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As referenced earlier, China's general court system is a hierarchy consisting of four levels; The Supreme People's Court, the Higher People's Courts, the Intermediate People's Courts and the Basic People's Courts.  The court system plays a role in both patent prosecution and litigation and works in conjunction with the administrative body SIPO. 

            1.  Courts in Patent Prosecution

            Even after all administrative appeals are exhausted through the PRB, an applicant may still seek judicial review through the Intermediate People's Court in Beijing.  Such an appeal must be filed within three months of receiving notice of the PRB's adverse decision.  Judgments from the Intermediate People's Court in Beijing may also be appealed to the Higher People's Court of the Municipality of Beijing.  Such appeals must be made within 30 days of receiving the Intermediate People's Courts adverse holding.

            2.  Courts in Patent Litigation

            As noted earlier, SIPO and the PRB provide an administrative outlet to handle patent litigations.   Alternatively, a patent litigant may utilize the court system to adjudicate the dispute.  To initiate litigation, a party files a complaint through a local Intermediate People's Court.  Many of the Intermediate People's Courts and Higher People's Courts rely on Intellectual Property Tribunals to handle these disputes.  In addition to having jurisdiction to hear litigations in the first instance, the Intermediate People's Court also serves as an appellate court for decisions rendered by the PRB on the administrative side.    

            A decision at the Intermediate People's Court can be appealed to the Civil Division of the supervising Higher People's Court.  Finally, in recent years, the Supreme People's Court, Higher People's Courts, and a number of Intermediate People's Courts have established an IP Litigation Division that specializes in IP matters.  The IP Litigation Division is stocked with judges and professionals whom have both the technical education and professional experience to preside over the trial.

            The next post in the series will cover statutory requirements for patent eligibility in China.  

            The State Intellectual Property Office (SIPO) is the patent office for China.  SIPO was founded in 1980 and is responsible "for patent work and comprehensively coordination of the foreign related affairs in the field of intellectual property."  More specifically, SIPO examines patent applications, grants patents, regulates the quality of patent examiners, implements regulations, and occasionally revises the Chinese Patent law. 

            While SIPO is the central office responsible for patents in China, there are a series of similar systems at various levels of local government.  These "local" Intellectual Property Offices are established in a number of provinces, autonomous regions, districts and municipalities across China.  The local offices are responsible for managing the administrative work regarding intellectual property, and may also have jurisdiction over patent infringement matters.

            1.  SIPO, the PRB, and Applicants; Prosecuting Patent Applications

            SIPO and the associated local Intellectual Property Offices initial role is to receive and examine applications for patents.  Similar to the United States Patent and Trademark Office, SIPO may first issue a rejection of the application, but provide the applicant with an opportunity to respond.  SIPO will review the response from the applicant, and if not satisfied, will then issue a final rejection.  An applicant may submit an appeal to the Patent Reexamination Board (PRB) within three months of receipt of the final rejection. 

            The PRB is an extension of SIPO and consists of a number of examiners experienced in both technical and legal matters.  The PRB will review an appeal and determine both patentability and validity.  The PRB may provisionally withdraw, non-provisionally withdraw, or sustain the final rejection.  The decision by the PRB essentially exhausts an applicant's administrative remedies.  However, judicial remedies may still be preserved. 

            2.  SIPO and Adverse Parties; Litigating Patent Disputes

            The administrative arm of the Chinese patent system also assists in the protection of patent rights.  While an aggrieved party may also seek judicial remedies, administrative proceedings are often preferred in order to conserve judicial resources.  To initiate a litigation proceeding on the administrative side, a complaint is filed at a local intellectual property office in an appropriate province.  The administrative agency will attempt to mediate the dispute before any additional legal proceeding, and may issue fines or seize property. 

            Notably, the administrative agency cannot award damages to a wronged party.  Administrative orders may be appealed to the Administrative or Civil Divisions of the Higher People's Courts, which generally supervise administrative agencies for patent litigation disputes.  While a litigant could bypass the administrative track altogether and directly file a complaint in court, most civil patent litigations proceed first through the administrative process due to the lower cost. 

            3.  SIPO, the PRB and Third Parties; Invalidation Proceedings  

            According to the China Patent Law, once SIPO grants a patent right, any individual who disagrees may request an invalidation proceeding before the PRB.  An invalidation proceeding may apply to all or only part of a patent right.   A person initiation an invalidation proceeding must submit a detailed request along with all necessary evidence for the proceeding.  The PRB has discretion to accept or deny a request for invalidation. 

