table of contents
1. Scope of Responsibilities for Administrative Protection of Patents
2. The administrative subject of the administrative protection of patents
3. The patent administration department of the State Council adjudicates patent infringement disputes that have a significant national impact
4. The department in charge of patent work shall adjudicate patent infringement disputes
5. The department in charge of patent work shall mediate patent disputes
6. Patent violations punished by the department responsible for patent enforcement
7. Administrative assistance by the patent administration department under the State Council
On December 21, 2023, more than two years after the implementation of the Patent Law of the People's Republic of China (hereinafter referred to as the "Patent Law") on June 1, 2021, the revised Detailed Rules for the Implementation of the Patent Law of the People's Republic of China (hereinafter referred to as the "Implementing Rules") was promulgated and will come into force on January 20, 2024. Chapter VIII of the Detailed Implementing Rules, "Protection of Patent Rights", mainly stipulates the content of administrative protection of patents, and this amendment summarizes the practice of administrative protection of the Patent Law over the past two years, and improves and improves the administrative protection system of patent rights.
1. Scope of Responsibilities for Administrative Protection of Patents
The administrative protection of patents provided for in Chapter VIII of the Detailed Implementing Rules can be divided into administrative adjudication, administrative mediation, administrative punishment and administrative assistance according to the type of administrative act.
Administrative adjudication refers to the adjudication of patent infringement disputes as provided for in Article 65 of the Patent Law (including the adjudication of patent infringement disputes with significant national impact as provided for in Article 70).
Administrative mediation refers to the mediation of compensation for patent infringement disputes as stipulated in Article 65 of the Patent Law and the mediation of disputes over patent ownership, qualifications, rewards and remuneration, temporary protection as provided for in Article 102 of the Implementing Rules.
Administrative penalties include the handling of counterfeit patents as provided for in Article 68 of the Patent Law and Article 101 of the Implementing Rules, the handling of irregularities in patent marks as provided for in Article 99 of the Implementing Rules, and the handling of false applications and false open licenses as provided for in Article 100 of the Implementing Rules.
Administrative assistance refers to the act of suspending the relevant procedures by the patent administration department of the State Council in order to assist judicial and administrative related administrative acts as provided for in Articles 103, 104 and 105 of the Detailed Implementing Rules.
2. The administrative subject of the administrative protection of patents
Before the amendment, the Patent Law and the Detailed Rules for the Implementation of the Regulations stipulated that the administrative bodies responsible for patent protection were the patent administration department of the State Council and the department managing patent work. The Patent Administration Department of the State Council refers to the State Intellectual Property Office. In accordance with Article 79 of the Detailed Implementing Rules, the department in charge of patent work refers to the department for the administration of patent work established by the people's governments of provinces, autonomous regions and municipalities directly under the Central Government, as well as the people's governments of cities divided into districts with a large workload of patent administration and actual processing capacity. This scope is more complicated to explain, and can be simply understood as the provincial level intellectual property office and the prefecture-level municipal intellectual property office, the district intellectual property office under the municipality directly under the central government and the autonomous prefecture, league and regional intellectual property office under the province and autonomous region are not within this scope, and the county-level intellectual property office is not in this scope.
After the amendment, there are two changes to the administrative entities responsible for patent protection stipulated in the Patent Law and the Implementing Rules: first, the departments responsible for patent enforcement have been added, and the administrative entities have become three categories;
The increase in the number of departments responsible for patent enforcement is related to the reform of state institutions in 2018, and the power of administrative punishment of patents is uniformly assigned to the administrative law enforcement department of the Administration for Market Regulation. The amended Implementing Rules further clarify that the department responsible for patent enforcement at or above the county level shall be responsible for dealing with irregularities in patent markings, false applications and false open licenses.
