Outline of the Chinese Patent System
Patent Administration Authority
What Are the Requirements for Grant of an Invention or Utility Model Patent
Inventiveness (Nonobviousness)
What Are the Requirements for Grant of a Design Patent
Disclosure without Losing Novelty
Filing Requirements for Invention Patent or Utility Model
Filing Requirements for Design Patent
Filing Requirements for PCT National Phase in China
Requesting Substantive Examination
Withdrawing a patent application
Allowance and Issuance of Patent
Reexamination (Appeal to the Patent Reexamination Board)
Patent Law of the People's Republic of China was adopted on March 12, 1984, effective on April 1, 1985. First Amendment was adopted on September 4, 1992, and effective on January 1, 1993. Second Amendment was adopted on August 25, 2000, and effective on July 1, 2001. Third Amendment was adopted on December 27, 2008 and effective on October 1, 2009.
Implementing Regulations to the Patent Law entered into force on April 1, 1985, its first amendment effective on January 1, 1993, the second amendment effective on July 1, 2001, and the third amendment effective on February 1, 2003.
China became a member of Convention Establishing the World Intellectual Property Organization in 1980, the Paris Convention in 1985, Treaty on Intellectual Property in Respect of Integrated Circuits in1990, Patent Cooperation Treaty in 1994, Budapest Treaty in 1995, Locarno Agreement in 1996, Strasbourg Agreement in 1997, International Convention for the Protection of New Varieties of Plants (UPOV) in 1999, and WTO in 2001.
Patent Administration Authority
The State Intellectual Property Office of China is responsible for the patent administration throughout the country. It receives and examines patent applications and grants patent rights.
Patent Reexamination Board was set up under the State Intellectual Property Office and responsible for receiving and examining the requests for reexamination of patent applications and declaring invalidation of patents.
The administrative authority for patent affairs under the people's governments of provinces, autonomous regions, municipalities and other cities approved by Government are responsible for the administrative work concerning patents in their respective administrative areas.
There are three types of patents: Patent for Invention, Patent for Utility Model, and Patent for Design.
Invention means any new technical solution relating to a product, a process or improvement thereof.
Utility model means any new technical solution relating to the shape, the structure, or their combination, of a product, which is fit for practical use.
Design means any new design on the shape, the pattern or their combination, or the combination of the color with shape or pattern, of a product, which creates an aesthetic feeling and is fit for industrial application.
The patentee has the right to prevent others from making, using, offering to sell, selling or importing the patented product, or using the patented process, and using, offering to sell, selling or importing the product directly obtained by the patented process, for production or business purposes, without its or his permission, except where otherwise provided for in the Chinese Patent Law.
The patentee has the right to prevent any other person from making, offering to sell, selling or importing the product incorporating its or his patented design, for production or business purposes, without its or his permission.
Where the patent rights to a patent or rights to apply for a patent are jointly owned, the exploitation of such rights shall be governed by the agreement between the joint owners. If the joint owners have not entered into any agreement regarding such an exploitation, each joint owner shall be able to exploit itself or to grant to a third party a general license of the patent, and the royalties therefrom should be distributedbetween the joint owners. However for exercising any other rights, such as assigning, abandoning, exclusive licensing, one joint owner shall obtain approval of all other joint owners.
The duration of patent right for inventions is twenty years, the duration of patent right for utility models and patent right for designs is ten years, counted from the date of filing.
An entity may apply for a patent for invention, utility model or design created by its employee(s) in execution of the tasks of the entity or mainly by using the material and technical means of the entity, which is called service invention-creation. The inventor is entitled to be named in the patent application.
In respect of an invention-creation made by an entity's employee(s) using the material and technical means of the entity, if the entity and the inventor or designor have entered into any agreement regarding the right for applying a patent and patent rights, such an agreement should apply.
For a non-service invention-creation, the inventor or creator may apply for a patent.
In respect of an invention-creation jointly made by two or more entities or individuals, or made by an entity or individual in execution of a commission given to it or him by another entity or individual, the right to apply for a patent and patent rights belong, unless otherwise agreed upon, to the entity or individual that made, or to the entities or individuals that jointly made, the invention-creation.
Nonresident citizens of foreign countries and foreign enterprises may apply on the basis of reciprocity, a bilateral treaty between China and the applicant's country, or an international treaty to which both countries adhere.
