China: Patent Litigation In China (I)

Last Updated: 10 January 2017
Article by Chuanhong Long and Guoxu Yang

1. Types of Intellectual Property Rights & Granting Procedure

1.1Types of Intellectual Property Rights

The Chinese legal system provides patent protection for inventions.There are three types of patents under Patent Law, namely a patent for an invention, a patent for a utility model and a patent for a design. Inventions could also be protectable as trade secrets under the Chinese legal system. Indeed, before the inventor or other relevant applicant files a patent application regarding an invention, the invention should be kept as a trade secret to meet the novelty requirement under Patent Law. Alternatively, some inventions may be suitable for keeping a trade secret rather than being protected as a patent because a trade secret can be protected indefinitely as long as it can be kept secret, whereas a patent has a limited term of protection. Patent rights and trade secrets are both based on statutory law in the Chinese legal system.

1.2Grant Procedure

Patent for invention

After a patent application for an invention has been filed with the Intellectual Property Office, it is published promptly after 18 months counting from the filing date (or priority date, if any). The applicant may request substantive examination within three years of the filing date (or priority date, if any) so that the patent application for the invention may enter into a substantive examination phase. After the substantive examination, if it meets the novelty and inventiveness requirements and other requirements for formalities under Chinese Patent Law and its Implementing Regulations, a patent right will be granted and published in the official gazette. The patent application is required to be amended through one or more official actions. If the problem cannot be overcome by means of such amendments, the patent application may ultimately be rejected.

Patent for utility model and design After a patent application for a utility model or design has been filed with the Intellectual Property Office, it only checks the formality requirements under Chinese Patent Law and there is no substantive examination thereof. The patent for a utility model or design may be granted and published in the official gazette if the formality requirements are met. Amendments should be notified to the Intellectual Property Office.

Trade secret

A trade secret arises automatically without the need for any grant procedure as long as it has specific economic value and is not known to the public. In addition, reasonable security measures must be taken to ensure that the trade secret remains confidential.

1.3Timeline for Grant Procedure

The average granting procedure typically lasts two to three years for a patent for an invention, and six to 12 months for a patent for a utility model or design. The applicant does not need a representative, eg a (patent) attorney, before the Intellectual Property Office to initiate grant proceedings if the applicant is a Chinese individual or entity. The applicant does need a representative before the Intellectual Property Office to initiate grant proceedings if the applicant is a foreigner. The nationality or residency of inventors is irrelevant to this issue. The average cost to grant covering all official fees, attorney fees and possible translation fees is approximately CNY25,000 to CNY35,000 for patent for an invention, about CNY15,000 for patent for a utility model and about CNY7,500 for a design.

1.4Term of Each Intellectual Property Right

For the patent for an invention, the protection term is 20 years from the filing date before the Intellectual Property Office, while that for a patent for a utility model and design is ten years. For a trade secret, the protection term is as long as it can be kept confidential.

1.5 Rights and Obligations of Owner of Intellectual Property Right

Typically, an IP right includes patents, trademarks, copyrights and trade secrets in China. The owner of an IP right is entitled to seek a preliminary/interim injunction, a permanent injunction and damages. The owner of an IP right other than a trade secret is obliged to pay annual fees or renewal fees. The owner of a trade secret is obliged to take reasonable measures to keep the trade secret confidential in order to qualify as a trade secret and be protected.

1.6Further Protection After Lapse of Maximum Term

There is no further protection for technical IP rights after their maximum term has lapsed. However, if the technical IP enjoys another form of IP protection at the same time, such as a design patent, it may also enjoy copyright protection, so the copyright protection may still continue even if the maximum term for the design patent has lapsed.

1.7Third Party Rights to Participate in Grant Proceedings

Third parties have the right to participate during grant proceedings, eg the third parties may file third-party observations with the Intellectual Property Office during the examination procedure of a patent application. The examiner may consider the observation and accept the opinion and prior art references if deem fit. However, since the procedure is an ex parte procedure, the examiner will not give any feedback regarding the observations. The third-party observation should be filed as early as possible so that the examiner has a chance to consider it before they decide to grant the patent.