The amended Implementing Rules do not define the department in charge of patent work. Article 95 of the Detailed Implementing Rules is adjusted to read: "The departments of the people's governments of provinces, autonomous regions and municipalities directly under the Central Government in charge of patent work, as well as the departments in charge of patent work of prefecture-level cities, autonomous prefectures, leagues, regions and municipalities directly under the Central Government that have a large workload of patent administration and have the actual ability to handle patent work, may handle and mediate patent disputes." It can be understood that the departments that manage patent work include local intellectual property offices at all levels, but the statutory function of handling and mediating patent disputes is only at the provincial and municipal intellectual property offices. The restrictive expression "patent management workload is large and has actual processing capacity" is really redundant.
In practice, some provinces, autonomous regions and municipalities directly under the Central Government have delegated the function of handling and mediating patent disputes to the intellectual property offices at the county level through local regulations.
3. The patent administration department of the State Council adjudicates patent infringement disputes that have a significant national impact
Since Article 70 of the Patent Law established that the State Intellectual Property Office shall handle patent infringement disputes that have a significant impact on the whole country, with the implementation of the Patent Law, the State Intellectual Property Office has formulated the Measures for Administrative Adjudication of Major Patent Infringement Disputes, which defines that major patent infringement disputes include: (1) those involving major public interests, (2) those that seriously affect the development of the industry, (3) major cases that cross provincial-level administrative regions, and (4) other patent infringement disputes that may have a significant impact. Article 96 of the Detailed Implementing Rules appropriately amends the above expression, defining material patent infringement disputes as: (1) those involving major public interests, (2) those that have a significant impact on the development of the industry, (3) those that cross provinces, autonomous regions or municipalities directly under the Central Government, and (4) other circumstances that the patent administration department under the State Council considers to have a significant impact. The new wording appears to increase the discretion of the CNIPA as to whether it is a major patent infringement dispute.
Paragraph 2 of Article 96 of the Detailed Implementing Rules further clarifies that: "Where a patentee or an interested party requests the patent administration department under the State Council to handle a patent infringement dispute, and the relevant case does not belong to a patent infringement dispute that has a significant impact on the whole country, the patent administration department under the State Council may designate a department of the local people's government with jurisdiction to administer patent affairs to handle it." ”
Since the implementation of the Patent Law, the CNIPA has accepted and concluded two batches of 12 administrative adjudication cases of major patent infringement disputes[1], and the operation, effect and significance of this new system need to be further observed.
4. The department in charge of patent work shall adjudicate patent infringement disputes
Article 65 of the Patent Law stipulates that "the patentee or interested party may file a lawsuit with the people's court or request the department in charge of patent affairs to handle the patent infringement dispute." If the party concerned is not satisfied, it may file a lawsuit with the people's court in accordance with the Administrative Litigation Law of the People's Republic of China within 15 days from the date of receipt of the notice of disposition. At the request of the parties, the department in charge of patent work may mediate the amount of compensation for patent infringement, and if the mediation fails, the parties may file a lawsuit with the people's court in accordance with the Civil Procedure Law of the People's Republic of China. ”
The mainland has adopted a "dual-track" judicial and administrative resolution mechanism for the relief of patent infringement disputes, and the patentee or interested party can choose civil litigation or administrative adjudication to resolve the infringement dispute. The difference is that civil litigation can award infringement compensation, while administrative adjudication can only mediate infringement compensation.