Where any entity or individual intends to file an application in a foreign country for an invention patent or utility model patent made in China, it or he must, before filing its or his application in other countries, go through a secrecy review held by the State IP Office of China. If filing applications in other countries without undergoing the secrecy review, its/his corresponding Chinese application will not be granted patent rights.
Where two or more applicants file applications for patent for the identical invention-creation, the patent right is granted to the applicant whose application was filed first.
For any identical invention-creation, only one patent right shall be granted. Where one applicant files, on the same day, applications for both patent of utility model and patent of invention for the identical invention-creation, the invention-creation may be granted patent right of invention if the applicant declares to abandon the patent right of utility model which has been granted earlier and has not terminated at that time.
No patent right shall be granted for the following matters:
any invention that is contrary to laws or social morality, or that is detrimental to public interest;
any invention made relying on genetic resources and acquisition or use of the genetic resources violates any relevant laws and regulations in China;
scientific discoveries;
rules and methods for mental activities;
methods for the diagnosis or treatment of diseases;
animal and plant varieties; and
substances obtained by nuclear transformation.
designs about patterns, colors or combination thereof on ichnographic prints, mainly for identifying.
The processes used in producing products referred to animal and plant varieties may be patentable.
What Are the Requirements for Grant of an Invention or Utiltlity Model Patent
Any invention or utility model for which patent right may be granted must possess novelty, inventiveness, and practical applicability.
For any invention-creation made relying on genetic resources, the applicant must disclose the direct source and the original source of the genetic resources in the application. An explanation must be included if the applicant is unable to provide the source of the genetic resources.
An invention or utility model possesses novelty if, before the date of filing,
-- no identical invention or utility model is an existing technology, that is publicly known in China or abroad, before the date of filing,
-- nor has any entity or individual filed, before the date of filing, with the Patent Administration Department under the State Council an application which described the identical invention or utility model and was not recorded in any publicly disclosed patent application document or publicly announced patent document after the date of filing.
Inventiveness (Non-obviousness)
An invention possesses inventiveness if, as compared with the technology publicly known in China or abroad before the date of filing, the invention has prominent substantive features and represents a notable progress; and a utility model possesses inventiveness if it has substantive features and represents progress.
An invention or utility possesses practical applicability if the invention or utility model can be made or used in industry and can produce effective results.
What Are the Requirements for Grant of a Design Patent
Any design for which patent right may be granted must possess novelty, nonobviousness and industrial applicability, and must not be in conflict with any legal rights of any other person obtained prior to the filing date.
Novelty
A design possesses novelty if, before the date of filing,
- no identical design is be an existing design, that is publicly known in China or abroad, before the date of filing,
- nor has any entity or individual filed, before the date of filing, with the Patent Administration Department under the State Council an application which described the identical design and was not recorded in any patent document published after the date of filing.
Nonobviousness
A design possesses nonobviousness if, as compared with existing designs or the combination of characteristics of existing designs before the date of filing, the design has obvious distinction.
The existing design means designs publicly known in China or abroad before the date of filing.
Disclosure without Losing Novelty
An invention-creation for which a patent is applied for does not lose its novelty where, within six months before the date of filing, the invention-creation was
--- first exhibited at an international exhibition sponsored or recognized by the Chinese Government,
--- first disclosed at an academic or technological meeting organized by a competent department concerned of the State Council or by a national academic or technological association, or
--- disclosed without the consent of the applicant.
The applicant(s) must make a declaration of exhibition or disclosure when filing the patent application, and submit a certificate issued by the exhibitor or the organizer of the meeting, stating the fact that the invention-creation was displayed or disclosed and the date of its exhibition or disclosure within two months from the filing date.
Where, within twelve months from the date on which any applicant first filed in a foreign country an application for a patent for invention or utility model, or within six months from the date on which any applicant first filed in a foreign country an application for a patent for design, he or it files in China an application for a patent for the same subject matter, he or it may enjoy a right of priority in accordance with any international treaty to which both countries are party, or on basis of reciprocity.
To enjoying such a right of priority, the priority must be claimed in the filing request and a certified copy of the application document first filed in a foreign country must be submitted within three months from the Chinese filing date. Such a certified copy is issued by the patent administrative authority in that foreign country and generally can be obtained by filing a request before that authority.
