By Yingchun Liu, King & Wood Mallesons’ Intellectual Property group
According to the relevant provisions of the Chinese Civil Procedure Law, the parties in a patent civil infringement case shall perform the court’s effective judgments, rulings, etc.. Where the party refuses to perform, the opposing party may apply to the court for enforcement within two years from the effective date of the judgments, rulings, etc., or the last day of the performance period specified in the judgments or ruling. Since the limitation of action of the application for enforcement shall be governed by the provisions of the Civil Procedure Law on the suspension and interruption of the statute of limitations, and it is also necessary to avoid the transfer of property by the party liable for compensation after the delay in time, the party winning the lawsuit shall communicate with the infringing party as soon as possible to request it to conduct the effective rulings. The winner may apply to the court for compulsory enforcement directly after communicating to no avail.
Similar to the compulsory enforcement of ordinary civil cases, the court of first instance of the patent civil infringement case or the court of the place where the property to be executed at the same level as the court of first instance shall conduct the compulsory enforcement for effective rulings of the patent civil infringement case. However, the compulsory enforcement for effective rulings of patent civil infringement cases carried out by the Beijing, Shanghai, and Guangzhou Intellectual Property Courts is somewhat special because these three intellectual property courts have not established executive tribunals. According to the relevant notice of the Supreme People’s Court in early 2015, the higher people’s court where the intellectual property court is located may appoint other intermediate people’s courts within its jurisdiction to enforce effective judgments on cases tried by the intellectual property court in the first instance.
According to the notice of the Supreme People’s Court, the Guangdong Higher People’s Court appoints the Guangzhou Intermediate People’s Court or the intermediate people’s court of the place where the property to be executed to enforce the effective judgments of the cases with their first instance tried in the Guangzhou Intellectual Property Court. The Beijing Higher People’s Court has adopted the provisions on issues related to the transition of jurisdictional adjustment of intellectual property cases to designate that the Beijing No. 1 Intermediate People’s Court shall enforce the effective judgments of the cases tried by the Beijing Intellectual Property Court in the first instance. The effective judgments of the cases tried by the Shanghai Intellectual Property Court in the first instance shall be enforced by the Shanghai No.3 Intermediate People’s Court.
With jurisdictional issues being duly solved, the procedures for applying for compulsory enforcement are relatively simple. The winner needs to file a case at the executive tribunal of a court with jurisdiction，the procedural documents generally required are listed as follows:
1.Proof documents of subject qualification of the applicant for compulsory enforcement: Where the applicant for compulsory enforcement is a Chinese citizen, photocopies of identity card shall be provided; where the applicant for compulsory enforcement is a Chinese legal person or other organization, proof documents of subject qualification shall include duplicates of sealed business licenses and the identity certificate of the legal representative. Where the applicant for compulsory enforcement is a foreign legal person or other organization, or a legal person or other organization from Hong Kong, Macao or Taiwan of China, proof documents of subject qualification shall include a certificate of good standing and the identity certificate of the legal representative, but it shall be noted that where the applicant for compulsory enforcement is a foreign subject, proof documents of subject qualification shall be notarized in the foreign country and certified by the embassy or consulate of China in that country, or shall undergone the legalization formalities prescribed in the relevant treaty concluded by China with that foreign country; Where the applicant for compulsory enforcement is a subject from Hong Kong, Macao or Taiwan of China, regarding a subject from Hong Kong or Macau, proof documents of subject qualification shall include the documents of appointed attesting produced by appointed attesting officers/notary department of Macao wherein the appointed attesting officers is Hong Kong/Macau lawyers appointed by Ministry of Justice. The documents of appointed attesting shall be examined by China Legal Service (HK/Macao) Ltd., which will affix a seal on and transmit the documents, and then send back to Chinese mainland for use. Where the applicant for compulsory enforcement is from Taiwan, notarization shall be conducted at the notary office of local court in Taiwan or the civil notary office under local court, then be examined by Straits Exchange Foundation and Association for Relations Across the Taiwan Straits which will affix a seal on and transmit the documents, and then be sent back to Chinese mainland delivered to the court after being notarized by China Notary Association.
