1. What could a patentee do if his/her patent
is infringed in China?
If a patent infringement occurs in China, there are usually two separate
options available to the patentee to seek a settlement, i.e., judicial
action and administrative action.
a) Judicial action:
For judicial action, the patentee may file a lawsuit against the infringer
to the court which has the power to handle patent infringement cases.
b) Administrative action
For administrative action, the patentee may also file a petition for
handling the dispute to the local patent administrative authority.
2. What are the differences between judicial action
and administrative action?
For judicial action, the major advantage is that the court has the
power to award damage compensations and the court may have evidence
preservation and property preservation means and may issue preliminary
injunction order upon the request of the patentee. The major disadvantage
is that the judicial action may be expensive and time consuming in
comparison with the administrative action.
For administrative action, the major advantage is that it may be time
efficient and cost effective in comparison with the judicial action.
The disadvantage is that the administrative authority does not have
the power to award the damage compensation to the patentee and the
parties have to go to the court if the alleged infringer does not
agree with the decision of the patent administrative authority.
3. Where to sue?
Up to now, there are about 62 intermediate people's courts in China
having the power to handle patent infringement cases. The jurisdiction
is determined typically by two factors. 1. The location of the defendant.
2. The venue where the infringing activity took place. As a usual
strategy, the plaintiff may select the court which is different from
where the defendant is located to avoid any possible influence of
the defendant. The jurisdiction for administrative action is similar
to that of the judicial action but the case will be handled by local
IP administrative authorities other than court.
4. Who has the burden to prove?
According to the Chinese civil procedure law, it is normally the patentee's
burden to provide evidence to support his claims. For a patent infringement
case, the patentee should submit evidence to prove the existence of
patent infringement. The exception of the above rule of burden of
proof is in the case where the infringement relates to a patent for
a method for manufacturing a new product. Only under this situation,
the burden of proof will be shifted from the patentee to the alleged
infringer. Under such a situation, the alleged infringer shall have
the burden to prove that the method he/she used is different from
the patented method. The evidence requirements for administrative
action are substantially the same as that in the judicial action.
5. How the damage compensations are determined by the court?
In judicial action, the damage compensations may be calculated based
on either of the following factors: 1. the lost profit of the patentee
which was caused by the infringement; 2.the illegal profit gain of
the infringer due to the infringement, 3. multiple times of the license
fee the patent has ever licensed to others, if any. If the amount
of damage could not be clearly calculated by any of the above ways,
a statutory damage up to RMB 500,000 (US$60,000) could be determined
by the court judges based on their discretions.
6. If a preliminary injunction is available?
A preliminary injunction procedure is available to stop the infringement
prior to a court judgment is made or even before a lawsuit is filed
with the court. However, the court is very prudent to issue a preliminary
injunction. As one of the pre-conditions, the patentee must pay a
deposit to the court in case the injunction is mistakenly issued.
In other word, the patentee has the monetary risk if he loses the
patent infringement case later.
7. If a patent application could be protected before it
is granted a patent right?
A patent application for invention may enjoy provisional protection
after it is published, i.e., the applicant is entitled to collect
reasonable fees from anyone who uses or wishes to use the invention
of the patent application. However, the patent applicant can only
enforce such a right after the patent application is granted if the
one who used the invention of the patent application refused to pay
the fee.
