An exhibition is an important platform for innovative enterprises to introduce their products to markets and demonstrate their technical strength. Of course, an exhibition may be used by any patent infringer to exhibit and sell its infringing products. In view of this, how does a patentee protect its patent rights in case of any patent infringement behavior found in Chinese exhibitions?
1. Applicable Laws and Regulations
Subject to Article 11 of the Patent Law of the PRC, patent infringements include: as for the inventions and utility models, without permission of the patentee, making, using, promising the sale of, selling or importing the patented products, or using the patented process and using, promising the sale of, selling or importing the products directly obtained from the patented process, for production or business purposes; and as for the designs, without permission of the patentee, making, using, promising the sale of, selling or importing the product incorporating its patented design, for production or business purposes. The behavior of using patented design product is beyond infringement.
In accordance with the provisions of Article 60 of the Patent Law of the PRC, the measures taken to solve patent infringement disputes include: Negotiations between the parties concerned, lawsuits filed by the patentee or the party interested to a People’s Court, or request to the authorities managing the patent works for handling, such as local IP offices.
In addition, the Measures for the Protection of Intellectual Property Rights during Exhibitions (the “Measures”) promulgated in China in 2006 clearly specify the protection of the patent rights in exhibitions. Generally, subject to Article 6 of the Measures, as for exhibitions of 3 days or more, or if exhibition management authorities think it necessary, exhibition organizers shall establish the intellectual property complaint agencies during the exhibition period; and if no such complaint agencies are established, the intellectual property administration in the place where the exhibition is conducted shall strengthen guidance on and supervision of the protection of intellectual property rights in the exhibitions and the handling of relevant cases.
If a patentee finds any product in a Chinese exhibition is suspected to be involved in patent infringement, what shall the patentee do?
Currently, two measures are frequently taken, i.e., written complaints are submitted to the intellectual property complaint agency of the exhibition or to the local intellectual property administration in the place where the exhibition is conducted. If the complaints are accepted, the exhibition intellectual property complaint agency will order the suspected infringer to withdraw from the exhibition, or transfer the dispute to the local intellectual property office. The local intellectual property office will directly make its administrative judgment on whether the infringement is established or not, based on the specific situations. If it is established, the infringer will be ordered to stop its infringement and even make compensations to the patentee. Certainly, the patentee may, after collecting, together with the notarial organ, the prima facie evidence in the exhibition premises, also file a patent infringement lawsuit with the People’s Court.
2. Exhibition Patents Infringement Complaints
Generally, the intellectual property complaint agencies are set up for the large exhibitions. The so-called “large exhibitions” shall mean those exhibitions lasting 3 days or more, as organized or co-organized by the Chinese Government, international/national industrial associations, etc. If no intellectual property complaint agencies are set up in the exhibitions, then the patentee shall submit its written complaints to the local intellectual property office.
If the patentee submits a complaint to the complaint agency or the local intellectual property office, it shall include the following materials:
- Legal and effective intellectual property ownership certificate: If relating to a patent, it is required to submit the patent certificate, granted specifications, patentee’s identity/entity certificate, and patent’s legal status certificate. The “patentee’s identity/entity certificate” shall be defined as follows: If the patentee is an individual, his/her certificate shall mean his/her ID Card, or passport as notarized or certificated, etc.; if the patentee is a Chinese legal person, it means the Business License and the legal representative’s ID Card; and if the patentee is a foreign entity, it means the entity’s qualification certificate as notarized by the national notarial organ in the jurisdiction where the patentee is located and as certified by the Chinese embassy in the patentee’s country, and the legal representative’s qualification certificate.
- General information about the suspected infringer. For example, if the suspected infringer is an individual, it is required to provide his/her name, identity, address, etc.; and if the suspected infringer is a legal entity, it is required to provide its name, and industrial and commercial registration information as issued by the home country’s industry and commerce administration, etc.
- Reasons and evidences of suspected infringement. The infringement reasons are those relating to suspected infringement of which items under which patents/which right claims. The evidences may be pictures or videos taken in the exhibition premises and the exhibition promotion brochure containing the information about the suspected infringement, etc.
- If an agent files a complaint on behalf of the patentee, it is required to submit the Letter of Authorization. The Letter of Authorization shall have the signature or seal of the legal representative. If the patentee is a foreign individual or entity, the Letter of Authorization shall be notarized or certified.
3. Exhibition Patents Infringement Lawsuits
The materials to be submitted for the lawsuits with the People’s Courts against the patent infringements in the exhibitions are similar to those to be submitted for the patent infringement complaints. The difference between them is that the infringement evidences to be submitted for the lawsuits must be notarized by a notarial organ. The specific reason is that, generally, the duration of the exhibition is not too long, when proceeding to a lawsuit, the exhibition may be likely to have been completed, and the court cannot verify whether the infringements in the completed exhibition truly happened. To determine the evidences and verify the authenticity and effectiveness of the evidences, the patentee or its agent shall apply to the local notarial organ for the preservation notarization on the evidences. After determining that the identity of the patentee or its agent is valid, the notarial organ will proceed to the exhibition premises to take pictures and record sound and video, and then issue the evidence notarization report. The patentee submits the evidence notarization report and the attached documents to the court as the prima facie evidences.
The above is a briefing of the protection of the patent rights in Chinese exhibitions. The specific operations may vary for different cities and different exhibitions. For example, as for the patent infringements in the exhibitions in the Pudong New Area, Shanghai, if a complaint agency is established, the patentee may file a complaint to such agency; but if no complaint agency is established, the patentee shall apply for conciliation with the Pudong Intellectual Property Office or file a lawsuit with the Shanghai Middle People′s Court/Shanghai Intellectual Property Court. The Pudong Intellectual Property Office will not accept any complaint requests.