Where, within twelve months from the date on which any applicant first filed an application for a patent for invention or utility model in China, it or he files in China an application for a patent for the same subject matter, it or he may enjoy a right of priority.
Filing Requirements for Invention Patent or Utility Model
1. Name, address and nationality of applicant(s).
2. Name of inventor(s).
3. Type of the application, i.e., a patent for invention, or for utility model
4. Information on priority claimed: the filing date, filing number and the country in which the application was filed (if applicable)
5. Specification:
Description, claims, abstract and drawings (if any, two sets of forma drawings):
6. Executed Power of attorney, which can be submitted later.
7. Original or certified assignment (if applicable), which can be submitted within three months from the Chinese filing date.
8. Certified copy of the prior application (if applicable), which can be submitted within three months from the Chinese filing date.
9. Receipt of Deposit and Viability Proof (if the application concerns a new microorganism, a micro-biological process or a product thereof and involves the use of a micro-organism which is not available to the public), which can be filed within four months from the Chinese filing date.
10. Nucleotide and/or amino acid sequence listing in computer readable form (if applicable).
11. For any invention-creation made relying on genetic resources, the applicant must disclose the direct source and the original source of the genetic resources in the application. An explanation must be included if the applicant is unable to provide the source of the genetic resources.
Filing Requirements for Design Patent
1. Name, address and nationality of applicant(s).
2. Name of designer(s).
3. Information on priority claimed: the filing date, filing number and the country in which the application was filed (if applicable)
4. Specification and Drawings:
Specification: Name, use, and essential part of the design, color to be protected, basic design for corresponding application
Drawings or photographs of the design (min. 3cmx8cm, max. 15cmx22cm)
5. Executed Power of attorney, which can be submitted later.
6. Other documents, such as Receipt of Deposit and Viability Proof, Nucleotide and/or amino acid sequence listing in computer readable form (if applicable).
An application for a patent for design shall be limited to one design. Two or more similar designs for the same product or two or more designs incorporated in products belonging to the same class and are sold or used in sets may be filed as one application.
Filing Requirements for PCT National Phase in China
1. PCT publication with the international search report.
2. International preliminary examination report with its annex (if any).
3. Amendments made during the international phase (PCT Article 19 and/or Article 34 amendments, if any).
4. Proposed amendments at the time of national phase entry (PCT Article 28 or Article 41 amendment, if any).
5. Executed Power of attorney, which can be submitted later.
6. Other documents, such as Receipt of Deposit and Viability Proof, Nucleotide and/or amino acid sequence listing in computer readable form (if applicable).
Patent applications for invention are subject to a preliminary examination followed by a publication promptly after the expiration of 18 months from the filing date, or earlier at applicant's request. The substantive examination proceeds upon the request of the applicant(s) made within three years from the filing date. The patent right is granted if no cause is found for rejecting the application.
Patent application for utility model or design is subject to a preliminary examination. Patent for utility model or design is granted if no cause is found for rejecting the application.
A preliminary examination focuses on whether the formality of a patent application is in conformity with the provisions of the Patent Law or Implementing Regulations to the Patent Law.
An applicant may amend his application for patent for invention on its or his own initiative when requesting examination as to substance, or within the time limit of three months after the receipt of the notification for entry into substantive examination procedure.
An applicant may amend his application for a patent for utility model or design on its or his own initiative within two months from the date of filing.
Where the applicant amends the application after receiving the Office Actions of the examiner, he or it shall make the amendment as required by the examiner.
Any amendment to an application for a patent for invention or utility model may not go beyond the scope of the disclosure recorded in the initial description and claims, for design not go beyond the scope of the disclosure as shown in the initial drawings or photographs.
Promptly after the expiration of 18 months from the priority date, an application for a patent for invention (including the abstract of the specification) is published in the Patent Gazette.
When the Patent Office decides to grant the patent, the applicant will be invited to pay the fees. Upon payment, a certificate will be issued, the patent will be registered and published in the Patent Gazette.
After the publication of the application for a patent for invention, the applicant may require the entity or individual exploiting the invention to pay an appropriate fee, although it or he cannot initiate a lawsuit for award of such an appropriate fee before the grant of patent.
