The State Intellectual Property Office (SIPO), the predecessor of China’s National Intellectual Property Administration (CNIPA) released in 2010 and amended in 2015 the Measures for Patent Administrative Enforcement, which provides in Article 5 that the SIPO is competent to organize the enforcement of patent infringement disputes and patent counterfeiting cases that have significant impact, if necessary, and coordinate the enforcement of major cases where the act of tort occurs in multiple provinces, autonomous regions or municipalities directly under the central government. In other words, all patent infringement disputes were to be adjudicated by local IPOs. The SIPO only intervened in case of major cases or cases involving multiple administrative divisions and the intervention was confined to organization and coordination of enforcement actions.

The 2020 Patent Law vests more power in the CNIPA by introducing in paragraph 1, Article 70 of the new law a provision prescribing that “at the request of the patentee or stakeholders, the CNIPA may handle patent infringement disputes of significant national impact”. On 26 May 2021, the CNIPA releases the Measures for Administrative Adjudication of Major Patent Infringement Disputes (the 2021 Measures), which comes into effect as of 1 June 2021.

Article 3 of the 2021 Measures defines major patent infringement disputes as in case of any of the following circumstances:

1)       involving major public interests;

2)       seriously impacting the development of the industry;

3)       major cases involving cross-provincial administrative regions; or

4)       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 disputes as provided in Article 3, the following conditions need to be met:

1)       such a request is filed by the patentee or a party having a stake in the dispute;

2)       a specific respondent is named in the request;

3)       the request lists specific claims, facts and grounds; and

4)       the court has yet docketed the said patent infringement dispute.

Patentee or stakeholder filing request for the adjudication of major patent infringement dispute is obligated to submit petition, evidentiary material as well as proper documentations issued by the patent administrative department of the province, autonomous region, or municipality where the respondent is located or where the infringement is committed to corroborate that the case falls under circumstances as enumerated in Article 3. (Article 5)

Once docketed by the CNIPA, the case is to be concluded within 3 months from the date of docketing. An extra month may be allowed in case that complicity or other circumstances of the case merits an extension. A reasonable extension may be further granted, should the CNIPA find that the case is extreme complicated or there are other peculiar circumstances insofar as the case cannot be concluded within 4 months. (Article 22)

Where patent infringement is established, the CNIPA shall order the immediate cessation of the infringement, notify competent authorities and the relevant departments of the local government for their timely assistance and cooperation in stopping the infringement. The CNIPA’s administrative decision may be appealed before the court within 15 days from the date of receiving such decision. (Article 23)

Mediation remains a viable option in settling patent 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, though the 2021 Measures per se does not touch the issue of damages, in principle, patentees or stakeholders could still cite Article 22.3 of the 2015 Measures and raise damages claim during the process of mediation. Without further details, mediation of damages will remain opaque in practice.

Co-authored by Huimin Qin & Nan Jiang