1.8 Remedies Against Refusal to Grant Intellectual Property Right

If the Intellectual Property Office refuses to grant a patent right, the applicant may request a re-examination by the Patent Re-examination Board. If the rejection decision is upheld by the Patent Re-examination Board, the applicant may file a lawsuit with the Beijing Intellectual Property Court against the Patent Re-examination Board and the decision of the Beijing Intellectual Property Court may be further appealed to the Beijing High People's Court.

1.9 Consequences of Failure to Pay Annual Fees

Failure to pay the annual fees may result in the abandonment of the patent right and the patent will be terminated by the Intellectual Property Office if the problem is not remedied in a timely manner. The patentee has six months to resume the patent right by making payment of the annual fees. If the annual fees are paid within one month of the expiry of the term, no late fees are required. If the annual fees are paid later than this, late fees will be required and will increase on a monthly basis.

2. Initiating a Lawsuit

2.1 Actions Available Against Infringement

In China, at least two kinds of actions are available to the owner of a technical IP right against infringement of that right, that is, judicial action and administrative action.

2.2 Third Party Remedies

To remove the effects of the technical IP right, eg a patent right, any party can request the Patent Re-examination Board to declare the patent right invalid for specific reasons with the necessary supporting evidence. No legal or commercial interest is required.

2.3 Courts with Jurisdiction

For patent matters, the first instance courts are of intermediate level and are specially designated by the Supreme Court. In Beijing, Shanghai and Guangzhou, special Intellectual Property Courts were set up in 2014 and exclusively receive patent matters in those areas. The second court would be the higher court over these intermediate courts. There is no third-instance court, but if the parties disagree with the second court decision, they may file a retrial with the Supreme Court. For a patent infringement dispute, the courts where the defendant is located or where the infringement takes place have the jurisdiction to receive the case for the first instance. A patentee or an interested person may also sue the manufacturer of the infringing product at the court where the seller is located or where the selling/offer for sale takes place by adding the seller as a co-defendant.

2.4 Prerequisites to Filing a Lawsuit

There are no prerequisites to file a lawsuit, such as issuing a formal demand letter, warning letters, engaging in mediation, etc in China.

2.5 Legal Representation

There is no need to be represented by a lawyer for the parties in an IP dispute before Chinese courts. However, if the party is a foreigner or foreign company and wishes to be represented by a lawyer, they must be represented by a Chinese lawyer, according to Chinese law.

2.6 Interim Injunctions

Interim injunctions are available in China. Generally, the following conditions should be met so that an interim injunction may be granted by the court:

  • high likelihood of infringement;
  • validity of patent right;
  • irreparable losses caused if interim injunctions are not granted;
  • whether the interim injunctions would be harmful to the public interests;
  • whether the applicant provides a bond. The bond will be used to compensate the losses for the suspect infringer due to the cessation of relative acts under the interim injunction, if the application for an interim injunction is found to be wrong, for example the patent is invalidated or no infringement is found.

2.7 Protection for Potential Opponents

The potential opponent can normally do nothing to stop the granting of an interim injunction. The potential opponent may request re-examination of the grant of interim injunction but cannot stop the execution of the interim injunction. However, in certain cases, at the discretion of the court, the court may invite the potential opponent to discuss the matter in order to investigate whether the conditions have been met in granting the interim injunction. Under such circumstance, the potential opponent may have a chance to raise counterarguments as to why an interim injunction should not be granted.

2.8 Special Limitation Provisions

A statutory limitation of action may apply in IP matters. The right holder will be required to enforce their patent right within two years from the time they knew or should have known of the infringement. Otherwise, they will not win the case because of the statutory limitation. However, if the infringement continues, the right holder is entitled to request that the infringer stop the infringement without the two-year limitation, but may only collect damages for two years before filing the lawsuit.

