Interpretation of the Measures for Administrative Adjudication of Major Patent Infringement Disputes (October 2021)

On May 26, 2021, The CNIPA issued the Measures for Administrative Adjudication of Major Patent Infringement Disputes (hereinafter referred to as the Adjudication Measures), which would be implemented on June 1, 2021.  The superior law of the Adjudication Measures is the Patent Law, which was officially implemented on the same day. On October 13, 2021, the CNIPA issued the Interpretation of Adjudication Measures, with the main content as follows:

The Adjudication Measures for Adjudication contain 27 articles, which stipulate the definition of major patent infringement disputes, the conditions and materials for filing cases, the authority for evidence investigation, the rules for inspection and identification, the provisions for technical investigation officers, the relevant deadlines, the implementation and disclosure, and other procedures for adjudication.

(I) Definition of Major Patent Infringement Disputes

In Article 3 of the Adjudication Measures, it defines the situations that constitute major patent infringement disputes, including major cases involving major public interests, seriously affecting the development of the industry, and across provincial administrative regions, and other patent infringement disputes that may have a significant impact.

For the above cases of major patent infringement disputes, the patent administration departments of provinces, autonomous regions and municipalities directly under the central government shall conduct preliminary examinations, issue relevant supporting materials, and send the request materials to the CNIPA. The postmark date shall be the date of request for administrative ruling. The CNIPA shall conduct examination according to the filing provisions of the Adjudication Measures, and file the case if it meets the filing conditions. For a request that does not belong to a major patent infringement dispute, the CNIPA shall not file the case and inform the applicant that it may request to the local administrative department for patent work with jurisdiction for handling.

(II) Filing Conditions and Materials

The Adjudication Measures stipulate that the filing of administrative adjudication shall comply with the circumstances as described in Article 3 and meet the following conditions: (1) the petitioner is the patentee or interested party; (2) there is a clear respondent; (3) there are clear matters of claim, specific facts and reasons; (4) the people's court has not filed a case on the patent infringement dispute.

The Adjudication Measures also stipulate that the petitioner shall submit a request and relevant evidentiary materials, as well as providing the evidentiary materials issued by the Patent Administration Department of the provinces, autonomous regions or the municipality directly under the central government where the petitioner is located or where the infringement is committed, which comply with the circumstances described in Article 3.

(III) Authority of Evidence Investigation

In the Adjudication Measures it is required that the principle of "who claims, who provides evidence" be followed for the submission of evidence. Such parties bear the responsibility for providing evidence for their claims. If a party is unable to collect evidence for objective reasons, he may submit preliminary evidence and reasons and apply in writing to the CNIPA for investigation or inspection. At the same time, the Adjudication Measures itemize the relevant functions and powers that case handlers can exercise during investigation or inspection.

(IV) Inspection and Appraisal Rules

Where a patent infringement dispute involves complex technical problems and requires inspection and appraisal, the Adjudication Measures stipulate that the CNIPA may entrust relevant units to conduct inspection and appraisal per request of either party involved and specify that if they request inspection and appraisal, the inspection and appraisal units may be determined by both parties through consultation. If the negotiation fails, it shall be designated by the CNIPA. The inspection and appraisal shall not be used as the basis for finalization without cross examination.

If there is an agreement on the appraisal fee, such agreement shall prevail.  If there is no agreement, the appraisal fee shall be paid by the applicant in advance, and shall be borne by the responsible party when the case is closed.

 (V) Regulations of Technical Investigator

The Adjudication Measures clarifies that the CNIPA may appoint technical investigators to participate in the handling of cases and put forward technical investigation opinions. And it further clarifies the legal status of relevant technical investigation opinions in the case, which can be used as a reference for the panel to identify technical facts.

(VI) Related Deadline

Referring to the Measures for Administrative Enforcement of Patent Law, the filing limit is defined as such that if the request meets the provisions of Article 4 of the Measures, the case shall be filed and the applicant shall be notified within 5 business days from the date of receiving the request.

Secondly, the time limit for the notification of oral hearing has been clarified. In Article 16 of the Adjudication Measures it specifies that the parties shall be informed of the time and place of the oral hearing at least 5 working days before the oral hearing.

Thirdly, the time limit for handling the case is clarified, and the case shall be closed within three months from the date of filing the case.  If the case cannot be closed within the specified time limit due to the complexity of the case or other reasons, it may be extended by one month pending approval. If the circumstances of the case are particularly complex or there are other special circumstances, and the case cannot be closed after extension, if an additional extension is approved, a reasonable period of extension shall be determined at that time.

(VII) Implementation and Disclosure

In Article 23 of the Adjudication Measures it clearly stipulates that if the administrative adjudication finds that the patent infringement is established, it shall order it to stop the infringement immediately and notify the relevant competent departments and relevant departments of the local people's government as needed to assist and cooperate in stopping the infringement in time.  If a party refuses to accept it, he may bring a suit in court according to law. The execution of an administrative ruling shall not be suspended during the litigation period except under the circumstances prescribed by law.

After an administrative adjudication is made, it shall be made to the public in accordance with the Government Information Disclosure Bill and relevant provisions.  If it involves business secrets and other confidential information, it shall be deleted and then disclosed.

(VIII) Other Procedures

In the Adjudication Measures it also clearly stipulates the handling personnel, filing procedures, avoidance system, combined handling of cases, oral hearing procedures, suspension conditions, relationship with invalid procedures, mediation procedures, implementation and publicity, judicial relief channels, etc. 

Adapted from the CNIPA