Requesting Substantive Examination
An applicant for a patent for invention shall request Substantive examination within three years from the date of filing (priority date if applicable). If, without any justified reason, the applicant fails to meet the time limit for requesting substantive examination, the application will be deemed to have been withdrawn.
The State Intellectual Property Office may, on its own initiative, proceed substantive examination on any application for a patent for invention when it is necessary.
An applicant for a patent for invention has duty to furnish pre-filing date reference materials concerning the invention, when requesting examination as to substance.
If the applicant has already filed an application for a patent for invention in a foreign country, he or it shall furnish search reports or the results of any examination made in that country, within a specified time limit upon request by the State Intellectual Property Office.
Withdrawing a patent application
An applicant may withdraw his or its application for a patent at any time before the patent right is granted.
Within two months from the date of filing, if the applicant fails to pay official fees including application fee, publication fee and additional fees, the application will be deemed to have been withdrawn.
Within three years from the date of filing (priority date if applicable), if, without any justified reason, the applicant fails to request substantive examination and pay official fees, the application will be deemed to have been withdrawn.
Upon request by the State Intellectual Property Office, if, within a specified time limit, the applicant fails to furnish search reports or the results of any examination made in a foreign country, the application will be deemed to have been withdrawn.
Within the specified time limit, if, without any justified reason, the applicant fails to respond to any of office actions or related notifications, the application will be deemed to have been withdrawn.
Allowance and Issuance of Patent
If upon examination it is found that there is no cause for rejection of the application for a patent, the State Intellectual Property Office will issue a notice of allowance, calling for the payment of the issue fee within two months from the date of receiving the allowance.
The patent will be issued, registered and announced after the State Intellectual Property Office receives the payment.
The patent right for invention will take effect as of the date of the announcement.
Reexamination (Appeal to the Patent Reexamination Board)
If an applicant for patent is not satisfied with the decision of the examiner of the State Intellectual Property Office rejecting the application, the applicant may, within three months from the date of receipt of the notification, request the Patent Reexamination Board to make a reexamination.
If the applicant files a request for reexamination, an appeal brief must be filed with the request. After the appeal brief has been filed, the Board will remit the request with the brief to the examiner for examination. Where the examiner revokes his former decision, the Board will make a decision accordingly. Otherwise, the collegial panel of the Board will proceed the examination collegially.
The applicant may amend its or his application at the time when filing the request or making responses to the notification of reexamination of the Board. The amendments, however, shall be limited only to remove the defects pointed out in the examiner's decision, or in the notification of reexamination.
If the applicant is not satisfied with the decision of the Board, it or he may, within three months from the date of receipt of the notification, institute legal proceedings in the people's court.
Any entity or individual may request the Patent Reexamination Board to declare the patent right invalid, if it or he considers that the grant of the patent right is not in conformity with the relevant provisions of the Patent Law.
A request for invalidation must be filed with an appeal brief. After the invalidation request is accepted by the Board, the person making the request is given one month to add reasons or supplement evidence. Additional reasons or evidences which are submitted after this one-month time limit may be disregarded by the Board.
The person making the invalidation request and the patentee may request an oral hearing. When an appeal is set for oral hearing, two parties are given notice of the date and place of the hearing. The parties shall make response to the notice within the specified time limit. Where the person requesting invalidation fails to make response to the notice of the hearing within the specified time limit, and fails to take part in the hearing, the request for invalidation shall be deemed to have been withdrawn. Where the patentee fails to take part in the hearing, the Board may proceed to examine by default.
Any amendment on the claims made in the course of the examination may not change the subject matter, not broaden the scope of patent protection, and not add any technical feature that is not included in the granted claims. No amendment is allowed to make on description or drawings for invention or utility model patent. The amendment should generally be made by deleting or combining any claim or deleting any technical scheme.
No amendment is allowed to make on drawings, photographs or the brief explanation of the design.
If the patentee or the person making the request for invalidation is not satisfied with the decision of the Board declaring the patent right invalid or upholding the patent right, such party may, within three months from receipt of the notification of the decision, institute legal proceedings in the people's court.
Any patent right that has been declared invalid is deemed to be nonexistent from the beginning.
A decision of invalidation has no retroactive effect on any judgment or reconciliation agreement on patent infringement which has been pronounced and enforced by the people's court, on any decision concerning the handling of a dispute over patent infringement which has been complied with or compulsorily executed, or on any contract of patent license or of assignment of patent right which has been performed prior to the declaration of the patent right invalid.
