article 1 Any patentee or interested party may file an application with the people’s court for ordering the party against whom an application is filed, before instituting legal proceedings, to stop its or his act of infringement of the patent right in accordance with the provision of Article 61 of the Patent Law.
The interested party that files an application refers to the licensee of the licensing contract for exploitation of patent and the legal heir to the property right of the patent, etc.. Among the licensees of the licensing contract for exploitation of patent, the licensee alone of a monopolising exclusive patent license* contract may file an application with the people’s court; the licensee of a sole exclusive patent license contract may file an application when the patentee does not.
Article 2 Any application for ordering to stop infringement of patent right before instituting legal proceedings shall be filed with the people’s court having jurisdiction over cases of patent infringement.
Article 3 Any patentee or interested party who files an application with the people’s court shall submit an application in writing, in which the interested party per se and the basic information thereof, the claims and the extent of and reasons for the application shall be clearly indicated. The reasons for the application shall include the specific statement that irremediable damages will be caused to the legitimate rights and interests of the applicant if the relevant act is not to be promptly stopped.
Article 4 The applicant shall submit the following evidence when filing an application:
(l) The patentee shall submit document proving the authenticity and validity of its or his patent right, including, among other things, the patent certificate, claims, description and receipt of payment for the annual patent fee. Where the application filed relates to a patent for utility model, the applicant’ shall submit the search report by the Patent Administrative Organ under the State Council.
(2) The interested party shall submit the patent licensing contract and the proof for filing the Patent Administrative Organ under the State Council; where the proof is not for filing, it or he shall submit the certificate of the patentee or other evidence that proves that it or he enjoys the right.
Where the licensee of a sole exclusive licensing contract files an application alone, it or he shall submit the proof of abandonment by the patentee of the application. The heir to the patent property right shall submit evidence indicating that it or he has already inherited or is in the process of inheriting the patent property right.
(3) The applicant shall submit evidence to prove that the party against whom an application is filed is committing or will commit an act of infringing its or his patent right, including the alleged infringing product and the technical features of the patented technology and the alleged infringing product and the comparison thereof.
Article 5 The ruling made by the people’s court to stop an act of patent infringement before instituting legal proceedings shall be confined to the application filed by the patentee or interested party.
Article 6 Any applicant shall provide guaranty when filing an application; where no guaranty is furnished, the application is rejected.
Where the guaranty furnished by the interested party, in the form of pledge or hypothecation is reasonable and valid, the people’s court shall grant its approval.
When the people’s court determines the scope of the guaranty, it shall take account of the sales of the product in question and the reasonable. costs of storage and stock-keeping; of the losses that may be caused by stopping the relevant act of the party against whom an application is filed and other reasonable costs, such as the wages or salaries and of any other factors involved as Well.
Article 7 Where, in the process of executing the ruling to stop the relevant act, the party against whom an application is filed may suffer greater losses due to the adoption of the measure, the people’s court may order the applicant to provide guaranty in an extroactive manner. Where no such guaranty is provided, the measure to stop the relevant act shall be removed.
Article 8 Any measure taken to execute the ruling to stop the act of patent infringement shall not be removed because the party against whom an application is filed provides a counterguaranty.
Article 9 After accepting the application filed by a patentee or interested party to order to stop the act of patent infringement, the people’s court shall make a ruling in writing within 48 hours where the application conforms with Article 4 of these Provisions upon examination; where the ruling is made to order the party against whom an application is filed to stop its or his act of patent infringement, the ruling shall be executed without delay.
Where it is necessary for the people’s court to verify the relevant facts within the aforementioned time limit, the people’s court may summon and inquire the one or both interested parties and, then, make the ruling in a timely manner.
The people’s court making the ruling to order the part) against whom an application is filed to stop the relevant infringing act before instituting legal proceedings shall promptly notify the party against whom an application is filed, or does so within no more than 5 days at the latest.
Article 10 Where the interested party is not satisfied with the ruling, it or he may apply for reconsideration within l0 days from the date of the receipt of the ruling. The execution of the ruling shall not be suspended during the reconsideration.
Article 11 The people’s court shall examine the application for reconsideration filed by the interested party as to the following aspects:
(l) whether or not the act which is being committed or will be committed by the party against whom an application is filed constitutes an infringement of patent right;
(2) whether or not not taking the relevant measure will cause irremediable damages to the legal rights and interests of the applicant;
(3) the content of the information relating to the applicant’s provision of the guaranty; and
(4) whether or not to the order the party against whom an application is filed to stop the relevant act would impair the public interests.
