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The draft of fourth revision for Chinese Patent Law has been open
for public comments
The main purpose of the fourth revision is to greatly enhance the
power of the patent administrative authority and the people’s court
in handling the patent infringement cases. And the infringer,
especially the intentional infringer may face more penalty.
Attachment: the main amendmenets to the Patent Law
Article 46. The Patent Reexamination Board shall examine the request
for invalidation of the patent right promptly, make a decision on it
and notify the person who made the request and the patentee.
The decision declaring the patent right invalid
or upholding the patent right shall be registered and
announced
timely by the patent administration department under
the State Council
after the decision is made.
The decision come into force when it is announced.
Where the patentee or the person who made the request for
invalidation is not satisfied with the decision of the Patent
Reexamination Board declaring the patent right invalid or upholding
the patent right, such party may, within three months from receipt
of the notification of the decision, institute legal proceedings in
the people's court. The people's court shall notify the person that
is the opponent party of that party in the invalidation procedure to
appear as a third party in the legal proceedings.
Article 47. Any patent right which has been declared invalid shall
be deemed to be non-existent from the beginning.
The decision declaring the patent right invalid shall have no
retroactive effect on any judgment or mediation decision of patent
infringement which has been pronounced and enforced by the people's
court, on any decision concerning the handling of a dispute
or penalty over patent infringement which has been
complied with or compulsorily executed, or on any contract of patent
license or of assignment of patent right which has been performed
prior to the declaration of the patent right invalid; however, the
damage caused to other persons in bad faith on the pat of the
patentee shall be compensated.
If, pursuant to the provisions of the preceding paragraph, the
monetary damage for patent infringement, the fees for exploitation
of the patent or fees for the assignment of the patent right is not
returned, but such non-return is obviously contrary to the principle
of equity, all or part of the preceding payments shall be returned.
Article 60.
Where a dispute arises as a result of the exploitation of a patent
without the authorization of the patentee, that is, the infringement
of the patent right of the patentee, it shall be settled through
consultation by the parties. Where the parties are not willing to
consult with each other or where the consultation fails, the
patentee or any interested party may institute legal proceedings in
the people's court, or request the administrative authority for
patent affairs to handle the matter.
When the administrative authority for patent affairs handling the
matter considers that the infringement is established，it
may order the infringer to stop the infringing act immediately,
and compensate for the losses. If the infringer is not
satisfied with the order, he may, within 15 days from the date of
receipt of the notification of the order, institutes legal
proceedings in the people's court in accordance with the
Administrative Procedure Law of the People’ s Republic of China. If,
within the said time limit, such proceedings are not instituted and
the order is not complied with, the administrative authority for
patent affairs may approach the people's court for compulsory
execution.
To the infringement
of the patent allegedly disrupting
the market order, the patent administrative
authority
has the right to investigate and punish;
for
those that have
significant
impact in the country, the patent administration department under
the State Council
organizes
the
investigation.
If
the
patent
administrative authority
regards that the
patent infringement
and
the disruption
of the
market order
are established,
they can
order to stop the infringement, confiscate the illegal income, and
can confiscate, destruct the infringing products or special
equipment for the implementation of the violations,
and can order a
penalty of
four times the illegal income,
and impose a fine of not
more
than 200,000 yuan
if
there is
no illegal
income or the illegal income is difficult to calculate,
After the
Decision of declaring the patent right invalid or upholding the
patent right enters
into force, the patent administrative
authority
and the people's court shall timely
handle
the patent infringement
case,
according to the decision.
Article 61.
Where any infringement dispute relates to a patent for invention for
a process for the manufacture of a new product, any entity or
individual manufacturing the identical product shall furnish proof
to show that the process used in the manufacture of its or his
product is different from the patented process.
Where any infringement dispute relates to a patent for utility model
or design, the people's court or the administrative authority for
patent affairs may ask the patentee or any interested party to
furnish an evaluation report of patent made by the patent
administration department under the State Council after having
conducted search, analysis and evaluation of the relevant utility
model or design, and use it as evidence for hearing or handling the
patent infringement dispute.
In the patent
infringement litigation,
for the
alleged
infringement
products as well
as account
books,
materials, and other evidence
held
by the accused
infringer, the people's court shall, in accordance with the
application of the plaintiff or his legal agent,
survey and
collect. If
the accused
infringer does not provide or transfers,
forges,
destructs
the
evidence, the people's court,
in accordance with the law,
shall
take compulsory measures to stop the obstruction of proceedings;
if the behavior
constitutes a crime,
the infringer may
have
criminal responsibility.
Article 63.
Where any person passes off a patent，he
shall, in addition to bearing his civil liability according to law,
be ordered by the administrative authority for patent affairs to
correct his act, and the order shall be announced. His illegal
earnings shall be confiscated and, in addition, he may be imposed a
fine of not more than four times his illegal earnings and, if there
is no illegal earnings
or the illegal income is difficult to calculate, a fine
of not more than RMB 200, 000 Yuan. Where the infringement
constitutes a crime, he shall be prosecuted for his criminal
liability.
Article 64.
When investigating and prosecuting the suspected act of passing off
a patent
or
infringing a patent, the administrative authority for
patent affairs may, based on the evidence obtained, query the
parties concerned, and investigate the relevant circumstances of the
suspected illegal act; carry out an on-the-spot inspection of the
site where the party’ s suspected illegal acts took place; review
and reproduce the contracts, invoices, account books and other
relevant materials related to the suspected illegal act; examine
the products relevant to the suspected illegal act and may seal up
or withhold the products proved to be passing off the patented
product
or
infringing the patent.
When the administrative authority for patent affairs performs its
functions and duties specified in the preceding paragraph in
accordance with the law, the interested party shall assist and
cooperate and shall not refuse or interfere the performance.
If the
investigated party refuses or obstructs the exercise of
the
powers as the patent administrative
authority,
he
shall be
given a warning by the administrative authority for patent affairs;
if the
circumstances are severe,
he
shall be given administrative penalties for public security.
Article 65.
The amount of compensation for the damage caused by the infringement
of the patent right shall be assessed on the basis of the actual
losses suffered by the right holder because of the infringement;
where it is difficult to determine the actual losses, the amount may
be assessed on the basis of the profits the infringer has earned
because of the infringement. Where it is difficult to determine the
losses the right holder has suffered or the profits the infringer
has earned, the amount may be assessed by reference to the
appropriate multiple of the amount of the exploitation fee of that
patent under a contractual license. The amount of compensation for
the damage shall also include the reasonable expenses of the right
holder incurred for stopping the infringing act.
Where it is difficult to determine the losses suffered by the right
holder, the profits the infringer has earned and the exploitation
fee of that patent under a contractual license, the people's court
or the administrative authority for patent affairs may
award the damages of not less than RMB 10，000
Yuan and not more than RMB 1，000，000
Yuan in light of such factors, as the type of the patent right, the
nature and the circumstances of the infringing act.
For intentional
patent infringement, the patent administrative
authority
or the People's Court shall, according to the
circumstances of the
infringement, the
damage
scale
and
damage results, will
increase
the amount of compensation
determined
in accordance with the preceding two
paragraphs
up
to three times.
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