The State Intellectual Property Office (the “SIPO”) released a revised draft of PRC Patent Administrative Enforcement for public comment on January 27, 2015. The current Patent Administrative Enforcement Rules took effectiveness on Feb. 1, 2011 and has been implemented for almost four years. The new amendments included in the revised draft are intended to address issues such as enhancing patent enforcement in ecommerce settings, reducing time frames for some enforcement procedures, and improving patent administrative enforcement management. This post will introduce the major changes and discusses about its impacts.
Enhanced patent enforcement in ecommerce
With the rapid development of ecommerce, it is quite common that products that infringe patent are sold on ecommerce platforms such as Taobao.com. Patent owners have long been requesting to enforce the patent and demanding ecommerce platforms to remove the web content involving patent-infringing products. However, under current administrative enforcement system, it is quite difficult to find the right SIPO regional office that has jurisdiction and the law is not clear as to the liabilities of those ecommerce platforms.
The new amendments mandate the patent administrative enforcement officials to strengthen online enforcement and to handle online patent infringement cases in an expedited process. The new amendments further clarify that the patent administrative enforcement officials can order ecommerce platforms to remove or block the web content that involves infringing material in Administrative Decisions.
However, the new amendments do not state how quick the enforcement procedures must be. New rules or procedures are to be expected from the SIPO or its regional offices.
Reduced time frame for patent enforcement
Compared to the 4-month period, the new amendments call the patent administrative enforcement officials to close the case within 3 months for invention and utility model patent infringement cases and within 2 months for design patent infringement case, extendable for one month.
Further, the new amendments remove the vague expressions that the patent administrative enforcement officials should open a case in time once being notified with a patent passing-off case, and set clear that an case should be opened within 10 days after being notified by third parties or 5 days after discovering potential patent passing off.
The new amendments not only affect the enforcement officials but also the potential infringing party. The potential infringing party need to furnish the response within 10 days instead of 15 days in current rules after having been served with Petition for Patent Administrative Enforcement filed by patent owners.
Improved administrative enforcement management
The new amendments request that that all patent administrative enforcement officials should be qualified and certified and advise to improve IT infrastructure and establish an information center so that regional offices can share information. For example, the decisions by the SIPO regional offices should be published, quite similar to the decisions publishing requirement in the civil litigation arena.
Impact by the new amendments
The majority of existing Patent Administrative Enforcement Rules are not modified. There will not be any drastic changes to the current administrative enforcement regime. However, new enforcement measures tackling online infringement will be expected to implemented, and it is highly possible that the SIPO will leave such measures to be promulgated and implemented by its local offices because not every provinces in China has same level of prosperity of ecommerce.
There is an interesting post by Mr. Mark Cohen to discuss more about the background of the new amendments to the Patent Administrative Enforcement Rules.
Finally, if you have any comments to the new amendments, write to the SIPO at tiaofasi@sipo.gov.cn before March 15, 2015.