2.9 Mechanisms to Obtain Evidence and Information

It is a normal principle that it is the party who makes the claim who carries the burden of proof. In a patent infringement proceeding, the plaintiff has to prove the infringement. The only exception is that, if the patent concerned is a method patent for producing a new product, the burden of proof is transferred to the other party, ie the other party has the obligation to prove that they are actually using a method different from the patented method. Even under these circumstances, the plaintiff still bears the burden to prove that the product is new and that the alleged infringing product is the same as the product made by the patented method. For information processed by a third party, such as a government department or an authority, which is difficult to be obtained by the party, the party may request the court to obtain the information according to Civil Procedure Law. Recently, the burden of proof rule has been under review, and the defendant is also required to provide evidence if the plaintiff has tried his best to provide specific evidence. Otherwise, the defendant bears the unfavourable consequences. For example, according to the newly issued Supreme People's Court interpretation of patent infringement issues, where the actual loss of the patent holder due to infringement is difficult to determine, the People's Court should request that the patent holder provide evidence to prove the benefit obtained by the infringer as a result of the infringement according to the provision of Article 65(1) of Chinese Patent Law. Whilst the patent holder has provided initial evidence regarding the benefit obtained by the infringer, but the accounts and materials relating to the infringing acts are under the control of the infringers, the people's court may order the infringers to surrender the accounts and materials. Where the infringer refuses to surrender without cogent reason or delivers forged accounts and materials, the people's court may determine the benefit obtained by the infringer as a result of the infringement by reference to the patent holder's claim and the evidence as submitted.

2.10 Initial Pleading Standards

According to Article 119 of Civil Procedure Law, an action to be instituted must meet all of the following conditions:

  • the plaintiff is a citizen, legal person or any other organisation with a direct interest in the case.
  • there is a clear defendant.
  • there are specific claims, facts and reasons.
  • the case is within the scope of civil actions accepted by the people's court and under the jurisdiction of the people's court in which the action is instituted.

There are no special provisions for lawsuits in IP proceedings that differ from non-IP proceedings. It is generally possible to supplement pleadings with additional arguments before the expiry of the term of evidence submission. The limitation may not apply if the nature of the legal relationship claimed by the party or the effectiveness of a civil action is not identical to the conclusion of the people's court according to the facts of the case. In such a situation, the people's court should request the party to modify the pleadings.

2.11 Representative or Collective Action

The legal system in China permits representative or collective actions for general civil proceedings. According to Article 54 of the Civil Procedure Law, where the subject matter of an action for each party is of the same kind, and the parties on one side of an action are numerous, but the exact number of such parties is uncertain at the time when the action is instituted, the people's court may publish a notice to describe the case and claims and notify right-holders to register with the people's court within a certain period of time.

The right holders who have registered with the people's court may recommend a representative or representatives to participate in the litigation; if no representative is recommended, the people's court may appoint a representative or representatives in consultation with the right holders who have registered with the people's court. The litigation conduct of those representatives will bind all the parties represented. However, to modify or relinquish any claims, admit any claims of the opposing party or reach a settlement, the representatives must obtain consent from the parties represented.

The judgment or ruling issued by the people's court will bind all right holders who have registered with the people's court. This judgment or ruling will also apply to actions instituted during the time limitation by rights holders who have not registered with the people's court. However, since the nature of IP rights proceedings may be different from a general civil case, such as a health damage case, due to product quality, or environment pollution etc, representative or collective actions seldom apply to IP rights proceedings.

2.12 Restrictions on Assertion of Intellectual Property Right

Restrictions may apply if the patentee acquires the patent right maliciously and enforces the patent right. The actions of the patentee may constitute abuse of the patent right and may not be supported by the people's court. Acquiring the patent right maliciously means that the individual concerned was well aware that the invention or creation should not be granted a patent right, and had acquired the patent right by evading the law or unjustified means in order to acquire unjustified interest or restrain the justified exploitation of others.

