Most Read Contributor in Hong Kong, September 2016
Originally published 30 September 2010
Keywords: State Intellectual Property Office,
PRC, SIPO, patent law, rules
The State Intellectual Property Office of the PRC (SIPO)
recently published its draft amendments to the Patent
Administrative Enforcement Rules (Rules) in an attempt to enhance
patent administrative enforcement in the PRC and bring it in line
with the revised Patent Law and Patent Implementation Rules.
Patents in the PRC can be enforced via judicial courts or
administrative authorities. The SIPO is responsible for overseeing
the administrative enforcement of patents. The SIPO formulated the
Rules in 2001 as departmental measures for local patent
administrative authorities to observe in their daily
In September 2010, the SIPO published its draft amendments to
the Rules for public consultation. The key objective is to bring
the Rules up to date in light of the relevant changes to the Patent
Law and Patent Implementation Rules, and to address practical
issues arising from day-to-day experience which are not fully dealt
with in the current Rules.
As a whole, the draft amendments are not controversial as they
focus more on procedural rather than substantive matters. The main
draft changes are summarised below. It remains to be seen whether
these proposed changes to the Rules would bring about a more robust
enforcement by the administrative authorities who are often seen as
playing a conciliatory role in patent disputes.
Allocation of Duties Among the SIPO and Local
To ease the burden of provincial and municipal enforcement
authorities, the draft Rules expressly allow delegation to county
authorities. The ultimate responsibility however remains vested in
the delegating authorities.
At the same time, the SIPO recognises it is the best equipped
body to guide and support local enforcement. The SIPO therefore
proposes that cases having a material impact on the whole country
or involving more than one province or municipality can be referred
to the SIPO for handling.
Elaborating on the Enforcement Procedures
The SIPO seeks to codify the following matters in the Rules to
enhance procedural propriety:
Officers must recuse themselves in cases of conflict of
Complainants (individuals and corporations) must submit proper
proofs of identity and valid patent rights.
For cases involving utility models or design patents, the
complainant may be asked to provide a patent evaluation report
issued by the SIPO.
Complainants bear the burden to prove their case.
If it is objectively not possible for the complainant to
collect evidence by itself, the complainant may ask the authority
to do so.
The authority may mediate a dispute according to the
Seizure and Investigation
When exercising its power of seizure, the authority must notify
the affected party in writing of the right to apply for an
The authority must prepare a list of seized goods at the spot
to be verified by the affected party.
Before making any decision which involves a relatively
significant fine, the authority must notify the affected party of
its right to request an oral hearing.
The authority must not increase the penalty merely because the
affected party chooses to defend its case.
The authority must complete a case within three months after
its filing. For very complicated cases, the head of the authority
may approve an extension of time.
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and/or Mayer Brown LLP. All rights reserved. Mayer Brown is a
global legal services organization comprising legal practices that
are separate entities ("Mayer Brown Practices"). The
Mayer Brown Practices are: JSM, a Hong Kong partnership, and its
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limited liability partnership incorporated in England and Wales;
and Mayer Brown LLP, a limited liability partnership established in
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Brown JSM in Asia.
This article provides information and comments on legal
issues and developments of interest. The foregoing is not a
comprehensive treatment of the subject matter covered and is not
intended to provide legal advice. Readers should seek specific
legal advice before taking any action with respect to the matters
discussed herein. Please also read the JSM legal publications Disclaimer.
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