Announcement of China National Intellectual Property Administration
No.426
 

CNIPA has formulated the Measures for Administrative Adjudication of Major Patent Infringement Disputes in accordance with the Patent Law of the People’s Republic of China and other relevant laws, regulations and rules, which is hereby released and shall come into force on June 1, 2021, in order to implement the policy decisions and arrangement of the Party’s Central Committee and the State Council on comprehensively strengthening intellectual property protection, maintain the market order of fair competition, protect the lawful rights and interests of patent owners and the public, and provide legal basis for administrative adjudication cases of patent disputes with significant influence nationwide.      
                                      

China National Intellectual Property Administration
May 26, 2021

 
The Administrative Adjudication Measures for Major patent Infringement Dispute (hereinafter referred to as “this Measures”)

 
Article 1 This Measures is formulated in accordance with the Patent Law of the People’s Republic of China (hereinafter referred to as the Patent Law) and other relevant laws, regulations and rules, in order to implement the policy decisions and arrangement of the Party’s Central Committee and the State Council on comprehensively strengthening intellectual property protection, maintain the market order of fair competition, and protect the legal lawful rights and interests of patent owners and the public.
 
Article 2 The Measures shall apply to the handling of the patent infringement disputes with significant influence nationwide (hereinafter referred to as “major patent infringement disputes”) prescribed by Article 71 of the Patent Law by CNIPA.
 
Article 3 Where any one of the following circumstances occurs, the case shall be determined as a major patent infringement dispute:
(I) involving significant public interests;
(II) seriously affecting the development of the industry;
(III) a major case across provincial administrative regions
(IV) other patent infringement dispute which may produce major influence.
 
Article 4 Where a petition for an administrative adjudication on a major patent infringement dispute is filed, the circumstances prescribed in Article 3 shall occur, and the petition shall meet the following conditions:
(I) the petitioner is the patent owner or an interested party;
(II) a respondent is clearly specified;
(III) clear claims and specific facts and reasons are set forth;
(IV) the people’s court has not docketed the patent infringement dispute.
 
Article 5 A petition for administrative adjudication on a major patent infringement dispute include a written request and relevant evidence materials under the relevant regulations of the Measures of Executive Enforcement. Meanwhile, evidence materials verifying the circumstances prescribed by Article 3 of this Measures which are issued by the administrative department for patent affairs at the provincial level (province, autonomous region or municipality directly under the central government) of the location of the petitioner or the location of the infringement act shall be submitted.
 
Article 6 Where Article 4 of this Measures is satisfied, the CNIPA shall, within 5 working days from the date of receiving the written request, docket the case and notify the petitioner, and appoint three or a greater odd number of investigators to form a collegial panel to handle the case. Where the circumstances of the case are particularly complicated or other special circumstances occur, the time limit for docketing the case may be extended by 5 working days upon approval.
 
Where the petition does not conform to Article 4 of this Measures, the CNIPA shall, within 5 working days from the date of receiving the written request, notify the petitioner of not docketing the case and explain the reasons.
 
The CNIPA shall not docket a case for any petition that is not a major patent infringement dispute, and shall inform the petitioner that he or she may request the local administrative department for patent affairs that has jurisdiction to handle the case.
 
Article 7 Where the administrative department for patent affairs of a province, an autonomous region or a municipality directly under the central government considers a case within its jurisdiction as a major patent infringement dispute, it may report the case to the CNIPA for an administrative adjudication.
 
Article 8 The investigator shall be issued with a certificate by the CNIPA.
 
Article 9 The investigator shall voluntarily apply for withdrawal under any of the following circumstances:
(I) where the investigator is a close relative of a party concerned or his agent;
(II) where the investigator has an interest in the patent application or the patent right at issue;
(III) where the investigator has other relationship with the party concerned or his agent, which may affect the justice of the case.
 
The parties concerned have the right to apply for the withdrawal of an investigator. Where a party concerned applies for the withdrawal of an investigator, the party shall specify the reasons.
 
