The new face of administrative remedies for patent infringement

In the past, patent holders, in particular foreign patent holders, had misgivings about the protection of their patents in the PRC, the main reasons are: (1) seeking protection through a judicial procedure was time consuming and in the course of such procedure, the alleged violator would often apply to the State Intellectual Property Office (SIPO) for invalidation of the rights holder’s patent, potentially leading to a stay in the trial, a longer trial time and creating legal risk for the stability of the rights holder’s patent rights; (2) in patent infringement cases, PRC courts did not accept punitive damages, accordingly the compensation obtainable by rights holders through litigation rarely fully compensated for their losses or genuinely increased the infringers’ costs of violating the law; and (3) although rights holders had the option to seek administrative protection from SIPO when patent rights were infringed, they would sometimes refuse to go that route because of the lack of transparency in administrative procedures.

After the implementation of the new Patent Law, SIPO revised and issued the Administrative Law Enforcement in Connection with Patents Measures on 1 February 2011, with a gradually maturing administrative remedy system for patent infringement.

The administrative procedure

As compared to a civil procedure for patent infringement, an administrative mediation and handling procedure for patent infringement has advantages of a simplified procedure, shorter delay, lower costs and low risk of invalidation.

Zhang Xu and Eric Su are partners of HFG