The damage, however, caused to other persons in bad faith on the part of the patentee must be compensated by the patentee.
If not returning the whole or part of the damages for patent infringement, the royalty fee for licensing or the assignment fee is obviously contrary to the principle of equity, the whole or part of the above fees shall be repaid.
Annual fees shall be paid in advance within the month before the expiration of the preceding year. Six months' grace is set for late payment of annuities with fine.
The State Intellectual Property Office may grant a nonexclusive compulsory license to exploit a patent for invention or utility model where:
(1) a national emergency or any extraordinary state of affairs occurs, or if the public interest so requires;
(2) the patentee, without any justified reason, has not exploited or sufficiently exploited the patent within three years from the grant date or four years from the date of filing;
(3) the patentee’s exploitation of the patent is considered to be monopolizing behavior, to eliminate or restrict the bad effect of such behavior on competition.
The Patent Administration Department under the State Council may grant a compulsory license for making and exporting a patented medicine to certain countries and regions for the benefit of public health in accordance with relevant international treaties concerned to which China is party.
The granting of compulsory licensing for patents related to semiconductor technology is only limited for public interest purpose or against monopolization.
Except compulsory licensing against monopolization or for a patented medicine for the benefit of public health, the exploitation of a compulsory license should be mainly for supplying domestic market.
The entity or individual that is granted a compulsory license for exploitation shall pay to the patentee a reasonable exploitation fee, or treat the exploitation fee in accordance with any international treaty concerned to which China is party. Where exploitation fee is to be paid, the amount of exploitation fee shall be fixed by both parties in consultations; where the parties fail to reach an agreement on the amount of the exploitation fee, the State Intellectual Property Office may adjudicate.
If a patentee is not satisfied with the decision of the State Intellectual Property Office granting a compulsory license, or a patentee or compulsory licensee is not satisfied with an adjudication regarding the exploitation fee payable for exploitation, he may, within three months of receipt of notification, institute legal proceedings in the People's Court.
Marking the product or its packaging to indicate the patent protection, together with the patent number, is optional.
If the right to apply for a patent or the patent right is assigned, the parties shall conclude a written contract and register it with the State Intellectual Property Office. The registration will be announced. The assignment shall take effect as of the date of registration.
Any assignment, by a Chinese entity or individual, of the right to apply for a patent, or of the patent right, to a foreigner, foreign enterprise, or other foreign organization, shall be subject to going through proceedings in accordance with provisions of related laws and administrative regulations. Where the patent rights to a patent or rights to apply for a patent are jointly owned, assigning patent or rights to apply for a patent shall be governed by the agreement between the joint owners. If the joint owners have not entered into any agreement regarding such an issue, one joint owner shall obtain approval of all other joint owners for assigning such rights.
Any entity or individua1 exploiting the patent of another shall conclude with the patentee a license contract for exploitation and pay the patentee a fee for the exploitation of the patent. The license contract shall be submitted to the State Intellectual Property Office for the recordation within three months from the date of entry into force of the contract.
Where the patent rights to a patent are jointly owned, granting a license to a third party shall be governed by the agreement between the joint owners. If the joint owners have not entered into any agreement regarding such issue, each joint owner shall be able to grant to a third party a general license of the patent, and the royalties therefrom should be distributed between the joint owners. However for granting a exclusive licensing, one joint owner shall obtain approval of all other joint owners.
Where the patent right is to be pledged, the pledgor and the pledgee shall enter into a written contract, and register the pledge registration in SIPO. The pledge contract shall take effect as of the date of registration.
The patent right shall cease before the expiration of its duration, if an annual fee is not paid as prescribed, or if the patentee abandons his or its patent right by a written declaration.
The scope of protection of the patent right for design is determined by the patented design for the product as shown in the drawings or photographs, and brief specification can be used to explain the patented design for the product represented by the drawings or photographs.
The scope of protection of the patent right for invention or utility model is determined by the terms of the claims. The description and the appended drawings may be used to interpret the contents of claims. The scope determined by the terms of the claims is the scope defined by explicitly stated essential technical features in the claims, as well as the scope defined by the features equivalent to the essential technical features (hereinafter referred to as "equivalent features").
