On March 12, 2017, Chinese Supreme People’s Court Chief Justice Zhou Qiang pointed out in his annual report to National People’s Congress that in 2016, the Supreme People’s Court issued judicial interpretation on trials of patent disputes and improved the protection of intellectual property rights rules. The “Jordan” trademark case highlighted China’s judicial protection of intellectual property rights. Beijing, Shanghai, Guangzhou Intellectual Property Courts explored the application of punitive damages, made efforts to solve the low cost of infringement, and the high cost of copyright protection. Nanjing, Suzhou, Wuhan, Chengdu set up intellectual property tribunals that have cross-regional centralized jurisdiction of intellectual property cases. The Chinese courts at all levels concluded 14.7 million intellectual property rights related cases in the first instance.
Two years after the establishment of the Beijing, Shanghai and Guangzhou IPR courts, China is considering a national level IPR appeals court. Chinese courts heard 133,863 IPR cases in 2014 with 30,309 cases handled by the Beijing, Shanghai and Guangzhou IPR courts since their founding. In 2015, China State Intellectual Property Office received 1 million patent applications.
On December 8, 2016, Chinese Supreme People’s Court ruled in Michael Jordan’s favor for his right in the Chinese version of his name “乔丹”， which was previously registered as a trademark by a Chinese company – Qiaodan Sports. However, the Court dismissed Jordan’s challenge to the Romanized version trademark, which is “Qiaodan”. The presiding justice is Vice-chief of the Supreme People’s Court, Tao Kaiyuan.
In an initial decision on November 16, 2016, Chinese State Intellectual Property Office Patent Reexamination Board invalidated Novartis’ Chinese Patent No. 01809781.2 related to treatment of advanced malignancies involving bone and tumor-induced hypercalcaemia and the drug Zometa (zoledronic acid) for lack of novelty and inventiveness. Please note that this decision can be subject to judicial review. Keep posted.
Eli Lily lost a patent infringement appeal at the Chinese Supreme People’s Court last week, 13 years after its initial lawsuit. The Court held that Changzhou Watson Pharmaceutical Co., Ltd. did not infringe Eli Lily’s Chinese Patent No. 91103346.7 directed to olanzapine manufacturing method. Although Eli Lily initially obtained a favorable judgement of infringement and damages of 3.5 million RMB, the Chinese Supreme People’s Court ruling overturned the initial judgement. Notably, the Chinese Supreme People’s Court hired a technical expert from the Patent Reexamination Board of SIPO. see trial video at http://ts.chinacourt.org/1124.html.
On April 14, 2016, Beijing Intellectual Property Office and Beijing Municipal Government Information Office jointly issued the 2015 White Paper on Intellectual Property Rights Protection in Beijing. White Paper shows that the courts received 13,939 first instance IPR civil cases, an increase of 24.1% from last year; concluded 11, 858 cases, an increase of 8.49% from last year. The first intermediate court and the intellectual property courts in 2015 received a total of 7948 new first instance administrative intellectual property rights cases, a reduction of 18.38% from last year. The Beijing Intellectual Property Office handled 126 patent infringement cases, an increase of 57.5% from last year; investigated 551 cases of counterfeit patents, an increase of 96.1% from last year.
On April 14, 2016, Shanghai Intellectual Property Court released the first white paper. According to the white paper, the Court in 2015 received a total of 285 cases involving foreign, Hong Kong, Macao and Taiwan parties, accounting for 16.13% of total cases of 2015.
The foreign parties to the cases involve the United States, Germany, France, Britain, Italy, Japan, South Korea and Taiwan, Hong Kong, a total of 15 countries and regions and include General Electric, Hewlett-Packard, BASF, Microsoft and other Fortune 500 companies as well as Burberry, BMW, BOSS, LV, Rafi, Gucci, Victoria Secret, ZOJIRUSHI and other international brands.
SIPO publishes new enforcement guidelines for comments on March 4, 2016. The new guidelines include:
(1) Patent Infringement Activity Identification Guideline(《专利侵权行为认定指南》);
(2) Patent Administrative Enforcement Evidence Guideline (《专利行政执法证据规则指引》);
(3) Other Patent Disputes Administrative Mediation Guideline (《其他专利纠纷行政调解指南》).
The deadline for comments is April 5, 2016, see http://www.sipo.gov.cn/tz/gz/201603/t20160304_1246757.html.
For those prefer or advocate judicial enforcement, the administrative enforcement appears to be here to stay. It is important to take advantage of the administrative procedures. According to available statistics, SIPO and its local offices handled 24479 patent-related disputes in 2014, and 21334 patent-related disputes in the first 10 months of 2015.
Shanghai IP Court accepted Apple’s filing of a lawsuit seeking a declaratory judgment of noninfringement against Shenzhen Baili Marketing Services Co. Ltd. regarding Chinese Design Patent No. 201430009113.9.
According to the Court, the suit for patent non-infringement is an extension of suit of patent infringement. Thus, the territorial jurisdiction requirements related to patent infringement lawsuits apply. Shanghai is the place where the alleged infringement occurs. Thus, Shanghai IP Court has jurisdiction under Article 28 of Chinese Civil Procedure Law.