INSIGHTS Abstract
Ⅰ. Parallel filing of patent civil lawsuit and administrative adjudication Petition is generally impractical and conflicts with current regulations.
1. Article 10 of the "Patent Administrative Enforcement Measures (2015 Revision)" issued by the China National Intellectual Property Administration (CNIPA) stipulates that when a petitioner files an administrative adjudication petition, certain conditions must be met, including that the petitioner has not filed a lawsuit in the people's court for the patent infringement dispute.
2. According to the "Guidelines for Filing Patent Infringement Dispute Complaint Cases" issued by the Shenzhen Administration for Market Regulation (Shenzhen AMR), the petitioner is required to submit a "Commitment Letter" when filing a case, ensuring he/she has not filed a lawsuit in the people's court for the patent infringement dispute. The Beijing Municipal Intellectual Property Office imposes similar requirements in practice. The "Guidelines for Administrative Adjudication of Patent Infringement Disputes," published by the Tianjin Municipal Intellectual Property Office, also has the same requirement.
3. In practice, if the patents holder parallely initiates civil infringement litigation and administrative adjudication petition, the administrative adjudication process is likely be suspended to avoid conflicting results.
Ⅱ. Many regions have adopted an "Administrative Mediation + Judicial Confirmation" working linkage mechanism.
Many regions in China are adopting a working linkage mechanism that combines administrative mediation with judicial confirmation for patent infringement disputes.
1. Guangzhou
In November 2023, Guangzhou drafted local standards on linkage between lawsuit and mediation (adjudication) for patent disputes, emphasizing the coordination between administrative mediation and judicial confirmation for patent infringement disputes. Courts guide litigants to the local patent management department for administrative mediation before proceeding with civil infringement lawsuits.
2. Shenzhen
In 2021, the government bodies of Shenzhen took significant steps to enhance the resolution of intellectual property disputes by issuing comprehensive guidelines. These guidelines specifically targeted the integration of litigation, administrative adjudication, arbitration, and mediation processes. The focus extended to improving administrative mediation and judicial confirmation procedures, particularly in patent infringement cases. The guidelines empower local market supervision departments to seek judicial confirmation for mediation agreements across various intellectual property disputes. The overarching goal was to streamline administrative mediation practices, marking a pivotal advancement in Shenzhen's strategic approach to resolving intellectual property disputes efficiently.
In December 2022, the Shenzhen AMR and the Shenzhen Intermediate People's Court collaborated closely, jointly issuing the "Guidelines for Judicial Confirmation of Administrative Mediation Agreements in Intellectual Property Dispute Cases in Shenzhen". The primary objective was to provide transparent and standardized guidance to enhance the efficient and diversified settlement of intellectual property disputes in the region. Notably, this collaborative effort resulted in successful cases related to the judicial confirmation of administrative mediation agreements, specifically in patent infringement disputes. Records as of 2022 indicate that in partnership with the Shenzhen Intermediate People's Court, the Shenzhen AMR has effectively processed three cases involving the judicial confirmation of administrative mediation agreements in patent infringement disputes, and that the court is reviewing two additional cases, which undoubtedly shows that the working model of judicial confirmation of administrative mediation agreements for intellectual property disputes has been constantly moving towards standardization and normalization.
3. Beijing
In August 2023, the Beijing Municipal Intellectual Property Office took a significant step by issuing provisions about the administrative adjudication of patent infringement disputes. According to these provisions, during the handling of a case, if the involved parties reach an administrative mediation agreement under the panel's guidance, they can apply to the competent court for judicial confirmation of the mediation agreement. This move aligns with efforts to establish a more transparent framework for handling patent infringement disputes, providing a formalized process for parties to seek judicial affirmation of their administrative mediation agreements in Beijing.
Ⅲ. The linkage mechanism of administrative adjudication and judicial confirmation in patent infringement disputes faces legal hurdles, yet it signifies an exploratory direction at the policy level.