An equivalent feature is a technical feature which performs substantially the same function in substantially the same way to accomplish substantially the same result as the stated technical feature, and which can be conceived by an ordinary person skilled in the art without creative work.
None of the following is deemed an infringement of the patent right:
(l) Where a patented product or a product that was directly obtained by using the patented process, is sold by the patentee or an entity or individual authorized by the patentee, any other person uses, offers to sell, sells or import that product;
(2) Where, before the date of filing of the application for patent, any person who has already made the identical product, used the identical process, or made necessary preparations for its making or using, continues to make or use it within the original scope only;
(3) Where any foreign means of transport which temporarily passes through the territory, territorial waters or territorial airspace of China uses the patent concerned, in accordance with any agreement concluded between the country to which the foreign means of transport belongs and China, or in accordance with any international treaty to which both countries are party, or on the basis of the principle of reciprocity, for its own needs, in its devices and installations;
(4) Where any person uses the patent concerned solely for the purposes of scientific research and experimentation.
(5) Where the making, using and importing of a patented medicine or medical device is for regulatory approval purposes by a party intending to market the product after expiration of the patent.
A patentee may bring an action against an infringer either in the administrative authority for patent affairs or in people's court.
It is the duty of the plaintiff to provide evidence in support of his allegations.
Where any infringement dispute relates to a patent for invention for a process for the manufacture of a new product, any entity or individual manufacturing the identical product shall furnish proof to show that the process used in the manufacture of its or his product is different from the patented process.
Where the infringement dispute relates to a patent for utility model or design, the people's court or the administrative authority for patent affairs may ask the patentee or interested party to furnish an evaluation report on the patent rights made by the State Intellectual Property Office as an evidence during trying such infringement disputes.
Where an alleged infringer in a patent infringement suit can provide evidences to prove that the technology or design it exploits was “existing technology” or “existing design” at the filing date of a patent at issue, no infringement should be decided.
The administrative authority of the place where the requested party has his domicile or the infringement is committed has jurisdiction to preside over an action against an infringer or mediation of a dispute.
The administrative authority for patent affairs may order the cessation of infringing acts. The alleged infringer may, within 15 days from the date of receipt of the notification of such order, institute proceedings in people's Court in accordance with the Administrative Procedure Law. If such proceedings are not begun, and the order is not complied with, the administrative authority for patent affairs may institute proceedings for compulsory execution of the order.
The administrative authority for patent affairs may, upon the request of the parties, mediate in the amount of compensation for the damage caused by the infringement of the patent right. If the mediation fails, the parties may institute legal proceedings in the people's court in accordance with the Civil Procedure Law of the People's Republic of China.
The administrative authority for patent affairs also take charge in handling the passing off.
If any person passes off the patent of a patent, such person shall, in addition to bearing his civil liability, be ordered by the administrative authority for patent affairs to correct it publicly, confiscated his illegal earnings and, in addition, may be imposed a fine of not more than four times the illegal earnings, or if there is no illegal earning, a fine of no more than RMB 200,000.
The administrative authority for patent affairs may, upon acquired evidences for the passing off, while investigating and redressing the passing off, enquire the alleged infringer, investigate the passing off, investigate the field, review and copy the related contracts, invoices, accounting documents and other materials, examine the alleged infringed products, and seal and sequestrate the alleged infringed products.
Where the infringement constitutes a crime, he will be prosecuted for his criminal liability.
A lawsuit brought on a patent infringement shall be under the jurisdiction of the people's court of the place where the defendant has his domicile or the infringement is committed.
The intermediate people's courts have subject matte jurisdiction as courts of first instance over cases arising under the patent law.
The statute of limitations for bringing an infringement action is two years from the date on which the patentee or any interested party obtains or should have obtained knowledge of the infringing act.
If the plaintiff or defendant is not satisfied with the judgment of first instance court, he may appeal to the court at higher level, the court of second instance, within 15 days (or 30 days if the party has no domicile in China) after the date on which the written judgment was served. The judgment that has not been appealed against within such time limit, is legally effective.
The judgment and the written order of the second instance court are final and legally effective.
