Other options to resolve patent infringement dispute, experiences from China

• Published date: 01 July 2023
• Author: Ma Biyu,Yu Dingming
• Date: 01 July 2023
• DOI: http://doi.org/10.1111/jwip.12273

Received: 25 June 2022

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Accepted: 11 March 2023

DOI: 10.1111/jwip.12273

ORIGINAL ARTICLE

Other options to resolve patent infringement

dispute, experiences from China

Ma Biyu

1

|Yu Dingming

2

1

Law School of Yunnan University, Kunming,

Yunnan, China

2

Law School of Yunnan University of Finance

and Economics, Kunming, Yunnan, China

Correspondence

Yu Dingming, Law School of Yunnan

University of Finance and Economics, #237

Longquan Rd, Kunming, Yunnan, China.

Email: macunxiucai@126.com

Funding information

National Social Science Fund Project under

Grant (20BFX136).

Abstract

While civil litigation (CL) was expected to play a major role

in resolving patent infringement disputes, administrative

adjudication (AA) has become the preferred channel for

patentees to protect their rights in China since 2015. The

number of AA cases significantly increased during the study

period of 2010–2021. Our research finds that AA does not

particularly favor patentees. By comparing the rules of CL

and AA, we also find that low cost and high efficiency are

the two major advantages of AA. Besides these traits, the

motivations for patentees to initiate AA are the lack of risks

in AA procedure and its valuable outcomes. Understanding

the real motivation for the application of AA could be a

reference for improving the patent infringement dispute

system.

KEYWORDS

administrative adjudication, advantages, civil litigation, Patent

infringement

1|INTRODUCTION

Patent law of the People's Republic of China was adopted in 1984, following which China implemented the dual‐

track protection mode for patents. Under this regime, when a patent was infringed upon, a patentee could apply to

the patent administrative departments to settle the dispute or initiate a civil action before the People's Courts. The

Patent Law (1984) recommended that administrative adjudication (AA) precedes civil litigation (CL). AA refers to the

action taken by administrative departments to settle infringement disputes. If the administrative department

confirms the infringement, it can order the infringer to stop such conduct and determine the extent of

compensation for damage caused. This can only be initiated through an application and judged by administrative

departments.

J World Intellect Prop. 2023;26:273–290. wileyonlinelibrary.com/journal/jwip © 2023 John Wiley & Sons Ltd.

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This rule was revised during the second amendment of the Patent law. Article 57 of the Patent Law (2000)

provided for two formal options to resolve infringement disputes: CL and AA, apart from negotiation; and CL was

adjusted to occur before AA. But the more significant revision was that the administrative departments' power to

award compensation was canceled; they were only allowed to mediate compensation disputes and order the

infringer to immediately stop the infringement conduct. If the party was dissatisfied with the decision, it could,

within 15 days of receipt of the notification, bring an administrative litigation to the people's courts. Those changes

prioritized CL over AA, thus identifying judicial protection as the main channel for dispute resolution.

The Outline of the National Intellectual Property Strategy of 2008 emphasized that the judicial protection of

intellectual property should play a leading role in dispute resolution. In recent years, the leading position on judicial

protection has been strengthened with judicial reform. Independent intellectual property courts as well as

intellectual property courts within the intermediate people's courts have been established, and the jurisdiction of

intellectual property appeal cases has been adjusted.

In 2014, China began to revise the Patent Law for the fourth time. In 2015, the Legislative Affairs Office of the

State Council released the Draft Revision of the Patent Law (submitted for review) for public comment.

1

This draft

revised the jurisdiction of patent administrative departments dramatically. This revision empowered them to take

the initiative to investigate infringement and punish group and repeated infringement, which triggered heated

discussion among academics. Supporters argued that AA had irreplaceable advantages,

2,3

whereas opponents

argued that considering the cost of administrative agencies and the decision of AA without final effect, AA's social

cost was high and actual efficiency no better than that of CL, it should be limited and gradually weakened.

4,5

The

fourth amendment of the Patent Law was completed in October 2020, but without most of the revisions in the

draft to retain the main role of judicial protection. Meanwhile, an investigation authority was added to patent

administrative departments that allowed them—at the request of patentees—to interview the relevant parties and

investigate information, conduct on‐site inspections, and inspect products related to the infringement.

It is obviously, patent laws try to preserve the important role of courts and keep administrative departments as

a support function when case comes to patent infringements. Surprisingly, since 2015, the patentee's choice to

pursue AA in patent infringement disputes has been significantly higher than that of CL since 2015. Figure 1shows

the number (in blue) of patent cases of the first instance accepted by the courts and the number (in red) of patent

infringement cases handled by administrative departments.

FIGURE 1 Number of patent cases settled by CL and AA. Source: The number of CL cases pertaining to patents

was sourced from the Judicial Protection of Intellectual Property Rights in Chinese Courts released by the Supreme

People's Court (https://www.court.gov.cn/upload/file/2022/04/21/16/19/20220421161928_73239.pdf). The

number of AA cases pertaining to patents was sourced from the Statistics on Administrative Adjudication of Patent

Infringement Disputes released by the China National Intellectual Property Administration (2021, https://www.

cnipa.gov.cn/col/col89/index.html). [Color figure can be viewed at wileyonlinelibrary.com]

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BIYU and DINGMING