BIPC Releases Report On Damages In Patent Infringement Cases

• Published date: 15 December 2020
• Subject Matter: Intellectual Property, Patent
• Law Firm: Rouse
• Author: Mr August Zhang and Sharon Qiao

A look into judicial remedies on patent infringement cases and suggested areas for improvement.

The Beijing Intellectual Property Court ("BIPC") recently released a report on patent infringement cases tried by the BIPC between its establishment in November 2014 up to March 2020. The report examines the effectiveness of judicial remedies on patent infringement cases and suggests areas for improvement.

During this period, the BIPC received a total of 2,811 patent infringement cases and adjudicated 1,923 cases, with a completion rate of over 68%. 65.5% of the total cases received were settled or withdrawn, while 480 cases were closed by judgements, which accounted for 17% of the total cases. It is important to note that the data is not comprehensive as there are low closing rates for high technology cases, with trials being time consuming and laborious.

The report also indicates that there is a year-on-year increase on the number of cases received and closed, along with the emergence of new types of cases. The proportion of patent owners winning the case is comparatively high, and calculation of damages for the most part has been based on statutory damages. These trends are also supported by data retrieved from CIELA, our online tool for analysing Chinese IP administrative appeals and civil infringement proceedings.

According to the data from CIELA, the number of cases heard at first instance for both domestic and foreign plaintiffs has steadily increased from 2010 to 2019. The average win rate for domestic plaintiffs over the decade was 83%, while foreign plaintiffs enjoyed an average win rate of 86% in comparison (see below table).

Source: CIELA

The report, however, said there remain areas for improvement:

1. The PRC Patent Law provides that damages should be assessed in the following order, if possible: 1) patentee's lost profits due to infringement; 2) infringer's gains from infringement; 3) reasonable royalties; and 4) statutory damages. In practice however, statutory damages has become the most common calculation method used by the BIPC, even though it ranks last in the order of application.

2. The court tends to submit a general analysis when assessing damages, rather than conducting a thorough analysis. This will be partly due to the high evidence thresholds in Chinese courts.

3. Cases are assigned randomly to different panels of judges Related cases may be assigned to...