            If an invalidation request is accepted the petitioner may submit additional evidence.  The patentee may also attempt to narrow the scope of protection by amending the claims.  Either the petitioner or the patentee may further request an oral hearing before the PRB.  The PRB will reexamine the application in light of the additional evidence, amendments and/or oral hearing and render a decision.  The PRB may declare the patent invalid as a whole or in part, or sustain the patent right based on the evidence.

            The next post in the China Series will cover Judicial Patent Proceedings within China. 

Moving further into the 21st century, China is set to become a major player in the global IP community.  Over the next several weeks, this series will cover a variety of topics dedicated to understanding, procuring and enforcing patents as they exist in China. 

Part One will constitute a brief introduction to the broader Chinese Court System.  New posts in the series will occur every few days.

The Chinese Legislature approved a number of amendments to the Chinese Patent Law on December 29, 2008, resulting in the third revision of the Law. The revisions dealt with changes to patent application filing, criteria for granting patents, protection of patent rights, and compulsory licensing. 

Offering to Sell Products Incorporating Patented Designs

Revised Article 11, Paragraph 2:

"After the grant of the patent right for a design, no entity or individual may, without the authorization of the patentee, exploit the patent, that is, make, offer to sell, sell or import the product incorporating its or his patented design, for production or business purposes".

"The extent of protection of the patent right for design shall be determined by the product incorporating the patented design as shown in the drawings or photographs. The brief description may be used to interpret the product protected by design patent shown in the drawings or photographs".

"Where the patent infringement 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 an interested party to furnish an evaluation report of patent right made by the Patent Administration Department Under the State Council.
The Patent Administrative Department Under the State Council shall, upon the request from patentee or interested party, conduct a search, analysis and evaluation for the related patent for utility model or patent for design to make an evaluation report of paten right. The evaluation report of paten right is a preliminary evidence for people's court or administrative authority for patent affairs to judge the validity of the patent right".

"In a patent infringement dispute, where the accused infringer has evidences demonstrating that the technology or design exploited by it or him belongs to prior art or prior design, the said exploiting act shall not be constituting an infringing act".

"Any invention or utility model for which patent right may be granted must possess novelty, inventiveness and practical applicability.

Novelty means that, the invention or utility model shall neither belong to the prior art, nor has any other person filed before the date of filing with the Patent Administrative Department Under the State Council an application which described the identical invention or utility model and was published in patent application documents or announced in patent documents after the said date of filing.

Inventiveness means that, as compared with the prior art, the invention has prominent substantive features and represents a notable progress and that the utility model has substantive features and represents progress.

Practical applicability means that the invention or utility model can be made or used and can produce effective results.

The prior art referred to in this Law means any technology known to the public in this country or abroad before the date of filing".

"Any design for which patent right may be granted shall neither belong to the prior design, nor has any other person filed before the date of filing with the Patent Administrative Department Under the State Council an application which described the identical design and was announced in patent documents after the said date of filing.

Any design for which patent right may be granted shall be obviously differentiable from the prior design or a combination of features of the prior design.

Any design for which patent right may be granted must not be in conflict with any prior right of any other person.

The prior design referred to in this Law means any design known to the public in this country or abroad before the date of filing".

"For any of the following, no patent right shall be granted: 

(6) Two-dimensional designs made of patterns, colors or their combination, for the purpose of indication".

"No patent right shall be granted for an invention-creation of which the completion depends on genetic resources, but the acquisition or exploitation of said genetic resources violates the relevant laws and administrative regulations of the State".

"For an invention-creation, the completion of which depends on genetic resources, the applicant shall indicate the direct source and original source of said genetic resources in the application documents; The applicant shall state reasons if the original source of said genetic resources can not be indicated".

"For any identical invention-creation, only one patent right shall be granted. However, where the same applicant(s) had applied for both patent for utility model and patent for invention for the identical invention-creation on the same day, and the previously granted patent for utility model has not been expired, and the applicant(s) declares to abandon the patent for utility model, then the patent for invention may be granted".

"Where the patent application right or patent right is co-owned by two or more entities or individuals, if the co-owners have agreed upon how to exploit the patent, such agreement shall be followed; otherwise, any co-owner may exploit the patent alone or grant others an non-exclusive license to exploit the patent and the exploitation fee received shall be allocated among all co-owners.

Except as provided above in the preceding paragraph, exploitation of any co-owned patent application right or patent right shall obtain all co-owners' consent".

"Any entity or individual may file an application in a foreign country for an invention-creation completed in China, subject to a prior security/secrecy examination by the Patent Administration Department Under the State Council".

"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 which are incorporated in products belonging to the same class and are sold or used in sets may be filed as one application".

The first five places in the ranking were occupied by the United States, Japan, Germany, South Korea and France. Stay tuned to www.maierandmaier.com for further developments and information on Chinese Intellectual Property matters.