Introduction

On February 29 2016 the Shanghai High People's Court issued the Regulation on the Adjustment of the Court's Jurisdiction over Intellectual Property Civil Cases in Shanghai. The regulation, which took effect on March 1 2016, introduced some noteworthy changes.

Basic level courts in Shanghai generally have jurisdiction over first-instance civil IP rights cases regarding copyright, trademark, unfair competition and technology and franchise-related contract matters – among other things – regardless of the case's value, unless otherwise provided by law or judicial interpretation.

According to the Provisions of the Supreme People's Court on the Jurisdiction of the Intellectual Property Courts (which took effect on November 3 2014), IP courts have first-instance jurisdiction over:

  • civil and administrative cases concerning patents, new plant varieties, integrated circuit layout designs, know-how and computer software;
  • administrative cases concerning copyright, trademarks and unfair competition; and
  • civil cases concerning the identification of well-known trademarks.

The Shanghai High People's Court's regulation made an important change to the Supreme People's Court's provisions by providing that the high court has first-instance jurisdiction over civil IP rights cases regarding patents, new plant varieties, integrated circuit layout designs, technology-related secrets, computer software and monopolies where:

  • the case's value exceeds Rmb200 million; or
  • the case's value exceeds Rmb100 million and:
    • one of the parties is not domiciled in Shanghai; or
    • foreign elements are involved.

Regulation

The regulation reads as follows:

"Regulation of the Shanghai High People's Court on the Adjustment of the Court's Jurisdiction over Intellectual Property Civil Cases in Shanghai

In a bid to further improve the Shanghai courts' jurisdictional mechanism over IPR cases, the following provisions regarding jurisdiction over intellectual property civil cases in Shanghai are prescribed in accordance with the "Provisions of the Supreme People's Court on the Jurisdiction of the Intellectual Property Courts of Beijing Municipality, Shanghai Municipality and Guangzhou City over Cases" and the "Notice of the Supreme People's Court on Matters Regarding the Jurisdiction of the Intellectual Property Courts over Cases", and by taking into account the practice of the Shanghai courts.

1. Jurisdiction of Basic-level Courts

Basic-level courts have jurisdiction over the first instance IPR civil cases regarding copyright, trademark, unfair competition, technology contract, franchise contract matters and etc., except those cases that fall under the jurisdiction of the IP Court as prescribed by laws and judicial interpretations. Jurisdiction of basic-level courts over the aforementioned cases shall not be subject to the value of the object of action.

2. Jurisdiction of the IP Court

The IP Court has jurisdiction over the IPR civil cases as follows:

1) First instance civil cases regarding patent, plant new variety, layout design of integrated circuit, technology secret, computer software and monopoly, either (1) with the value of the object of action below RMB 100 million and the domicile of one of the parties is not in Shanghai or where foreign/Hong Kong/Macau/Taiwan elements are involved or (2) with the value of the object of action below RMB 200 million and the place of domicile of all the parties are in Shanghai; as well as the first instance civil cases involving well-known trademark recognition;

2) Appeals against first instance IPR civil judgments or verdicts made by basic-level courts;

3) Retrial applications filed against IPR civil judgments, verdict or conciliation statements rendered by basic-level courts, which have become legally effective.

3. Jurisdiction of the High Court

The Shanghai High People's Court has jurisdiction over IPR civil cases as follows:

1) First instance civil cases regarding patent, plant new variety, layout design of integrated circuit, technology secret, computer software and monopoly, either (1) with the value of the object of action above RMB 200 million, or (2) with the value of the object of action above RMB 100 million and the place of domicile of one of the parties is not in Shanghai or where foreign/Hong Kong/Macau/Taiwan elements are involved;

2) Appeals against first instance civil judgments or verdicts made by the IP Court;

3) Retrial applications filed against civil judgments, verdicts or conciliation statements rendered by the IP Court, which have become legally effective.

4. Inter-district Centralised Jurisdiction

Shanghai Pudong New Area People's Court has jurisdiction over first instance IPR cases within Pudong New Area; Huangpu District People's Court has jurisdiction over first instance IPR cases within Huangpu District and Changning District; Yangpu District People's Court has jurisdiction over first instance IPR cases within Yangpu District, Hongkou District, Baoshan District and Chongming County; Xuhui District People's Court has jurisdiction over first instance IPR cases within Xuhui District, Songjiang District and Jinshan District; Minhang District People's Court has jurisdiction over first instance IPR cases within Minhang District and Fengxian District; Putuo District People's Court has jurisdiction over first instance IPR cases within Putuo District, Jing'an District, Jiading District and Qingpu District.

5. Interpretation

The Judicial Trial Committee of the Shanghai High People's Court has the power of interpretation over the Regulations.

6. Implementation

The Regulation comes into force as of March 1, 2016 and the "Regulation of the Shanghai High People's Court Regarding Jurisdiction over First Instance Intellectual Property Cases" (Hu Gao Fa (Shen) [2011] No. 6), which were deliberated and passed at the 8th Session of the Judicial Trial Committee of the Shanghai High People's Court, shall be repealed simultaneously.

Notice is hereby given.

Shanghai High People's Court

February 19, 2016."

Comment

The IP court system is the result of an August 31 2014 congressional decision, which established an exception to the regular jurisdictional system where the level of court before which a case is lodged in the first instance depends on the case's importance. As specified in the Supreme People's Court provisions implementing the law that established the IP courts, all patent cases must be handled by the IP courts in the first instance.

However, the Shanghai High People's Court has introduced an exception to this rule – namely, that some high-level patent cases must bypass the first-instance jurisdiction of the IP courts and be heard directly by the high court.

Questions have arisen over whether this exception is compatible with the Supreme People's Court provisions. Further, starting a case at such a high level means that the second-instance case, on appeal, would have to be heard by the Supreme People's Court. This could compromise the opportunity for a third-instance retrial, as how could the Supreme People's Court retry its own appeal judgment?

For further information on this topic please contact Hui Huang, Paul Ranjard, Huimin Qin or Nan Jiang at Wan Hui Da Law Firm & Intellectual Property Agency by telephone (+86 10 6892 1000) or email (huanghui@wanhuida.com, ranjard@wanhuida.com, qinhuimin@wanhuida.com or jiangnan@wanhuida.com). The Wan Hui Da Law Firm & Intellectual Property Agency website can be accessed at www.wanhuida.com.

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