Article 12 Where the patentee or interested party does not institute legal proceedings within l5 days, after the people’s court takes the measure to stop the relevant act, the people’s court shall remove the adopted measure of the ruling.
Article 13 Where an applicant does not institute legal proceedings or there is an error in the application, causing losses to the party against whom an application is filed, the party against whom an application is filed may institute legal proceedings in the people’s court having the jurisdiction, requesting the applicant to compensate for the losses; or file a request for damages during the patent infringement litigation instituted by the patentee or interested party. The people’s court may simultaneously handle the requests.
Article 14 The ruling ordering to stop the infringement of patent right shall generally remain effective until the final legal instrument comes into effect. The people’s court may also fix a specific time limit according to the facts of the case; after the expiration of the time limit, the people’s court may still make a ruling to continue to stop some relevant acts on the request of the interested party.
Article 15 Where the party against whom an application is filed runs counter to the ruling made by the people’s court to order to stop the relevant act, the matter shall be handled according to the provision of Article l02 the Civil Procedure Law.
Article 16 When executing the pre-litigation measure to stop the act of patent infringement, the people’s court may, according to the application of the interested party, simultaneously preserve the evidence in the light of the provision of Article 74 of the Civil Procedure Law.
The people’s court may, according to the application of the interested party, preserve the property pursuant to Articles 92 and 93 of the Civil Procedure Law.
Article 17 Where the patentee or the interested party institutes proceedings against patent infringement, when simultaneously requesting for stopping the act of patent infringement in advance, the people’s court may first make the ruling on the request.
Article 18 In respect of a case to stop an act of patent infringement, the applicant shall pay the fees according to the Standards of the People’s Court for Litigation Charges and the Additional Provisions thereof.
Adopted on 5 June 2001Â at the 1179th Meeting of the Adjudication Committee of the Supreme People’s Court
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Protection Recordation for IPR in China Customs
June 16, 2009
In respect of the necessity of customs protective recordation of IPR, a relevant official from General Administration of Customs (GAC) explained that it is positive protection, not of insignificance.
The official said that customs protection of IPR consists of positive protection and passive protection, while customs protective recordation of IPR is a precondition of positive protection, which means if the IPR is recorded in GAC, customs will find out the suspected infringing goods during imports and exports and inform IPR holders in time.
According to statistics from GAC, over 90% infringing goods are seized by inspectors in daily supervision on imported and exported goods.
Recordation is an important weapon against the fake and can help customs execute active protection, find out infringing goods and contact with IPR holders in time.
In addition, recordation can reduce infringing acts. The publicity of information of IPR recordation can warn and frighten the enterprises engaged in unscrupulous import and export of infringing goods.
Laws do not require the holder of intellectual property right to apply for recordation of his intellectual property rights before he applies to the General Administration of Customs for protection; an intellectual property right holder may request the customs to detain the goods suspected of infringement without recordation of his intellectual property rights. But in practice it will have different influences whether there is recordation or not. The main purposes of recordation are as follows:
It is the precondition of the customs’ active protection. According to Regulation of the People’s Republic of China on the Customs Protection of Intellectual Property Rights, where the customs find that any suspected infringing goods are to be imported or exported, they do not have the rights to stop the entry or exit of such goods if the intellectual property right holder does not apply for recordation. It is especially important for the trademark and copyright’s protection;
It is helpful for the customs to find the infringing goods. Although, after the recordation, where the holder of intellectual property right finds that suspected infringing goods are to be imported or exported, he still needs to file an application to the customs for protection in accordance with Regulation of the People’s Republic of China on the Customs Protection of Intellectual Property Rights. But in practice whether the customs can find the infringing goods or not depends on the customs’ checking on such goods. It is possible for the customs to actively detain the goods suspected of infringement during the daily control process, because where the holder of intellectual property right applies for archival filing, he needs to provide documents of the legal status of the intellectual property right, the right holder’s contact details, legal use of intellectual property rights and related pictures and photos. So the legal rights and interests of the right holders can be protected in time because of the recordation.
