By Xu Jing King and Wood Mallesons’ IP group
On May 13, the Inter-Ministry Joint Conference Office of State Council of China for Implementing IP Strategy announced the Proceeding Plan of 2020 for Deeply Implementing the National IP Strategy and Accelerating to Build an IP Powerful Country (“the Plan 2020”), revealing reformation arrangements relating to IP for the year of 2020 on multiple aspects, including to deepen reformations in the fields relating to IP and to enhance protections for IP. The Plan 2020 includes the following aspects, which is closely related to technology-related IP including patents and technical secrets.
- Regarding legislations, the State Administration for Market Regulation (“SAMR”) and the China Intellectual Property Administration (“CNIPA”) will focus on amendments for the Patent Law, the Implementing Regulations of the Patent Law and Guidelines for Patent Examination. The Supreme People’s Court (“SPC”), the Supreme People’s Procuratorate (“SPP”) and the Ministry of Public Security (“MPS”) will proceed with drafting of judicial interpretations for IP civil and criminal cases, including those on disputes relating to patents and trade secrets.
- Regarding to systems for enforcement, eight reformation pilot areas including Jingjinji (Beijing, Tian Jin and Hebei), Shanghai, Guangdong (Pearl River Delta), Anhui (Hefei, Wuhu and Bengbu), Sichuan (Chengdu, Deyang and Mianyang), Wuhan of Hubei, Xi’an of Shaanxi, Shenyang of Liaoning will carry out reformations of “establishing remote trans-regional IP litigation platform” and “establishing IP notary service platform for providing comprehensive evidence collection service”.
- Regarding patent prosecutions, on one hand, CNIPA will enhance the capability for patent examination, improve quality assessment mechanism and reduce the examination period for high-value patents to no more than 16 months, as well as improve modes of Concentrated Examination, Prioritized Examination, Patent Prosecution Highway and Deferred Examination, to improve the quality and the efficiency for patent examinations. On the other hand, CNIPA will urge the local governments to cancel subsidies and awards for utility model and design patents, to enhance policy guidance on patent quality.
- Regarding judicial protections, SPC will further promote “three-in-one” mode for IP civil, administrative and criminal cases (i.e. concentrated jurisdictions for these three types of cases in one court), enhance guiding functions of IP cases and try reformations on separating civil procedures for complicated and simple IP cases. SPP will improve the supervision mechanism for IP cases, explore for establishing concentrated jurisdictions for IP criminal cases and strengthen the guidance on pilot projects regarding notifying rights and obligations to the right owners in IP criminal cases. MPS will enhance the enforcements in IP criminal cases. Relevant ministries will also establish and improve the mechanisms for information sharing, case reporting and case transferring with the judicial authorities, perfect the criteria and procedures for case transfer, and enhance the source tracing and chain-like enforcement against infringements and counterfeits.
- Regarding administrative protections, the general customs will continue to promote the pre-confirmation system for IP status of import & export goods, and allow the clearance for patent-dispute-involved goods with counter guarantees provided by third parties. CNIPA will improve the guiding system for administrative enforcement, proceed with exemplary buildings of administrative enforcement on patent infringement and explore on technical supporting system for inspection and appraisal in IP infringement disputes, carry out the assessment and announcement for typical IP administrative cases, and build the interconnected mechanism between the administrative patent infringement proceeding and the patent invalidity proceeding.
The Inter-Ministry Joint Conference Office of State Council of China for Implementing IP Strategy is an office led by CNIPA, jointly established by 31 ministries and authorities including SPC, SPP, MPS, SAMR and Copyright Office. The office is intended for coordinating among the ministries and authorities to deeply implement the national IP strategy and accelerate the building of an IP powerful country.
We believe the above Plan 2020 announced by the Joint Conference Office is a great news for right owners of IP including patents and technical secrets. The amendment to the Patent Law is expected to make the punitive damages come into being for patent infringement cases, which will be favorable for deferring malicious infringements including repeated infringements. The infringements and counterfeits will be further stricken and the IP market environment in China will be improved through the enhanced criminal enforcements by MPS and information sharing among judicial authorities. The case guiding function emphasized by courts and administrative authorities, and the “three-in-one” mode promoted in court system will be helpful for unifying the adjudicating criteria for IP cases. The policy guidance of CNIPA is expected to further improve efficiency and quality for patent examinations, and to reduce the harassment of some right owner’s malicious enforcements with low-quality utility model or design patents. The buildings of trans-regional remote litigation platform and comprehensive notary service platform will create more choices and convenience for right owners in regard to enforcement and evidence collection. The separation of procedures for complicated and simple cases may be helpful for lessening the period for civil enforcement. We will continue to follow up and share the updates of ministries and authorities.