2.Where the applicant for compulsory enforcement is a Chinese citizen, legal person or other organization, he/it may apply for compulsory enforcement to any court with competent jurisdiction by himself/itself, or appoint an agent to apply for enforcement with the power of attorney executed by the applicant. Where the applicant for compulsory enforcement is a foreign subject or a subject from Hong Kong, Macao and Taiwan of China, a Chinese lawyer shall be appointed to apply for enforcement. It shall be noted that the power of attorney for foreign-related patent civil infringement cases also requires the notarization and certification procedures described in item 1.
3.The compulsory enforcement application shall be prepared with one copy for each of one or more persons subjected to enforcement, and specify:
(A) The applicant’s name/name and address;
(B) The name and address of the person subjected to enforcement;
(C) The basis for enforcement, that is, the effective civil judgments, rulings, and mediation paper;
(D) Matters requested: the matters requested for enforcement may be behaviors or property, for example, apply to enforce the economic loss and reasonable costs of rights safeguarding determined within the judgment, to enforce the interest on the debt during the delay in performance, to enforce destruction of products in stocks and production molds determined within the judgment as well as expenses during the application for enforcement.
4.Original documents of effective judgments, rulings and mediation paper.
5.Certificates for effectiveness of judgments and rulings: In practice, when the enforcing court and the court of first instance are different courts, many enforcing courts require the applicant to provide certificates for effectiveness of judgments and rulings, no matter whether the judgment or ruling becomes effective in the first instance or the second instance. Some enforcing courts do not require certificates for effectiveness of judgments and rulings of the second instance while only require certificates for effectiveness of judgments and rulings of the first instance. Some courts of second instance will issue effective certificates upon request by the applicant for compulsory enforcement while the Supreme People’s Court will not issue certificates for effectiveness. Copies of the certificates of the service of the judgments and rulings, and/or the contact information of the corresponding judge or clerk of the Supreme People’s Court can be provided to request for verification by the enforcing court.
6.Property clues of the person subjected to enforcement (if any): It is preferred that the applicant for compulsory enforcement can provide clues about the property of the person subjected to enforcement, which can speed up the enforcement process. It is worth mentioning that if there is a concern that the suspected infringer may transfer property, or it is discovered that the suspected infringer may transfer or is transferring property before the filing of the lawsuit, or before the trial of the case, or during the trial process, the applicant shall apply for property preservation as soon as possible to avoid the case that the enforcement cannot be realized after winning a favorable judgment. If preservation measures have been taken against the property of the person subjected to enforcement when applying for compulsory enforcement, the relevant civil ruling shall be submitted.
It would not matter too much if it is difficult to provide clues about the property of the person subjected to enforcement. After the case is accepted by courts with competent jurisdiction, some courts will issue a court investigation order, and the applicant for enforcement shall hold the investigation order to obtain the evidence of property available for enforcement of the party subjected to enforcement; some courts will issue a property report order to order the party subjected to enforcement to provide property information and urge them to take the initiative to implement; some courts will retrieve the property evidence on their own without requirement for information retrieval fees. Especially in recent years, local courts have continuously strengthened information construction, which has greatly facilitated compulsory enforcement applicants. For example, the Guangzhou Court has been vigorously strengthening the construction of enforcement informationization as well as the linkage mechanism of enforcement. There is already a “balance execution inspection and control website“ relying on the “smart court“ platform of Guangzhou which has achieved the overall inspection and control of the city’s real estate, inquiry, freezing and deduction of deposits and wealth management products of state-owned banks and Ping An Bank, inquiry and control of population and vehicle information of public security system online, so that the enforcement judge can easily complete inquiries, freezes and deductions just in front of the office computer. Therefore, for example, the enforcement speed of the Guangzhou Intermediate People’s Court is very fast. There have been cases showing that it took only five months from filing to closing, which greatly exceeded the expectations of the applicant for enforcement [1].
In some cases, an alleged infringing product may be suspected of infringing on multiple patent rights of the rights holder, these multiple patent rights may involve inventions, utility models or designs, and may be conducted in different courts against different suspected infringing parties, in which some judgments has already taken effect in advance, while some judgments have not yet taken effect, and others may not have been judged. Even if subsequent cases have not yet taken effect or have not yet been judged, for an already effective judgment, the application for compulsory enforcement is allowed without waiting for judgments of subsequent cases to take effect.
