In September 2010, the State Intellectual Property Office of the PRC (SIPO) published its draft amendments to the Patent Administrative Enforcement Rules (Rules) for public consultation. The SIPO recently finalised the amended Rules which will come into effect on 1 February 2011.
The amendments attempt to enhance patent administrative enforcement in the PRC in light of the revision to the Patent Law and the Patent Implementation Rules. One of the main purposes of the Rules is to improve procedural propriety by codifying the practice and principles of patent enforcement by SIPO and the local patent authorities.
Our Legal Update "Proposed amendments to the patent administrative enforcement rules in the PRC" has summarised the key areas of the draft changes, namely, the allocation of duties between SIPO and the local authorities, the enforcement procedures, the seizure and investigation powers, and the time limit for handling patent disputes.
The finalised version of the Rules does not differ significantly from the draft version, but nonetheless introduces a number of notable changes:
The draft proposes a 3-month time limit for handing all kinds of patent enforcement cases which may be extended for an unspecified period for very complicated cases.
The finalised Rules distinguish between patent infringement disputes, and "patent passing off" cases whose liabilities are usually more obvious, e.g. putting on another person's patent number without authorisation. For the former, the Rules require a patent authority to complete the case within four months of the filing date, with an extension of time of no more than one month for very complicated cases. For "patent passing off" cases, the pledge is one month with a time extension of no more than 15 days.
Patent passing off cases
The finalised Rules expressly confer a discretion on patent authorities to not impose any penalty if the patent passing off is minor in nature and has been promptly cured. The draft version does not offer this leeway and implies that if liability is found, a penalty must follow.
In the authors' view, this discretion reinforces the impression that the patent authorities often play a conciliatory role in patent disputes.