Patent And Design Patent Administrative Enforcement In China

• Published date: 02 February 2021
• Subject Matter: Intellectual Property, Patent
• Law Firm: Rouse
• Author: Ms Sophia Hou

With judicial protection, administrative enforcement authorities play an important role in resolving patent disputes.

Introduction

Due to the relative complexity of patent infringement compared with trade mark and copyright infringement, most countries in the world resolve patent disputes through their judicial systems. But in China, in parallel with judicial protection, administrative enforcement authorities also play an important role in resolving patent disputes.

China has three types of patents: design patents, invention patents and utility models. Administrative enforcement authorities in China can handle cases relating to all three types of patents across all industries. In practice, there are more administrative design patent disputes than utility model or invention patent disputes because design patents are technically simpler and, therefore, more suitable for a quick and fast resolution through the administrative enforcement system. There are, however, still a substantial number of utility model and invention patent cases.

Administrative authorities in China

Since April 2018, the State Administration for Market Regulation (SAMR) has been responsible for the administrative enforcement of patents, in addition to trade marks and unfair competition. Patent administrative enforcement was previously carried out by the State Intellectual Property Office (SIPO), now renamed as the China National Intellectual Property Administration (CNIPA). As part of a government restructure the CNIPA was changed from being an affiliate of the State Counsel to being an affiliate of the newly created SAMR. The State Adminstration of Industry and Commerce (SAIC) which dealt with trade marks and unfair competition also became part of the SAMR. We will use the term AMR to refer to the Administration for Market Regulation as the enforcement authority for patents in this article.

Remedies in administrative enforcement

The AMRs have very broad powers for trade mark and unfair competition enforcement. They can inspect (commonly referred to as "raiding") premises and seize or seal suspected infringing products and tooling. If they find infringement, they can also impose fines. However, under the Patent Law the AMR has no authority to seize or seal any products or tooling and cannot impose fines. The AMR only has the power to inspect the premises of a suspected infringer and take notes or preserve records of infringing items. If patent infringement is established, the AMR can issue an Administrative Decision ordering the immediate cessation of infringement.

AMR officials worry that they are less powerful in patent enforcement and have joked about being "a toothless tiger". Without the authority to seize and impose fines, infringers are sometimes uncooperative and its deterrent effect can be more...