Understanding China’s new infringement measures

On 26 May 2021, China’s National Intellectual Property Administration (CNIPA) released the Measures for Administrative Adjudication of Major Patent Infringement Disputes, which come into effect 1 June 2021.

In 2010 the State Intellectual Property Office (SIPO), CNIPA’s predecessor, released the Measures for Patent Administrative Enforcement, with amendments published in 2015. These provide that SIPO is competent to organise the enforcement of major patent infringement disputes and patent counterfeiting cases, as well as to coordinate enforcement where the act of tort occurs in multiple provinces, autonomous regions or municipalities directly under the central government (Article 5). In other words, all patent infringement disputes were to be adjudicated by local IP offices SIPO only intervened in major cases or those involving multiple administrative divisions, and the interventions were confined to organisation and coordination of enforcement actions.

The 2020 Patent Law vests more power in CNIPA by introducing in Article 70(1) a provision prescribing that “at the request of the patentee or stakeholders, CNIPA may handle patent infringement disputes of significant national impact”.

Article 3 of the 2021 Measures define major patent infringement disputes as:

• involving major public interests;
• seriously impacting the development of the industry;
• major cases involving cross-provincial administrative regions; or
• any other patent infringement disputes that may cause significant impact.

Even if a request is filed before the CNIPA for adjudication of a major patent infringement dispute, as provided in Article 3, the following conditions must be met:

• the request is filed by the patentee or a party having a stake in the dispute;
• a specific respondent is named in the request;
• the request lists specific claims, facts and grounds; and
• the court has docketed the said patent infringement dispute.

Patentee or stakeholder filing requests for the adjudication of disputes must include petitions, evidentiary material and documentation issued by the patent administrative department of the province, autonomous region or municipality where the respondent is located or where the infringement was committed (Article 5).

Once docketed by CNIPA, the case must be concluded within three months. An extra month may be allowed if circumstances warrant this, with a further extension possible should the case prove extremely complicated or should there be other exceptional circumstances (Article 22).

Where infringement is established, CNIPA shall order the immediate cessation of the illegal activity and notify the authorities and relevant departments of government. Once issued, CNIPA’s administrative decision may be appealed to a court within 15 days (Article 23).

Mediation remains a viable option in settling infringement disputes (Article 21). Article 25 allows patentees or stakeholders to fall back on the 2015 Measures for those matters unaddressed by the 2021 Measures. For instance, although the 2021 Measures is silent on the issue of damages, in principle, patentees or stakeholders can cite Article 22.3 of the 2015 Measures and request that a mediation is organised at the auspices of the local IPO to ascertain the damages. Without further details, the mediation of damages will remain opaque in practice.