The following can be determined as malicious:

  • a patent application has been filed for the technical standards, such as the national or industry standard, already existing before the date of filing and acquisition of the patent right.
  • a patent application has been filed for a product obviously widely manufactured or used in a certain area and acquired the patent right.

In addition, an injunction may not be allowed by the people's court if granting the injunction harms the public interest, but the infringer should pay reasonable royalty fees.

The right to seek an injunction may also be restricted if the patent relates to a standard essential patent and the patentee refuses to grant a licence under a fair, reasonable and non-discriminatory terms (FRAND) principle as they had promised to do.

3. Infringement

3.1 Necessary Parties to an Action for Infringement

The qualified party to an action for infringement should be the patentee or the interested person. The interested person could be a licensee or the successor of the patentee. Depending on the type of the licence agreement, the licensee may take the action of infringement independently or jointly with the patentee or based on the special authorisation of the patentee:

  • a sole licensee has the right to take an action for infringement in his or her own name without the involvement of the patentee. A sole licence means only the licensee has the right to implement the patent; even the patentee may not implement the patent.
  • . an exclusive licensee may take the action of infringement authorisation of the patentee:
  • a sole licensee has the right to take an action for infringement in his or her own name without the involvement of the patentee. A sole licence means only the licensee has the right to implement the patent; even the patentee may not implement the patent.
  • an exclusive licensee may take the action of infringement together with the patentee or take the action of infringement alone if the patentee abandons their right to take the action. The exclusive licensee means both the licensee and the patentee have the right to implement the patent.
  • a non-exclusive licensee may take the action of infringement with the special authorisation of the patentee.

3.2 Direct and Indirect Infringement

Direct infringement and indirect infringement are different in this patent practice. Direct infringement is established if all the features in a patent claim (product or method) are found in the alleged infringing product or method and are implemented by a single party. The single party is the direct infringer. Currently, indirect infringement is officially referred to as joint infringement in China. Typical indirect infringements include:

  • anyone who, despite being aware that the product in question is the material, equipment, component, ietc particularly adapted for use in exploiting a patent, provides that product to another person who conducts the act of infringement on the patent right for production and business purposes;
  • anyone who, despite being aware that the product or process in question is a patented product or patented process, actively induces others to conduct the act of infringement on the patent right for production and business purposes;
  • the parties produce the components of an infringing product and the parties have division and co-operation of labour, etc. For direct infringement, the right holder may take action of infringement against the direct infringer to seek both an interim injunction and a permanent injunction and damages. For indirect infringement, the right holder should bring an action of infringement against all the infringers who constitute the joint infringement, not only against some of the joint infringers. Each of the joint infringers should be liable for paying damages and joint liabilities.

3.3 Scope of Protection for an Intellectual Property Right

According to Article 59 of the Chinese Patent Law, the scope of protection of the patent right for an invention or utility model will be determined by the terms of the claims. The description and the appended drawings may be used to interpret the claims. The scope of protection of the patent right for design will be determined by the product incorporating the patented design as shown in the drawings or photographs.

In determining the scope of protection of a claim, the court may apply all elements of principle: PHE principle, doctrine of equivalent principle, donation principle etc.

3.4 Defences Against Infringement

In a patent infringement proceeding, there are usually the following defences against infringement:

  • non-infringement defence;
  • prior-use right defence;
  • prior art defence;
  • patent exhaustion defence;
  • Bolar exception defence;
  • non-production and business purpose defence;
  • contract defence.

3.5 Role of Experts

Experts may act as witnesses to verify certain facts. The experts may also provide assistance to the parties. The roles of the experts in these two situations are different. When an expert acts as a witness to certain facts, they are independent so that their opinion can be treated as a piece of evidence. The expert assistant to a party must give the opinion based on their understanding and knowledge of certain technical issues. However, the expert assistant will usually hold the same opinion as the party they represent.

3.6 Procedure for Construing the Terms of the Patent's Claims

In China, there is no separate procedure for the construing of the terms of the patent's claims.

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.

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