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 operations.
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 Authorities
- 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 interest.
- 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 parties' wishes.
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 administrative review.
- 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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