China: China Strengthens Administrative Enforcement of Patent Infringements

Last Updated: 3 March 2011
Article by Maarten Roos

China's patent owners have two legal remedies to tackle infringements: the civil lawsuit or the administrative action. However, since administrative departments lost the authority to decide on compensation for damages of infringement under the amended PRC Patent Law of 2001, the number of administrative actions has gradually decreased.

This may be about to change. Administrative actions are simple, fast and relatively cheap, and can be a useful stepping stone for civil claims. With the recent amendment of the Patent Administrative Enforcement Rules, the State Intellectual Property Office is refocusing attention on the role of administrative authorities in combating intellectual property infringements.

Administrative Enforcement in Patent Disputes

Where compensation is not of an immediate concern in a patent dispute, a complaint with the local Intellectual Property Office (IPO) can be an efficient and effective approach to tackle a patent infringement. Preliminary evidence is often sufficient to convince the IPO to open an investigation, and the deadlines for handling and dealing with claims (see below) ensure a swift resolution of the case. While compensation cannot be obtained directly from an administrative action, it will serve to put considerable pressure on an infringer to cease infringements, at a relatively low cost. Preparing submissions, liaising with the IPO and attending hearing(s) still takes time and efforts, but generally much less than is needed to prepare for and engaging in patent civil litigation.

Moreover, an administrative procedure can help to overcome arguably the two biggest challenges to a successful civil lawsuit: proving the infringement and collecting sufficient evidence to support a claim for compensation. Administrative actions and civil lawsuits cannot be conducted simultaneously: the IPO will terminate the case immediately once a civil claim is filed concerning the same suspected infringements. However, patent holders can choose to first instigate an administrative action, and upon receiving a successful decision, pursue the infringer for compensation in a civil lawsuit.

In China's civil court system, the claimant should provide evidence to prove the infringement and consequential damages, but Chinese courts do have the authority and means to preserve evidence. Practice shows, however, that it is not so easy to persuade courts to do so. In any case the claimant will be asked to point the court to this evidence, and will likely be asked to deposit a substantial guarantee to cover potential damages if the preservation is later proven unjust.

vIn an administrative action however, the IPO will much more readily acquiesce to a patent holder's request to conduct an on-site investigation and collect evidence, based on preliminary evidence only and without the need to provide monetary guarantees. The Patent Administrative Enforcement Rules specifically give the IPO the authority to investigate infringements and collect evidence, though with one caveat: the IPO has not (yet) received the tools to compulsory enforce its will. This means that a suspected infringer can refuse a request from the IPO, though in practice many Chinese companies will be sufficiently pressured to cooperate with an investigation. Any evidence that the IPO can collect, including samples of infringing products and a record on the number of infringing products, can be used in a civil action after the administrative case has been completed or cancelled.

Procedures for Administrative Enforcement of Patent Rights

The Patent Administrative Enforcement Rules, adopted by the State Intellectual Property Office on 29 December 2010 and in force as of 1 February 2011, provide further clarity and detail on the procedures that the IPO follows when receiving complaints from a patent holder or an interested party, such as the licensee under a recorded patent licensing contract. We list the most important provisions:

  • Materials to Apply for Administrative Enforcement
    1. Evidence of the applicant's identity, such as the individual's ID card or the company's business license and proof of identity for its legal representative. Although the Rules are not specific on this point, most IPO's require the materials of a foreign company applicant to be notarized abroad and legalized by the local Chinese embassy.
    2. Evidence of patent validity, such as an extract form the Patent Registry (issued by the SIPO with all information of the patent) or the original patent certificate, and a receipt for the payment of the patent annual fee.
    3. Application, which includes (i) relevant information on the applicant and its agents, and the suspected infringer; (2) the claim; (3) relevant facts and arguments. The request shall be signed or sealed by the applicant.
    4. Where the patent infringement involves a utility model patent or design patent, the IPO may require an evaluation report of the patent made by the State Intellectual Property Office.
  • Enforcement Procedures & Deadlines
    1. Filing: the IPO will decide within 5 working days upon receipt of the application whether or not to accept the case.
    2. Delivery: the IPO will deliver the application and other materials submitted by the applicant to the accused infringer within 5 working days from acceptance of the case.
    3. Response: the accused infringer must submit a response within 15 days from receiving the delivered materials. The IPO will forward this reply to the applicant within 5 working days. If no response is received from the accused infringer, the case will proceed.
    4. Oral hearing: the IPO may decide, on a case by case basis, to organize an oral hearing, in which case it shall notify the parties on the time and place of such hearing at least 3 working days in advance. If the applicant fails to participate without justified reason, the case will be dismissed. If the respondent fails to participate, a decision will be made in its absence.
    5. Completion: a patent infringement dispute should be closed within 4 months as of the date of filing; particularly complex cases can be extended by 1 month, excluding the time for notice processing, appraisal of the infringing product, or suspension of the action (e.g. when awaiting a decision on the patent invalidity case).
  • Investigation and Evidence Collection
    1. The IPO may decide whether or not to investigate and collect relevant evidence at the request of the parties, but may also investigate and collect evidence ex officio.
    2. When investigating and collecting evidence, the IPO may consult and copy contracts, accounting books and other relevant documents related to the case; interrogate the parties and witnesses; use measurements, photographs, video, etc. during on-site inspection. If the IPO suspects the infringement of a process patents, it may require the party under investigation to conduct a live demonstration.
    3. The IPO may collect evidence of infringing samples adopting a sampling forensics methodology. For product patents, it may extract part of an infringing product as sample; for process patents, it may extract part of the product directly obtained using the method as a sample. The number of samples taken should be limited to that necessary to prove the facts.
  • Measures to Stop the Infringement
    1. Manufacture: Where the infringer manufactures product infringing a patent, the IPO can order it to immediately stop the manufacturing, destroy the equipment and moulds used for the infringement, and refrain from selling or use unsold products or put infringing products on the market in any other form.
    2. Use: Where the infringer uses a patented process, the IPO can order it to immediately stop using the process, destroy any special equipment and the moulds used for implementing the process, and refrain from selling or using unsold products directly obtained from the process or put such products on the market in any other form.
    3. Sale: Where the infringer sells infringing products or products directly obtained from a patented process, the IPO may order it to immediately stop selling the product, and refrain from using the unsold infringing products, or to put such products on the market in any other form.
    4. Offer of sale: Where the infringer offers to sell infringing product or products directly obtained from patented process, the IPO may order it to immediately stop offering to sell the products, eliminate the effects, and refrain from engaging in any further sales activities.
    5. Import: Where the infringer imports infringing products or products directly obtained from a patented process, the IPO may order it to immediately stop such action. If the infringing products have already passé through Customs, it shall not sell, use the infringing products or put them on market in any other form. If the infringing products are still under control of Customs, the decision shall be reported to the Customs for their further handling.
  • Implementation of Decision
    1. When the IPO confirms the patent infringement and issues an injunction, if the infringer appeals the decision to a People's Court, the implementation of the IPO's decision will not be suspended during the appeal proceedings.
    2. If the infringer neither files an appeal nor ceases its infringement, the IPO may apply to the court for mandatory enforcement of the administrative decision.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Maarten Roos
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Mondaq Advice Centre (MACs)
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.