1. What could a patentee do if his/her patent is infringed in China?
If a patent infringement occurs in China, there are usually two separate options available to the patentee to seek a settlement, i.e., judicial action and administrative action.
a) Judicial action:
For judicial action, the patentee may file a lawsuit against the infringer to the court which has the power to handle patent infringement cases.
b) Administrative action
For administrative action, the patentee may also file a petition for handling the dispute to the local patent administrative authority.
2. What are the differences between judicial action and administrative action?
For judicial action, the major advantage is that the court has the power to award damage compensations and the court may have evidence preservation and property preservation means and may issue preliminary injunction order upon the request of the patentee. The major disadvantage is that the judicial action may be expensive and time consuming in comparison with the administrative action.
For administrative action, the major advantage is that it may be time efficient and cost effective in comparison with the judicial action. The disadvantage is that the administrative authority does not have the power to award the damage compensation to the patentee and the parties have to go to the court if the alleged infringer does not agree with the decision of the patent administrative authority.
3. Where to sue?
Up to now, there are about 62 intermediate people's courts in China having the power to handle patent infringement cases. The jurisdiction is determined typically by two factors. 1. The location of the defendant. 2. The venue where the infringing activity took place. As a usual strategy, the plaintiff may select the court which is different from where the defendant is located to avoid any possible influence of the defendant. The jurisdiction for administrative action is similar to that of the judicial action but the case will be handled by local IP administrative authorities other than court.
4. Who has the burden to prove?
According to the Chinese civil procedure law, it is normally the patentee's burden to provide evidence to support his claims. For a patent infringement case, the patentee should submit evidence to prove the existence of patent infringement. The exception of the above rule of burden of proof is in the case where the infringement relates to a patent for a method for manufacturing a new product. Only under this situation, the burden of proof will be shifted from the patentee to the alleged infringer. Under such a situation, the alleged infringer shall have the burden to prove that the method he/she used is different from the patented method. The evidence requirements for administrative action are substantially the same as that in the judicial action.
5. How the damage compensations are determined by the court?
In judicial action, the damage compensations may be calculated based on either of the following factors: 1. the lost profit of the patentee which was caused by the infringement; 2.the illegal profit gain of the infringer due to the infringement, 3. multiple times of the license fee the patent has ever licensed to others, if any. If the amount of damage could not be clearly calculated by any of the above ways, a statutory damage up to RMB 500,000 (US$60,000) could be determined by the court judges based on their discretions.
6. If a preliminary injunction is available?
A preliminary injunction procedure is available to stop the infringement prior to a court judgment is made or even before a lawsuit is filed with the court. However, the court is very prudent to issue a preliminary injunction. As one of the pre-conditions, the patentee must pay a deposit to the court in case the injunction is mistakenly issued. In other word, the patentee has the monetary risk if he loses the patent infringement case later.
7. If a patent application could be protected before it is granted a patent right?
A patent application for invention may enjoy provisional protection after it is published, i.e., the applicant is entitled to collect reasonable fees from anyone who uses or wishes to use the invention of the patent application. However, the patent applicant can only enforce such a right after the patent application is granted if the one who used the invention of the patent application refused to pay the fee.
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