September 10 2012 marked the end of a period of public consultation on draft amendments to the Patent Law. The State Intellectual Property Office (SIPO) published two attachments on its website, entitled "Comparison of Related Articles Between the Current Patent Law and the Draft" and "Official Explanations Regarding the Draft of the Amendments to the Current Patent Law".
In recent years the government has paid increasing attention to intellectual property and has asked the relevant departments to take measures to enhance IP rights protection and increase enforcement efforts. On November 13 2011 the State Council issued "Opinions Regarding Further Strengthening of the Work of Combating IP Rights Infringement and the Manufacture of Fake and Inferior Goods". In order to meet its requirements, the SIPO started its preparatory work for amending the law. With great effort, the amendments have been included in the State Council's legislative schedule for 2012.
The amendments relate to seven articles of the existing law that focus on the prescription of acts of patent infringement - namely, Articles 46, 47, 60, 61, 63, 64 and 65. The main effects of the amendments are to:
- clarify that the effective date for a decision by the Patent Re-examination Board in invalidation proceedings is the date on which the decision is announced;
allow the relevant administrative authority for patent affairs to address patent infringement activity that is suspected of disrupting or distorting the market. This includes the power to:
- order the infringing party to cease the infringement;
- confiscate illegal earnings;
- seize and destroy infringing products or special equipment used for infringement; and
- impose a fine;
- allow the administrative authority to award damages to the patentee in cases of infringement;
- enhance the court's power to collect evidence in infringement litigation and to prescribe liability for an accused infringer that refuses to cooperate with the court;
extend the scope for taking administrative measures against passing-off to acts of patent infringement. Such measures may include:
- undertaking inquiries and investigations;
- conducting on-the-spot inspections;
- examining and copying contracts, invoices, accounting books and other materials relating to the potentially infringing act; and
- inspecting and seizing products and placing them under seal; and
- introduce triple damages in the event of wilful infringement.
This is the SIPO's first draft; as yet, there is no information on when it will be finalised or passed into law. Once it has analysed the public comments, the SIPO will prepare a definitive draft and submit it to the Legislative Affairs Office of the State Council. The second draft will then be formulated and will need to be passed by the State Council to the Standing Committee of the National People's Congress before it comes into effect.
The newly announced amendments in the draft have aroused widespread public attention. Overall, their implementation would be positive for patent owners, as they would lower the burden of proof and might allow for the recovery of greater damages for wilful infringement. The amendments would make enforcement quicker and would further strengthen the power of the administrative authorities to deal with patent disputes. However, some commentators have expressed doubts about the strengthening of protection, which they see as tipping the balance too far towards patent owners. For others, the main concern is the greater involvement of the administrative authorities in handling patent infringement cases.
For further information on this topic please contact Yin Xintian or Duan Xiaoling at Wan Hui Da Law Firm & Intellectual Property Agency by telephone (+86 10 6892 1000), fax (+86 10 6894 8030) or email (firstname.lastname@example.org or email@example.com).
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