Dec. 2014 to Feb. 2015 China Bulletin

Faster Processing and Improved Online Enforcement:

On January 27, 2015, the State Intellectual Property Office (SIPO) released a revised draft of the Patent Administration Enforcement Rules (Rules) for public comment. The draft Rules are intended to improve procedures, reduce time required for litigation and improve enforcement against online infringers.

China has a two-tier patent enforcement system – patent rights holders can bring suit for infringement in a civil court or can opt to file an administrative complaint with a local Patent Management Bureau under the supervision of SIPO. Administrative enforcement is typically faster and less costly than a civil suit, but a local Bureau cannot award damages to the complainant and can only enforce a cessation of infringement order with the help of a court. The Bureau can impose an administrative fine, but they are often modest and may be treated by the infringer as no more than another cost of doing business.

Among other changes, the draft Rules would shorten the period for the Bureau to conclude invention and utility patent infringement disputes to three months and shorten the period for design patent disputes to two months, with a possible one month extension.

The draft Rules would also strengthen online protection by enabling patent rights holders and enforcement agencies to halt the sale or offering of infringing products on the Internet. They include ”take-down” provisions that require e-commerce service providers to delete or block webpages with infringing products. They also provide for publishing enforcement decisions on the Internet.

The proposed changes in the draft Rules reflect the government’s ongoing efforts to attack the serious problem of counterfeit products in China, but may also be motivated in part by SIPO’s desire to maintain administrative enforcement as a viable option in the face of the new specialized intellectual property courts and other changes taking place in the judicial system.

The period for submitting comments on the draft Rules closes on March 15.

Questions? Please contact Allan Marson or one of our patent lawyers/ practitioners at china.desk@ishimarulaw.com or +1 408-738-0592 for a complimentary consultation.