For patent infringement disputes，the administrative remedy is more convenient and takes shorter time comparing with the judicial remedy. If the administrative authority believes the infringement is established, it may order the infringer to cease the infringement immediately in order to prevent the losses from being expanded. Here are some procedure issues for requesting the administrative authority to handle the infringement disputes.
1. Who Can File a Petition?
The petitioner may be the patentee or the interested persons, where the interested persons include the legal successor of the patentee, and the licensees in the Patent License Contract.
Among the licensees in the Patent License Contract, the licensee in the exclusive license contract may file a petition separately, and the licensee in the sole license contract may, if the patentee fails to file a petition, file a petition separately; and unless otherwise specified by the contract, the licensee in the ordinary license contract cannot file a petition separately.
2. To Whom Is the Petition Submitted?
The petition shall be submitted to the administrative authority for patent affairs in the place where the infringing action happens or the where the respondent is located. The administrative authority for patent affairs means the department responsible for the administrative work concerning patent affairs set up by the people's government of any province, autonomous region, or municipality directly under the Central Government, or by the people's government of any city divided into districts which has a large amount of patent administration work to attend to and has the ability to deal with the matter. (like: Guangdong Intellectual Property Office and Beijing Intellectual Property Office).
3. How to File a Petition?
Where any party concerned requests handling of a patent infringement dispute, application forms and evidences shall be filed to the administrative authority. Such evidences include identity document of the petitioner (for example, ID Card or the Business License) and evidence for valid patent rights (for example, copy of the patent register, or certificate of patent rights together with the annuity payment receipt for that year). In addition, if an agent is entrusted, a power of attorney shall be submitted.
If the patentee is a foreigner or foreign enterprise without residence in China, the identity document and power of attorney shall be notarized and legalized, and the Chinese translation shall also be submitted.
4. How Does the Administrative Authority Handle Infringement Disputes?
The administrative authority may conduct the mediation proceedings according to the willingness of the parties concerned. If the parties concerned reach an agreement, the administrative authority is responsible for preparing a mediation agreement. If the mediation fails, the administrative authority shall make its decision. If the infringer neither file a lawsuit against the decision at the expiration of the time limit nor ceases the infringement, the said authority may file an application with the people's court for compulsory enforcement.
5. How Long Does It Take for an Infringement Dispute from Establishment to Conclusion?
The administrative authority shall conclude the patent infringement dispute within 3 months from the date of establishing the case. If the case is complex and needs to extend the period, the extension as approved shall not exceed 1 month. The time for publication, verification and suspension, etc. shall not be included in the said period.
After the administrative authority or the people’s court concludes the establishment of the infringement and orders the infringer to stop immediately, if the infringer is involved in the same type of infringement on the same patent rights, the administrative authority may directly make its decision of ordering the infringer to immediately stop the infringement.
6. Will the administrative authority suspend the dispute when an invalidation against the patent right is filed?
In practice, in the course of handling a patent infringement dispute, the alleged infringer requests invalidation of the patent right and his or its request is accepted by the Patent Reexamination Board, he or it may request the administrative authority for patent affairs concerned to suspend the handling of the matter. If the administrative authority for patent affairs considers that the reasons set forth by the alleged infringer for the suspension are sufficient, it will suspend that case, but if the reasons are obviously untenable, it may not suspend the handling of the matter.