Empowering administrative enforcement of IPR

By Mi Tai, Sanyou Intellectual Property Agency
0
133

Administrative enforcement is one of the major means of legal protection of intellectual property rights (IPR) in China, due to its convenience, efficiency, low costs and low burden of proof. According to the 2020 Status of IP Protection in China, a white paper issued by the China National Intellectual Property Administration (CNIPA), IPR administrative authorities in China handled more than 42,000 administrative adjudication cases of patent infringement disputes in 2020.

Fewer first-instance civil patent cases were accepted by local courts nationwide during the year, numbering over 28,000.

In recent years, as China’s IPR system continues to develop and improve, IPR administrative enforcement has also undergone significant changes.

STATUS ENHANCED

One of the characteristics of China’s IPR system is the “dual-track system” of parallel implementation of administrative and judicial protection.

Mi Tai, Sanyou Intellectual Property Agency, Empowering administrative enforcement of IPR
Mi Tai
Associate
Sanyou Intellectual Property Agency

In 2008, the State Council proposed in its Outline of the National Intellectual Property Strategy to “strengthen the construction of judicial protection system and administrative enforcement system, and give full play to the leading role of judicial protection of intellectual property rights”. At that time, administrative enforcement played more of a supplementary and complementary role.

Compared with judicial procedures, administrative enforcement suffered from a lack of procedural transparency and inconsistent enforcement standards. In addition, IPR is clearly private in nature, and excessive intervention and interference by a power of the public nature could easily deprive the administrative power, intended to maintain social order and public interests, of its original purpose.

The issue as to whether IPR administrative enforcement should be strengthened or restricted has aroused much debate.

However, the decision was settled with promulgation of relevant documents, most notably the 15-Year Plan (2021-2035) on Development of Intellectual Property Rights Power, issued by the Communist Party of China’s Central Committee and State Council in September 2021.

This expressively stated that “a sound, convenient, efficient, strict, fair, open and transparent administrative protection system” should be established – and proposed specific measures such as rational allocation and lawful exercise of the power of investigation, punishment and enforcement of relevant administrative departments.

So it is clearly apparent that China’s administrative authorities are set to play a greater role in handling IPR violations and infringement disputes, and the status of administrative enforcement in the dual-track protection system will be further enhanced.

MEASURES STRENGTHENED

According to the pre-amended Patent Law (2008), administrative authorities investigating and handling suspected patent counterfeiting had rights of inquiry and investigation, on-site inspection, access, reproduction, product inspection and sealing up and seizure – but were not given the above-mentioned rights in procedures for handling patent infringement disputes.

When the Patent Law was amended in 2020, the opinion-soliciting draft was intended to fully endow the administrative authorities with enforcement measures in patent infringement disputes.

However, to avoid excessive intervention in production and operations of enterprises, especially potentially disruptive measures such as sealing up and seizure, the authorities were eventually given rights of inquiry and investigation, on-site inspection and product inspection in the procedures for handling patent infringement disputes – but without rights of access, reproduction, sealing up and seizure.

At the legal level, administrative enforcement measures have been further strengthened. However, it should be noted that according to the Measures for Administrative Enforcement of Patents, administrative authorities may in the course of handling patent infringement disputes, investigate and collect relevant evidence according to their functions and powers or upon application, which specifically includes consulting and copying relevant documents, querying relevant parties and witnesses, conducting on-site inspection and taking samples of evidence.

How the rights of access and reproduction linked with the revised Patent Law require further clarification. In addition, although the measures set out provisions for the above-mentioned rights of administrative authorities, further refining and clarification are needed regarding their effective implementation to enhance administrative protection.

Under the National Work Plan for the Administrative Protection of Intellectual Property Rights issued in 2022 by the CNIPA, specific measures to ramp up administrative enforcement include the establishment of mechanisms for promoting consolidated administrative adjudication of intra-regional patent infringement dispute cases; as well as administrative adjudication of cross-regional patent infringement dispute cases, and strengthening the regulation on violations of trademark management order, such as the use of trademarks in violation of prohibitive provisions.

STANDARDS ALIGN

In July 2020, the CNIPA amended the Guidelines for the Administrative Mediation of Patent Disputes, the Guidelines for Cracking Down on Patent Counterfeiting and Handling Patent Marking Non-conformity Cases, and the Guidelines for the Reconsideration and Response of Patent Administrative Protection.

The CNIPA also issued the Trademark Infringement Judgment Standards in June 2020, and the Standards for Judgment of General Trademark Violations in December 2021.

These measures unified standards of law enforcement at the administrative level, and helped co-ordinate judgment standards for administrative enforcement and judicial protection, while strengthening administration and judicature co-operation.

In addition, the CNIPA began to conduct case guidance for IPR administrative enforcement in 2019, and released the first batch of guiding cases for IPR administrative enforcement at the end of 2020, to which administrative authorities should refer when handling similar cases.

PATENT POWERHOUSE

During the Beijing 2022 Winter Olympics, market regulatory departments nationwide investigated and handled over 240 cases of infringement of exclusive rights to the Olympic logo, demonstrating the convenient and efficient characteristics of IPR administrative enforcement.

China has become an IPR powerhouse – and giving full play to the advantages of the IPR administrative protection system will be conducive to reducing the pressure of judicial protection and maintaining social stability. In particular, with the rise of new technologies and businesses, along with the emergence of new types of IPR infringement on the internet and other fields, IPR administrative enforcement has a greater role to play.

Mi Tai is an associate at Sanyou Intellectual Property Agency

Mi Tai Wan Rui Law Firm intellectual propertySanyou Intellectual Property Agency
16/F, Block A, Corporate Square
No.35 Jinrong Street, Beijing 100033, China
Tel: +86 10 8809 1921 / 8809 1922
Fax: +86 10 8809 1920
Email: sanyou@sanyouip.com

www.sanyouip.com

Law.asia subscripton ad blue 2022