1. Legal Dilemma
Rights holders can initiate the administrative adjudication procedure for patent infringement disputes in anticipation of quickly obtaining an administrative adjudication decision to cease infringement and secure evidence through administrative enforcement means. Therefore, administrative adjudication is attractive to rights holders. However, if the rights holder and the suspected infringer cannot reach an agreement on the amount of compensation, they still need to obtain compensation for infringement through court proceedings. According to the design of the dual-track system of administrative protection and judicial protection of patents, the administrative agency cannot rule on the amount of infringement compensation, therefore, in the subsequent judicial proceedings (if any), the court still needs to comprehensively hear whether the infringement is established or not, and the administrative adjudication decision only serves as evidence.
2. Policy Exploration and Practical breakthrough
a. Local Regulations and Practical Aspects
Addressing the above legal dilemma, the national and local regional policies employing the "Administrative Mediation + Judicial Confirmation" model outline a mechanism for coordinating administrative mediation and judicial confirmation. However, a notable absence of provisions allows courts to confirm administrative adjudication decisions directly. In practice, local patent management departments may actively facilitate parties' negotiation, converting administrative adjudication cases into mediation cases to align with the working model mentioned above. Confronting the practical issue that judicial authorities do not directly recognize administrative adjudication decisions of patent disputes, some scholars propose improvements. They suggest enhancing the procedure of administrative adjudication by refining legal procedures and ensuring the legitimacy of results. Their suggestions involve establishing a connection between administrative adjudication processes and potential subsequent judicial procedures, laying the institutional groundwork for enhancing the certainty of administrative adjudication results. Additionally, direct judicial confirmation is proposed to guarantee enforceability for administrative adjudication results uncontested by the parties.
b. National Policy Level
The document jointly issued by the CNIPA and the Ministry of Justice on September 11, 2023, outlined a goal to enhance the connection between administrative adjudication mediation and judicial trial, aiming to establish a robust combined mechanism for these processes. According to a post on China Intellectual Property Information Net, there is a notable strengthening in the strategic planning for administrative adjudication work related to intellectual property. Directives from the "Opinions on Improving the Administrative Adjudication System and Strengthening Administrative Adjudication Work" focus specifically on intellectual property infringement and compensation disputes. National plans like the "Intellectual Property Strong Country Construction Outline (2021-2035)" and the "14th Five-Year Plan for National Intellectual Property Protection and Utilization" provide strategic directions for the next 15 years. Ongoing efforts include enhancing cross-regional and cross-departmental law enforcement mechanisms for administrative adjudication. Collaboratively, the CNIPA and the Ministry of Justice have initiated pilot programs to establish demonstration zones for the administrative adjudication of patent infringement disputes in 15 regions across the country. The pilot program reflects a comprehensive and forward-looking approach to improve the administrative adjudication landscape for intellectual property matters.
c. Breakthrough in Zhejiang Province: Establishing an "Administrative + Judicial" Unimpeded Transfer Mechanism for Patent Infringement Disputes
In 2021, a document titled "Notice on Promoting the Experience and Practices of National Patent Infringement Administrative Adjudication Construction" highlighted Zhejiang Province's innovative approach to handling patent infringement disputes. Zhejiang established a smooth "Administrative + Judicial" transfer system, linking the Intellectual Property Offices of Ningbo, Wenzhou, Shaoxing, Zhoushan, and Taizhou with the Intellectual Property Court of Ningbo. This mechanism enables the seamless transfer of patent infringement cases. When litigants file patent disputes online, the cases are transferred to the relevant municipal Intellectual Property Office for administrative adjudication. A comprehensive mediation process is then introduced to settle the amount of compensation disputes between the involved parties. Notably, the court accepts the administrative adjudication outcome regarding the infringement decision, effectively contributing to resolving patent disputes through administrative adjudication. This streamlined process plays a vital role in efficiently addressing patent-related infringement disputes.
Author: Zhenxian Zhang
With over a decade of extensive experience in patent practice, Zhenxian has amassed a wealth of knowledge in patent litigation, invalidation, search and analysis, consulting, and applications. He has successfully represented renowned companies such as OPPO, Xiaomi, ZTE, Midea, Baidu, BOE, and others in handling numerous cases involving patent invalidation, patent administrative litigation, and patent infringement litigation. Contact Zhenxian at zhenxian.zhang@peiweilaw.com.
* The article is prepared by the lawyer at Peiwei Law, a strategic alliance of PurpleVine IP in China. The article is authorized by Peiwei Law to publish on PurpleVine IP Group's platform.
