by Ni Zhenhua(Ben)  King & Wood Mallesons

On 1 January 2019, the Supreme People’s Court (“SPC”) officially established an appellate-level intellectual property tribunal (“SPC IP Tribunal”), which is somewhat similar to the US Court of Appeals for the Federal Circuit in terms of its function and role, in accordance with the Decision of the Standing Committee of National People’s Congress on Several Issues Concerning Litigation Procedures of Patent and other IP Cases dated 26 October 2018.  This SPC IP Tribunal will be subject to a pilot period of 3 years and centralize jurisdiction over appeals involving patent infringement/invalidation and other high-tech or antitrust IP disputes.  On 27 December 2018, the SPC issued the Provisions on Several Issues of the IP Tribunal to further elaborate on its jurisdiction, functions and working modes.  This article aims to provide a brief introduction to this SPC IP Tribunal in these aspects.


Jurisdiction of the SPC IP Tribunal

The SPC IP Tribunal will have EXCLUSIVE jurisdiction over the following appeals against the first-instance decisions and rulings rendered since January 1 2019:

  • (a) appeal cases against first-instance (trial) decisions and rulings issued by local high people’s courts, IP courts and intermediate courts in relation to infringement and ownership disputes for invention patent, utility model patent, new plant variety, IC layout design, technical secret and computer software as well as antitrust disputes;
  • (b) appeal cases against first-instance judicial review decisions of Beijing IP Court for reexamination and invalidation disputes regarding invention patent, utility model patent, design patent, new plant variety and IC layout design; and
  • (c) appeal cases against first-instance judicial review decisions and rulings of local high people’s courts, IP courts and intermediate courts in relation to administrative rulings made by government departments for invention patent, utility model patent, design patent, new plant variety, IC layout design, technical secrets, computer software and antitrust disputes.

Aside from the aforesaid appeal cases, the SPC IP Tribunal could also have jurisdiction, mainly at its discretion, to hear first-instance trials over the aforesaid disputes when they involve highly important and complicated nationwide matters – which occurs only in extremely exceptional cases.

In other words, local people’s high courts and No.3 Civil Tribunal of the SPC, which used to hear appeal cases involving the aforesaid disputes, will no longer try such appeals, but will continue to exercise jurisdiction over other IP disputes as they have done so far.  In particular, No.3 Civil Tribunal of the SPC will continue to play its role in retrial of appellate decisions made by this SPC IP Tribunal in respect to the above-mentioned disputes.

Working Modes of the SPC IP Tribunal

Centralized jurisdiction over IP and antitrust appeal cases may bring inconvenience to parties domiciled outside of Beijing, as in the past these cases were usually appealed to a local high people’s court which was probably located at the domicile of at least one party to the disputes, while nowadays all the parties have to travel to Beijing for the appeal cases.

SPC has made certain arrangements to mitigate such inconvenience, for example, by (i) ordering the lower courts to prepare and transfer to the SPC IP Tribunal case files in an electronic copy, which will be more time efficient than courier delivery, (ii) holding hearings at the place where the infringement takes place or the first-instance trial court is located, and (iii) arranging evidence cross-examination or pre-trial hearings online.  Such measures have already been adopted by local courts and SIPO mainly for pilot purposes, and hopefully could be adopted as a regular practice by the SPC IP Tribunal for convenience of the parties and ease of proceedings.

Judges and Location of the SPC IP Tribunal

On 29 December 2018, SPC released a list of 27 judges for the IP tribunal, and more judges are expected to be appointed to this tribunal soon in view of its workload – there could be around 50 to 60 judges in total at the end of the day.  Amongst these 27 judges, ten are from the SPC, three from Beijing High People’s Court, two from Beijing IP Court, three from China National Intellectual Property Administration (“CNIPA”, formerly “SIPO”) and a few others from various local courts (specifically, one from Zhejiang, two from Shanghai, one from Jiangsu, one from Fujian, one from Shandong, one from Hubei, one from Hunan and one from Guangdong).  It is obvious that SPC is to set up a thumb-up team by pulling together judges from the most developed areas in terms of IP trial.

Situated in southwest Beijing, the SPC IP Tribunal is separate from other existing tribunals of the SPC (including No. 3 Civil Tribunal) and approximately 20 kilometers far away from the SPC.

Impacts of the SPC IP Tribunal

The SPC IP Tribunal is expected to centralize jurisdiction over the aforesaid patent and antitrust IP appeals, further harmonize IP adjudication rules and procedures based on precedents and facilitate increasingly consistent decisions on cases of similar nature.  The predictability of cases shall also be improved accordingly.

Furthermore, protectionism concerns, if any, that a local court may rule in favor of the party domiciled in its jurisdiction, would be largely mitigated as the appeal cases will be exclusively overseen by the SPC IP Tribunal which is generally deemed free from influence by all parties.  By the same token, forum shopping will also be eliminated to a large extent.