Some points in the draft of the amendments to the current Patent Law need our attention.
The State Intellectual Property Office (SIPO) newly issued a notification on its official website on August 9, 2012 regarding “Inviting public opinions on the draft of the amendments to the current Chinese Patent Law”, and the public opinions should be submitted with SIPO by September 10, 2012. Two attachments are included in the notification. One is “The comparison of the related articles between the current Patent Law and the draft” and the other is “Official explanations regarding the draft of the amendments to the current Patent Law”.
- Background for drafting the amendments
In the recent years, the Government pays more and more attention to the IPR protection in China and requests the relevant departments to take measures to enhance IPR protection and increase enforcement efforts. On November 13, 2011, the State council issued “Opinions regarding further strengthening the work at attacking IPR infringement and manufacture of fake and inferior goods”. To meet the aforesaid requirement, SIPO started its preparation work for amending the current Chinese Patent Law. With great efforts, the amendments have been included in the plan of the legislation work of Year 2012 by the State Council.
- Major points of the amendments
The amendments relate to 7 articles of the current Patent Law which focus on the prescriptions of patent infringement acts, including Article 46, 47, 60, 61, 63, 64 and 65 of the Law respectively. The highlights of the amendments are as follows:
- Clarifying that the effective time for the Decision made by the Patent Reexamination Board in the invalidation proceeding is the date when the Decision is announced.
- Allowing the administrative authority for patent affairs to handle the patent infringement activity suspected of disrupting the market order, including ordering the infringing party to stop the infringement activity, confiscating the illegal earning, seizing and destroying the infringing products or special equipment used for infringement, and imposing a fine.
- Allowing the administrative authority for patent affairs to award damages to the patentee for an infringement case.
- Enhancing the power of collecting evidence by the court during the infringement litigation and prescribing the liability of the accused infringer who refuses to cooperate with the court.
- Extending the scope of taking administrative measures for the acts of passing off patents to the acts of infringing patents. The measures may include making inquiries and investigation, conducting on‐the‐spot inspection ， examining and making copy of the contract, invoices, accounting books and other materials relating to the act suspected of violation of laws, inspecting, sealing up and detaining the products.
- Introducing triple amount of compensation for the damages if a willful infringement is involved.
- Timeline for development of the draft
This is the first draft made by the SIPO. There is no information with respect to when the draft would be finalized and passed as a law. After collecting the public opinions, SIPO will fix the 1st draft and submits it to the legislative Affairs Office of the State Council, then the 2nd draft will be formulated and it should 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 public attention widely. In general, implementation of the amendments would play a positive role for the patent owners to protect their patent rights, to reduce the difficulty of “burden of proof”, and to obtain possibly higher compensation concerning a wilful infringement in China. The period of enforcing the rights of patent owners would be expected to be shortened. In the draft especially, the power of the administrative authorities for handling patent disputes would be further strengthened.
However, some people concern about the stronger protection, which would be inclined too much to the patent owners. Implementation of these articles might result in imbalance of the interests between the patent owners and the public. In another aspect, some people concern about enlarged involvement of the administrative authorities for handling patent infringement cases.