By Justin Davidson & Connie
The patent law system in China has come a long way since the
introduction of the
PRC Patent Law
years ago. The law has been through two major sets of
revisions, with the most recent amendments bringing the law
into conformity with the requirements of the TRIPs Agreement.
We will concentrate on one of the newer aspects of the Chinese
system: pre-litigation injunctions for patent infringement.
The second revisions to the Patent Law in 2001 introduced
the possibility of interim injunctions. However, it was left to
a Supreme People's Court practice statement to provide some of
the details (hereafter, the Pre-Litigation Injunction
Provisions). The Pre-litigation Injunction Provisions are not
that extensive, however, and still leave scope for
interpretation by individual courts.
When can applications be made? Applications
may be made in advance of or during the course of patent
proceedings. If in advance, the only requirement is that if
successful, patent infringement proceedings must be commenced
within 15 days of execution of the injunction if the
pre-litigation injunction is to remain effective.
Who can apply? The patentee or other
interested parties may apply. Original registration
certificates and recordals of assignment bearing the red seal
of the State Intellectual Property Office (SIPO) are generally
expected to be produced. Applications made by a licensee should
ensure that licences are duly recorded at the SIPO, as the
court may not accept the licensed party as "interested" solely
on production of a patent licence.
To which court can applications be made?
Only certain People's Courts in Beijing, the provincial
capitals and several developed coastal cities have jurisdiction
to hear patent cases. Interim injunction applications must be
made to one of them. Court selection can be determined either
by reference to where the respondent is domiciled; where the
infringement took place; or where the damage is occurring. This
allows for an element of forum shopping within China.
Since there is no formal system of reported cases in China,
it is difficult to see how particular courts decide
applications. It is clear, however, that certain jurisdictions
look much less favourably on applications for interim
One consideration is the issue of local protectionism. If
the potential respondent is of any size, or well connected in
the particular city or province, then applicants may want to
consider a court other than the respondent's "home" court.
What needs to be included in the
application? Applications should be made in writing
and are not required to follow particular formats. The
application document must include all the supporting evidence
that specifies the applicant; respondent; details of the
patent; alleged acts of infringement; harm to which the
applicant is and will continue to be subject if the acts are
not halted; and the irreparable nature of such harm.
Form of evidence Chinese courts give great
credence to evidence that has been notarized as it then becomes
more difficult for a respondent to challenge. While it makes
for a time consuming preparatory process (having to involve a
notary at every stage of evidence collection), it can
significantly improve the admissibility and probative value of
evidence. Evidence originating from overseas must be legalized,
which can be a lengthy procedure for China and should be
Does security need to be provided?
Security, as in most countries, will be required to safeguard
the respondent's interests. Security is determined by reference
to the respondent's potential losses, which can be difficult to
ascertain at the time of application. A rule commonly adopted
is to require an equivalent amount to the damages being sought
by the applicant.
Security can be provided in a number of ways, most obviously
in cash, but also in the form of letters of guarantee,
mortgages, property deeds, etc.
Will the respondent hear about the
application? The proceedings are not automatically
inter partes, but the Pre-Litigation Injunction
Provisions do allow the court to "summon one or both parties"
to verify relevant facts. Applicants should therefore assume
that the respondent will hear about the application. Upon
making a ruling, the court must notify the respondent within
Is there any form of hearing? Applications
are decided based on the written papers submitted and there is
no procedure for a formal hearing. It is possible for a Chinese
court to summon one or both parties for an (informal) interview
to verify relevant facts.
How long does it take to hear if the application has
been successful? In theory, the Chinese court should
render a written ruling within 48 hours of accepting the
application for a pre-litigation injunction. In practice, it is
usually considered swift if a court renders a ruling within one
Is an appeal possible? If either party is
dissatisfied with the injunction ruling, it may within ten days
submit a one-time application for a "review" to be carried out
by a specially commissioned board of (different) judges from
the same court. In foreign-related patent cases, the assigned
judges will likely have already reached a prior consensus with
the other judges so a review is not usually recommended. There
is no appeal to a higher court.
To date there have not been a large number of interim
injunction applications by foreign holders of Chinese patents.
As China's courts become better understood by foreign holders
of Chinese patents, the number of these applications will