It lightens the economic burden of the holder of intellectual property right. In accordance with Regulation of the People’s Republic of China on the Customs Protection of Intellectual Property Rights and the intellectual property right holder shall provide a security of not more than 100 thousand yuan to the customs under the framework of protection of China Customs. If the holder of intellectual property right does not apply for recordation, he shall not be treated as above, and provide the customs with a security equivalent to the value of the detained goods;
It acts as a warning to the infringer. Because the customs shall confiscate the infringing goods and impose the administrative sanctions on the import and export firms, the recordation may warn and frighten the firms which unscrupulously import and export the infringing goods, and impel them to consciously respect the related intellectual property rights. Moreover, those non-vicious firms which import infringing goods may know whether or not the processed and exported goods infringe the legal rights by recordation.
The applicant for IPR protection recordation in General Administration of Customs should be in conformity to the following provisions when filling in the recordation application:
1. Application for trademark right protection
The applicant should be consistent with the trademark registrant written on the Registered Trademark Certificate. If the name of the trademark registrant has been altered, the applicant should be consistent with that on the Trademark Registration Proof. If the Chinese name of the applicant is not consistent with that on the Registered Trademark Certificate, while his foreign name is consistent with that on the Registered Trademark Certificate, it can be regarded as in conformity with the provision.
2. Application for patent right protection
The applicant should be consistent with the patent holder written on the Patent Certificate. If the period between the date of issuing Patent Certificate and the date of protection application exceeds one year, or the name of the patent holder has been altered, the applicant should be consistent with that on the Patent Registration Counterpart.
3. Application for copyright protection
The applicant should be consistent with the copyright holder on the Volunteer Registration Certificate. If there is no volunteer registration, the applicant should be consistent with that on other related copyright proofs. If the copyright is registered abroad, the foreign name of the applicant should be consistent with that on the Registration Certificate issued by the foreign copyright registration administration.
4. If the right holder consigns the application to an agent, the agent may apply in his own name.
The holder of intellectual property right shall attach the following documents and evidence when he presents the application for recordation to the General Administration of Customs:
(1)A photocopy of personal identification document, or business license or other documents which identifies the holder of intellectual property right;
(2)A photocopy of the Trademark Registration Certificate issued by the Trademark Office of the State Council’s industry and commerce authority, the documents confirming trademark registration issued by the Trademark Office of the State Council’s industry and commerce authority shall be presented in addition where the applicant has been permitted to change, renew, transfer the trademark registration or apply for recordation of an International Registered Trademark;
A photocopy of the certificate of voluntary copyright registration issued by the copyright registration authority, or the photographs of the works confirmed by the copyright registration authority. Where the applicant has not carried out the procedures for voluntary copyright registration of his works, a sample of his works or other evidence which can prove his ownership of the copyright shall be presented;
A photocopy of the patent certificate issued by the State Council’s patent authority. Where the grant of patent has been announced more than one year, a duplicate of the patent register issued, within six months prior to the application for recordation, by the State Council’s patent authority. Where applying for the recordation of an utility model or a design, a photocopy of search report of the utility model or a photocopy of announcement of design issued by the State Council’s patent authority shall also be presented;
(3)A photocopy of a contract of license shall be presented where the holder of intellectual property right has licensed other parties to use a registered trademark, a work or a patent and a contract of license has been reached. Where no written license has been reached, a document explaining the details of scope, term of the license, etc. shall be presented;
(4)The photographs of goods and their package on which the holder of intellectual property right lawfully exercised his rights;
(5)The evidence of the known import or export of infringing goods; Where any infringement dispute between the holder of intellectual property right and other party has been settled by a People’s Court or by the competent intellectual property right authority, a photocopy of the relevant legal document shall also be presented; and
(6)Any other documents or evidence that the General Administration of Customs considers necessary to present.
The documents and evidence presented by the holder of intellectual property right to the General Administration of Customs in accordance with the preceding paragraph shall be complete, truthful and valid. Where the relevant documents and evidence are in a foreign language, they shall be accompanied by a Chinese translation. Where the General Administration of Customs deems necessary, it may require the holder of an intellectual property to present notarization or certification of the relevant documents or evidence.
Application:
In accordance with the provisions of Regulation of Customs Protection of Intellectual Property Rights of, the owner of intellectual property rights, who applies to the customs for protecting his/her intellectual property rights, shall enter his/her intellectual property rights in the record of General Administration of Customs. The owner of intellectual property rights, when applying for the record of customs protection of intellectual property rights, shall fill out Application Form for the Record of Customs Protection of Intellectual Property Rights and submit the written application to General Administration of Customs.