The court shall suspend the legal proceedings for cases of alleged infringement of patent for utility model or design, if the defendant files a request to the Patent Reexamination Board to declare the patent right invalid within 15 days counted from the date on which a copy of the complaint is served, or 30 days if the defendant has no domicile in China, and may, however, not suspend under the following circumstances:
(1) the search report provided by the plaintiff shows that there is no prior art document destroying novelty or inventiveness of the paten for utility model;
(2) the evidence provided by the defendant is sufficient to prove that the technology used is publicly known; or
(3) the evidence and the reasons provided by the defendant to file the request to declare the patent invalid is obviously insufficient.
The court may not suspend the legal proceedings for cases of alleged infringement of patent for invention and cases for utility model or design on which the Patent Reexamination Board upheld the patent rights, even if the defendant files a request to the Patent Reexamination Board to declare the patent right invalid within the prescribed time limit.
Where the court decides to suspend the legal proceedings, the court may issue an injunction or take other measures to prevent further damages to the interests of the patentee, if the plaintiff submits such request and provides appropriate deposits.
Where any patentee or interested party has evidence to prove that another person is infringing or will soon infringe its or his patent right and that if such infringing act is not injuncted in time, it is likely to cause irreparable harm to it or him, it or he may, before any legal proceedings are instituted, request the people's court to adopt measures for ordering preliminary injunction. The applicant must provide guarantee, and the Court should make the decision within 48 hours generally or delayed another 48 hours for special situations.
If the party concerned is not satisfied with the order made on preliminary injunction, he may apply for reconsideration which could be granted only once. Execution of the order shall not be suspended during the time of reconsideration.
If applicant fails to file a lawsuit within 15 days after the Court has adopted the preliminary injuction meansures, the Court shall cancel the injunction.
If the application for preliminary injuction is wrongfully made, the applicant shall compensate the person against whom the application is made for any loss incurred therefrom.
In order to check infringement on patent right, in case that the evidence may be ruined or inaccessible in future, the patentee or interested party may, before instituting a lawsuit, request evidence preservation before the People’s Court. The applicant may be requested to provide guarantee, and the Court should make the preservation decision within 48 hours.
If applicant fails to file a lawsuit within 15 days after the Court has adopted the evidence preservation meansures, the Court shall cancel the evidence preservation.
Remedies available to the patentee whose patent has been infringed include injunction and damages.
The amount of compensation for the damages is awarded based on actual losses suffered by the patentee when actual losses can be determined. If actual losses cannot be determined, damages are awarded based on profits earned by the infringer. If earned profits cannot be determined, damages are awarded based on a multiple of a licensing fee. If a licensing fee still cannot be determined, the statutory damages are awarded between 10,000 to 1,000,000 RMB.
Damages can include reasonable cost for seeking protection.
Any person who, for production and business purposes, uses, offers for sale or sells a patented product, without knowing that it was made and sold without the authorization of the patentee, shall not be liable to compensate for the damages of the patentee if he can prove that he obtains the product from a legitimate source.
A person counterfeiting the patent of another may, if the circumstances are serious, be sentenced to fixed-term imprisonment of not more than three years or criminal detention and/or be fined.
China prohibits the importation and exportation of goods which infringe intellectual property rights. The Chinese Customs provides protection for intellectual property rights in accordance with the provisions of relevant laws and Regulations.
The holder of an intellectual property right, where requesting the Customs to provide protection for his intellectual property right, shall apply for recording his intellectual property right in the Customs. After receiving the holder’s application for recordal, the Customs will make a decision on whether or not to grant the recordation in writing within 30 working days. The recordal will enter into effect on the date of approval by the General Administration of Customs. The holder shall apply for amending the recordation within 30 days if any change of the holder and his IP right occurs.
After customs recordal is approved, the Customs will monitor initiatively and notify the holder if they discover suspected infringing goods. The holder may request the Customs to detain the goods by application too with depositing a security. Then the holder of patent right may, before any legal proceedings are instituted, request the people's court to adopt measures for ordering preliminary injunctions and evidence preservation. The Customs shall provide assistance when they receive a written petition from the People's Court for assisting to enforce the ruling; otherwise, the Customs shall release the goods.
The recordal shall be valid for ten years, counted from the date of the Customs General Administration's approval of the recordal. Where the intellectual property rights are valid, the right owner may apply for a renewal within six months before the expiration of the recordal. And each renewal is valid for ten years. The recordal shall become invalid if the right owner does not apply for a renewal when it expires or the intellectual property rights are no longer protected by Laws.