In particular, after the Central Committee and the State Council issued the "Opinions on Improving the Administrative Adjudication System and Strengthening Administrative Adjudication" on December 31, 2018, the administrative adjudication of patent infringement disputes has been highly valued by the State Intellectual Property Office, and the number of administrative adjudication cases has grown rapidly, with the number of cases filed and closed reaching 55,023 and 53,438 from January to October 2023. [2]
It is worth noting that, due to its quasi-judicial nature, administrative adjudication of patent infringement disputes is different from the measures taken by the patent enforcement department to deal with counterfeit patents due to its quasi-judicial nature. This is the second paragraph of Article 69 of the Patent Law: "When the department in charge of patent affairs handles a patent infringement dispute at the request of the patentee or interested party, it may take the measures listed in subparagraphs (1), (2) and (4) of the preceding paragraph." That is, three measures may be taken: (1) questioning the relevant parties and investigating the circumstances related to the suspected illegal acts, (2) carrying out on-site inspections of the premises where the parties are suspected of illegal acts, and (4) inspecting the products related to the suspected illegal acts;
5. The department in charge of patent work shall mediate patent disputes
In addition to the mediation of compensation for patent infringement disputes as provided for in Article 65 of the Patent Law, the administrative functions of the patent administration department to mediate patent disputes are set out in Articles 95 and 102 of the Detailed Implementing Rules, which specifically include (1) disputes over the right to apply for a patent and the ownership of patent rights, (2) disputes over the qualifications of inventors and designers, (3) inventors of service inventions and creations, Disputes over the reward and remuneration of the designer, (4) Disputes over the use of the invention after the publication of the patent application and before the grant of the patent right without paying appropriate fees, and (5) Other patent disputes.
The patent disputes mediated by the above-mentioned departments in charge of patent work are also within the scope of civil litigation accepted by the people's courts, and due to the lack of coercive and enforcement power of administrative mediation, these types of administrative mediation functions generally have few cases accepted.
6. Patent violations punished by the department responsible for patent enforcement
There are three types of patent acts that are penalized by the department responsible for patent enforcement:
(1) If the patent mark does not comply with the provisions as provided for in Article 99 of the Detailed Implementing Rules, the department responsible for patent enforcement at or above the county level shall order it to make corrections.
(2) In addition to the civil liability for the counterfeiting of a patent as provided for in Article 68 of the Patent Law and Article 101 of the Detailed Rules for the Implementing Rules, the department in charge of patent enforcement shall order the person in charge of patent enforcement to make corrections and make a public announcement, confiscate the illegal gains, and may impose a fine of not more than five times the amount of the illegal gains; if there are no illegal gains or the illegal gains are less than 50,000 yuan, a fine of not more than 250,000 yuan may be imposed; and if a crime is constituted, criminal liability shall be investigated according to law.
(3) The "dishonest" behavior stipulated in Article 100 of the Detailed Implementation Rules is aimed at the fraudulent conduct in the patent application under Article 11 and the false behavior in the open license under Article 88, which is a new administrative penalty provision set up in the Implementing Rules.
7. Administrative assistance by the patent administration department under the State Council
Administrative assistance is an act by which the patent administration department of the State Council suspends the handling of patent applications and other relevant procedures in order to assist judicial and administrative management. Article 105 of the Detailed Implementing Rules stipulates that the relevant procedures refer to "the suspension of the procedures for the preliminary examination, substantive examination and reexamination of a patent application, the procedures for granting a patent right and the procedure for invalidation of a patent right, the procedures for abandoning, altering or transferring a patent right or the right to apply for a patent, the procedures for pledging a patent right, and the procedures for terminating a patent right before the expiration of the term of the patent right".
Article 103 of the Detailed Implementing Rules stipulates that in the process of handling ownership disputes (administrative mediation or judicial litigation), the parties may request the suspension of the relevant procedures. The amendment requires the parties concerned to "explain the reasons" when submitting a request for suspension, and if the reasons are obviously untenable, the patent administration department under the State Council may not suspend the relevant procedures. This new rule is a "filler". Under the formal examination of the request only before the amendment, the patentee of some infringement cases will falsely file a patent ownership dispute procedure, and then use this clause to achieve the purpose of maliciously suspending the ongoing patent invalidation procedure, resulting in damage to the defendant's rights in the infringement case. This amendment fills this loophole and is more conducive to safeguarding the rights of relevant parties.
Administrative protection is an important means to maintain the patent system and an important way for patentees to obtain remedies. The revision of the Implementing Rules will help the whole industry to further improve and implement patent protection.
exegesis
【1】 https://www.cnipa.gov.cn/art/2023/11/10/art_499_188489.html
【2】 https://www.cnipa.gov.cn/col/col89/index.html?uid=669&pageNum=1
Author: Zhang Feihu Yang Yi
Edited by Eleven