The application form shall include the following contents
(I) The title or name, origin of registration or nationality, address, legal representative and major business place of the owner of intellectual property rights;
(II) Registration number, content of the registered trademark as well as authorization number, content and period of validity of the effective patent, or relevant content of the copyright.
(III) Name and origin of production of goods related to the intellectual property rights;
(IV)The person that is authorized or licensed to use the intellectual property rights;
(V) Relevant information on the main entrance and departure customs, export and import dealer, primary characteristics, normal price of the goods related to the intellectual property rights;
(VI)Relevant information on the manufacturer, export and import dealer, main entrance and departure customs, primary characteristics, normal price of the goods known for violating the intellectual property rights;
(VII)Other information that should be provided as required by General Administration of Customs.
Refer to How to Fill out Application Form for the Record of Customs Protection of Intellectual Property Rights for filling out the application form.
The following documents shall be attached when the written application form is submitted
(I) The copy of Certificate of Identification of the owner of intellectual property rights or the duplicate or the registration department certified copy of Certificate of Registration;
(II) Duplicate of the Certificate of Registration of the registered trademark, announcement of registered trademark transfer approved by Trademark Bureau or the copy of trademark licensing contract on the record; or the copy of Certificate of Patent, duplicate of patent transfer contract registered and announced by Patent Bureau, duplicate of contract for licensing patent implementation; or evidentiary document or evidence of copyright;
(III)Other documents that need to be attached as required by General Administration of Customs.
Within 30 days after receiving all the application documents, General Administration of Customs will notice the applicant as to whether the record will be entered. For the application that is approved to be entered in the record, General Administration of Customs will issue Certificate of Customs Protection of Intellectual Property Rights for the Record; for the application that is not approved to be entered in the record, General Administration of Customs will explain the reason(s). When the application has been approved to be entered in the record, the copyright owner can request entrance and departure customs to take actions to protect his/her intellectual property rights if he/she finds out any goods suspected to violate his/her intellectual property rights is about to enter or exit this country.
Department of General Administration of Customs responsible for customs protection of intellectual property rights: Intellectual Property Office of Policy & Legislation Department
Address: No. 6 Neida Street, Jianguo Gate, Beijing
Postal Code: 100730
FEES:
1. When applying for IPR Customs Protection archival filing to the General Administration of Customs, the IPR right holder should pay an archival filing fee of 800 yuan for each archival filing application.
2. The applicant should transfer the filing fee to the dedicated account for the archival filing fee of the General Administration of Customs through bank. The General Administration of Customs does not accept payment of the archival filing fee by post office remittances, or cash, checks and other forms.
Dedicated account for archival filing fees of IPR Customs Protection by the General Administration of Customs:
Opening Bank: Beijing Wangfujing Branch, Industrial and Commercial Bank of China
Bank number: No. 7, Industrial and Commercial Bank
Account number: 090144070-44
Account name: General Administration of Customs, Dedicated Account for IPR fees
3. The applicant should pay the archival filing fee before application, and attach the copy of bank transfer bill to the application. If no transfer bill copy is attached, the General Administration of Customs would not accept the application.
4. The General Administration of Customs, after the grant of archival filing for IPR customs protection, should issue the receipt of the filing fee to the applicant. If the application is refused, the filing fee should be refunded to the applicant.
5. In the period of validity, if the applicant extend or modify the archival filing, no fee should be charged. If the applicant re-applies IPR archival filing after the invalidation, he should pay the filing fee again.
If the archival filing for IPR customs protection is legally canceled, revoked or otherwise invalid by the General Administration of Customs, the archival filing fees would not be refunded to the applicant.
Source: IPR in China
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IP Infringement Case Statistics in China
June 15, 2009
Mean damages awarded for all types of IP infringement cases:
2006: RMB 161,004
2007: RMB 110,468
2008: RMB 94,690
Mean length of trial for all types of IP infringement cases:
2006: 210.7 days
2007: 213.5 days
2008: 212.9 days
Mean plaintiff win + partial win rate for all types of IP infringement cases:
2006: 85.1%
2007: 85.9%
2008: 84.9%
Mean damages awarded for cases by type (2006-2008)
Patent infringement cases: RMB 89,733
Trademark infringement cases: RMB 179,084U
Unfair competition infringement cases: RMB 162,489
Source:Â Â http://www.ciela.cn
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