The Standing Committee of the National People’s Congress promulgated the amended PRC Patent Law on October 17, 2020, and the new PRC Patent Law became effective on June 1, 2021. Article 70.1 of the new PRC Patent Law provides that “the patent administrative department under the State Council may, at the request of the relevant patentee or the interested parties, handle the patent infringement dispute that has a major impact nationwide.”
The China National Intellectual Property Administration (CNIPA) officially issued the Measures on Administrative Adjudication of Major Patent Infringement Disputes (Measures) on May 26, 2021 (https://www.cnipa.gov.cn/art/2021/5/28/art_74_159727.html). The Measures provide an explanation of the categories of cases that would fall under the purview of Article 70.1 of the amended PRC Patent Law. The Measures also set out guidelines for the administrative handling of such cases by CNIPA. The CNIPA published a version of the Measures for public comment on March 2, 2021, and the final version became effective on June 1, 2021 (along with the amended PRC Patent Law).
Some noteworthy articles include the following:
Article 3 – Major patent infringement disputes include but are not limited to 1) disputes involving major public interests; 2) disputes seriously affecting the development of the industry; and 3) cross-provincial patent infringement disputes.
Article 4 – Other requirements for major patent infringement disputes include: 1) the claimant is the patentee or the interested party; 2) there is a definite respondent; 3) there are clear requests and specific facts and reasons; and 4) the people’s court has yet to docket a case involving the relevant dispute.
Article 6 – The CNIPA shall accept the case and notify the claimant within five working days of the date of receipt of the complaint, and designate three or more odd-numbered case administrators to form a collegial panel. The time limit for accepting cases of significant complexity or under other special circumstances can be extended by five working days upon approval. The CNIPA shall notify the claimant within five working days of the date of receipt of the complaint if the complaint does not comply with the Measures, and explain the reasons for rejection. For a complaint that is not a major patent infringement dispute, the CNIPA will not accept the case and will inform the claimant to file the case with the local administrative patent department.
Article 10 – The CNIPA shall forward a copy of the complaint and the relevant evidence to the respondent within five working days from the date of acceptance, requesting the respondent to submit a defensive brief within fifteen days from the date of receipt. Where the respondent submits a defensive response within the statutory time limit, the CNIPA shall forward a copy of the brief to the claimant within five working days of the date of receipt. The CNIPA may consolidate cases involving infringements of the same patent.
Article 13.1 – The CNIPA case administrators may exercise the following powers when conducting an examination: 1) inquire the relevant parties and other relevant entities and individuals, and investigate the circumstances related to the suspected patent infringement; 2) conduct on-site inspections of the relevant premises; and 3) inspect products related to suspected patent infringement.
Article 16 – The CNIPA shall decide whether to conduct an oral hearing based on the specific circumstance of the case. For oral hearings, the parties shall be notified of the time and place of the oral hearings at least five working days prior to a hearing. If a party refuses to participate without proper reason, or withdraws participation without prior notice, the claimant shall be deemed to have withdrawn the complaint, or the case shall be tried by default.
Article 22.1 – The CNIPA shall close the case within three months from the date of acceptance. If the case cannot be closed within the prescribed time limit due to the complexity of the case or for other reasons, it may be extended by one month upon approval. If the case is particularly complicated or there are other special circumstances, a reasonable extension shall be determined upon approval.