The withdrawal of the investigator shall be decided by the department in charge of the case.
 
Article 10 The CNIPA shall, within 5 working days from the date of docketing the case, send a duplicate of the written request and its annexes to the respondent, and require the respondent to submit a written defense within 15 days from the date of receipt and provide duplicates of the written defense according to the number of the petitioners. Failure by the respondent to submit the written defense within the time limit shall not affect the handling of the case.
 
Where the respondent submits the written defense, the CNIPA shall forward the duplicate of the written defense to the petitioner within 5 working days from the date of reception.
 
Article 11 In the course of handling the case, where the applicant files a request for adding more respondents, if the conditions for joint respondents are met, the CNIPA shall decide to add respondents and notify the other parties concerned; if the conditions for joint respondents are failed but the conditions for petition are satisfied, the CNIPA shall reject the request for adding respondents and notify the applicant to file a separate petition for another case. Where the respondent requests to add another party as a respondent, the petitioner shall be notified. If the petitioner agrees to add a respondent, the CNIPA shall permit the addition. If the applicant disagrees, the another party may be added as a third party. The request for adding a respondent or a third party shall be submitted before oral hearing, otherwise it shall not be supported.
 
Article 12 The parties concerned are obliged to provide evidence for their claims. For evidence, a party concerned is unable to collect due to objective reasons, the party may submit preliminary evidence and state the reasons in written form to apply for investigation or inspection by the CNIPA. The CNIPA may conduct investigation or inspection under the law in view of the needs to ascertain the facts of the case.
 
During investigation or inspection, there shall be at least two investigators; and the investigators shall show their certificates to the parties concerned or other relevant personnel.
 
Article 13 During investigation or inspection, the investigators may exercise the functions and powers to:
(I) inquire the parties concerned and other relevant units and individuals to investigate the facts related to the alleged act of infringement;
(II) conduct on-site inspection at sites where the alleged act of infringement was conducted;
(III) investigate products related to the alleged act of infringement;
During investigation or inspection, the parties concerned or the relevant personnel shall assist and cooperate with the investigators, and shall not refuse or obstruct the investigation or inspection.
 
The CNIPA may, in light of working needs and the actual situation, entrust the investigation related to the case to the local administrative department of patent affairs.
 
Article 14 Where a patent infringement dispute involves complex technology which requires examination and identification, the CNIPA may, at the request of the party concerned, entrust a relevant unit to conduct such examination and identification. Where a party requests examination and identification, the examination and identification unit may be determined by the two parties through consultation. Where the parties concerned cannot reach consensus, the CNIPA shall designate a unit. The examination and identification opinions shall not be taken as the basis for concluding the case without cross-examination.
 
Where the parties have agreements with regard to the fee for identification, the agreement shall be honored. In the absence of such an agreement, the fee for identification shall be paid on account by the party applying for the identification and compensated by the responsible party when the case is concluded.
 
Article 15 The CNIPA may designate technical investigators to participate in the case and put forward technical investigation opinions. The relevant technical investigation opinions can be used as the reference for the collegial panel to determine the technical facts. Measures for the administration of technical investigators shall be stipulated separately.
 
Article 16 The CNIPA shall decide whether to hold an oral hearing or not according to the circumstances of the case. If an oral hearing is conducted, the parties concerned shall be notified of the time and place of the oral hearing at least five working days before the oral hearing. Where a party refuses to participate without justified reasons, or withdraws halfway without permission, if the party is the petitioner, it shall be determined that the petition has been withdrawn; if the party is the respondent, it shall be determined that the respondent fails to attend.
 