In some cases, there will be some episodes during the enforcement process, for example, parties subjected to enforcement or interested parties filed a written objection to the enforcing court on some procedural and/or substantive issues such as jurisdiction, distribution and enforcement plan, auction measures, etc. In this regard, the enforcing court shall examine whether the reasons for the objection is established within 15 days from the date of receipt of the objection, and if established, issue a ruling to revoke and correct; if not established, issue a ruling to reject. The parties and interested parties who are dissatisfied with the ruling can apply for reconsideration to the higher court within the specified period, but the enforcement will not be stopped during the period of objection examination and reconsideration.
Of course, not all enforcement procedures can be conducted smoothly. In practice, there are more cases including: where a person who is not a party to the case raises any justified objection to the subject matter of enforcement (such as erroneous registration of property executed, etc.); where the citizen as the infringing party dies/the legal person or other organization terminates and needs to wait for the successor to inherit the rights or assume the obligations/the successor of the rights and obligations has not been determined, the enforcing court shall rule to suspend the enforcement for the effective judgment of the patent civil infringement case. Of course, there are other situations where the court believes that the compulsory enforcement shall be suspended, such as retrials. After the suspension disappears, the enforcement will be resumed.
However, in some cases, e.g., where the patent right is invalidated, the court shall order the termination of enforcement.
Rulings on suspension and termination of enforcement shall take effect immediately after being served on the parties.
Normally, the enforcing court will take corresponding measures for enforcement after the case is recorded in the court. Some courts perform the enforcement quickly, while others may delay the procedure for a long time because of the difficulty of finding the property available for enforcement of the person subjected to the enforcement. If the court with jurisdiction has not performed the enforcement for more than six months from the date of receipt of the application for enforcement, the applicant may apply to the higher court for enforcement. After examination, the higher court can either order the original court to enforce within a certain period of time, or decide to conduct the enforcement by itself, or order other courts to conduct it.
Where the property available for enforcement of the person subjected to enforcement is not easy to find, in order to speed up the enforcement procedure, the applicant may assist the court by providing information in a timely manner once is the applicant finds that the person subjected to enforcement owns property available for enforcement. One feasible way is to apply to the court to blacklist the person subjected to enforcement as soon as possible if it is found that the person is under bad-faith circumstances. Once the person is listed in the bad-faith list, the operations such as IPO of the person subjected to enforcement will be interfered, which will speed up the enforcement of the case[2]. In practice, some courts will also take the initiative to issue a consumption restriction order in the case that the person subjected to enforcement refuses to execute. After taking the above measures, the person subjected to enforcement will be restricted from high consumption as well as consumption behaviors that are not necessary for life and work , such as taking high-level transportation, checking in and carrying out high consumption in high-level hotels, purchasing real estate, building new expansions and high-level decoration of houses, leasing high-level office space, purchasing vehicles that are not necessary for business operations, traveling and vacationing, and children attending high-cost private schools, etc. The court will lift the consumption restriction order only with the consent of the applicant for enforcement or the person subjected to enforcement providing a real and effective guarantee. This can also greatly facilitate the resolution of enforcement problems.
Another thing to remind is that if received a notice from the court to receive the enforcement money, the applicant shall go to receive it as soon as possible to avoid affecting the court’s closing the case or side issues.
Generally speaking, with the advancement of Chinese legalization process, with the state’s attention to the enforcement of judgments in intellectual property cases, and the construction of informatization and enforcement linkage mechanism of local courts, moreover, with the application and strengthening of informatization system for investigation and control as well as joint credit punishment for default, the enforcing speed of judgments in patent civil infringement cases has been significantly accelerated compared with previous years, and it is believed that the period will be further shortened in the future.
Reference
[1] “An intellectual property enforcement case, why did the enforcement applicant choose the Guangzhou Intermediate Court?”, Tencent Website, August 30, 2019, https://new.qq.com/omn/20190830/20190830A0PHVA00.html.
[2] “Say no to “Defaulter” in the intellectual property case, Legal Weekly, May 3, 2018, https://baijiahao.baidu.com/s?id=1599405751588483783&wfr=spider&for=pc.