Article 17 Under any of the following circumstances, the party concerned may apply for suspension of the case, and the CNIPA may decide ex officio to suspend the case:
(I) where the respondents petitions for invalidation declaration of the patent involved in the case and its petition has been accepted by the CNIPA;
(II) where either party dies and there is a need to wait for a successor to determine whether he or she will take part in the case;
(III) where either party has lost capacity for civil conduct and has not yet appointed a legal representative;
(IV) where either party’s legal person or other organization terminates, and the successor to its rights and obligations has not been determined;
(V) where one of the parties is unable to attend the hearing due to force majeure;
(VI) where the case must be based on the trial result of another case which has not yet been concluded;
(VII) other circumstances where suspension of the case is required.
 
Article 18 The CNIPA may not suspend the case under any of the following circumstances:
(I) where no defect of the patent right for utility model or design has been found in the search report or the patent right evaluation report provided by the petitioner, which causes the patent at issue to be ineligible for patenting;
(II) where a decision has been made in the invalidation declaration procedure to maintain the patent right for utility model or design;
(III) where the reason for suspension stated by the party concerned is obviously untenable.
 
Article 19 The CNIPA may dismiss the case under any of the following circumstances:
(I) where after docketing, the case is found not meeting the requirements for acceptance;
(II) where the petitioner withdraws the petition;
(III) where the petitioner dies or is deregistered, with no successor, or the successor abandoning the petition;
(IV) where the respondent dies or is deregistered, or does not have a person who should take responsibility.
(V) other circumstances requiring the dismissal of the case.
 
Article 20 Where the patent right concerned is declared invalid by the CNIPA during the period of the administrative adjudication, the case may be terminated. Where there is evidence proving that the decision on declaring invalidation of the aforesaid rights has been revoked by an effective administrative judgment, the right holder may file a separate request.
 
Article 21 The CNIPA could make conciliation between the two parties concerned. Where the parties reach consensus, a conciliation statement shall be prepared and sealed by the CNIPA, and shall be signed or sealed by both parties. Where the conciliation fails, an administrative adjudication shall be made promptly.
 
Article 22 When handling a patent infringement dispute case, the CNIPA shall conclude the case within three months from the date of docketing. If the case cannot be settled within the prescribed time limit due to complexity of the case or other reasons, the time limit may be delayed by one month upon approval. Where the case still cannot be concluded after an extended time period due to its particular complexity or occurrence of other special circumstances, provided that further extension of the time period is approved, a reasonable extended time period shall be determined at the same time.
 
Article 23 Where the CNIPA has made an administrative adjudication, the CNIPA shall prepared and seal a written administrative award. Where an administrative adjudication determines that an infringement of a patent is established, the CNIPA shall order to desist from the infringement immediately, and notify, if necessary, the pertinent authority and the relevant departments of the local people’s government to assist and cooperate in stopping the infringement in time. If the accused party is unsatisfied with the administrative adjudication, it may, within 15 days from the date of receiving the written administrative award, file an appeal to the people’s court in accordance with the Administrative Procedure Law of the People’s Republic of China. Unless in circumstances prescribed by law, the execution of the administrative award shall not be suspended during the period of litigation. Where the accused party neither appeals nor desists from the infringement at the expiration of the time limit for filing an appeal, the CNIPA may apply to the people’s court for compulsory enforcement.
 
After an administrative adjudication is made, it shall be released to the public in accordance with the Regulations on the Disclosure of Government Information and its relevant provisions. When the administrative award is made public, the information involving commercial secrets shall be deleted.
 
Article 24 Where an investigator or other staff is involved in power abuse, malpractice or disclosure of commercial secrets known in the process of the cases, yet does not constitute a crime, he or she shall be subjected to administrative sanction. Where the act of the investigator or other staff constitutes a crime, he or she shall be transferred to judicial departments.
 
Article 25 Where there is no provision in this Measures, the Measures for Patent Administrative Law Enforcement and the relevant provisions of the CNIPA on the administrative adjudication on patent infringement disputes shall be applied.
 
Article 26 The Measures shall be subject to the interpretation of the CNIPA.
 
Article 27 This Measures shall come into force as of June 1, 2021.
 

Date: May 28, 2021
Source: China National Intellectual Property Administration