Prof. Xiaoqing Feng was invited to attend the seminar onDeclaration on Patent Protectionfrom Chinese Perspective from Jul. 15thto Jul. 16th, 2015. The seminar was jointly hosted by China Intellectual Property Research Association, Renmin University of China Law School, Intelelctual Property School of Renmin University, and Innovation and Competence Institute of German Max Planck Society. The Beijing Sunshine Intelelctual Property and Legal Development Foundation also participated in the hosting event. The seminar was held in the International Conference Room 601 of Mingde Law Building, Renmin University. TheDeclaration on Patent Protectionwas initiated by Prof. Reto M. Hilty who was also the Director of the Innovation and Competence Institute of German Max Planck Society. According to the introduction, the declaration “reflects the deep-level developing achievements of patent system within the globalization, emphasizes on the balance between globalization and localization, is the result of rational thoughts, and brings about critical thoughtful insights and value of reference to the innovative motivation and development in China.”
The seminar was hosted by the Director of China Intellectual Property Law Research Association, President of Intellectual Property School of Renmin University, and Prof. Chuntian Liu. Prof. Reto M. Hilty, the Director of the Innovation and Competence Institute of German Max Planck Society, specifically introduced theDeclaration on Patent Protection. During the intensive two-day discussion in a heartily atmosphere, experts and scholars at home and abroad conducted thorough research and analysis on subjects such as elements of patent issuing, the range of patent protection, patent compulsory license, and patent protection system. Prof. Xiaoqing Feng made specialized speech in the session of “the Implementation of Patent Protection System” (see the following outline).
The seminar reached a great success.
Appendix: the Speech Outline by Prof. Xiaoqing Feng
The Implementation of Patent Protection System: Pre-trial Injunction and Criminal Penalty
Content
I Pre-trial Injunction
(i) Contents and Comments onDeclaration on Patent Protection
(ii)Status quoof Patent Law and Relevant Issues in China
(iii) Latest Judicial Interpretation of China
II CriminalPenalty
(i) Contents and Comments onDeclaration on Patent Protection
(ii) Current Legislation in China
(iii) Comments on Patent Protection through Criminal Legislation
I Contents and Comments onDeclaration on Patent Protection
(i) About the Regulation on Preliminary Injunction
a. regulate the discretion of authority-in-charge (whether issuing, issuing type)
b. whether issue the injunction should consider the balancing of interests, and take the interests of multiple partiesinto consideration. For example, theDeclarationenlists patentee, accused infringer, the licensee, competitor, cooperative partner, consumer, the ultimate public, and individual case.
c. clarify the elements of issuing injunction in order to avoid the abuse of rights and the harm to legitimate transaction; the elements under consideration include validity of patent rights, the ratio of existing patent infringement, the range of exclusive rights; All the above is constructive to offer exact guidance on domestic legislation.
d. clarify the fair protection and procedure assurance to accused infringer; such as the opportunity for self-explanation.
（ii）General Observation
a. theDeclarationcontains pledging effect, and it reflects that objective and neutral scholars aim at achieving the Patent Protection System in an international level, especially the motivation to creation,the protection of innovative achievements, and encouragementon the spread of innovative achievements.
b. theDeclarationdeeply indicates and explains the balancing of interests incorporated into the Patent Protection System, which specifically through the confirmation and protection of rights, the limits of rights, patent rights and public benefits, and the temporary protection and the permanent fall into public domain.
c. theDeclarationcounts on TRIPs agreement, depicts the blueprint of reform and development on global patent protection system under the WTO system.
d. However, with the development of Intellectual Property in the field of international economy, technology, and trade, the Regional and international Protectionism gradually change. For instance, the Anti-counterfeiting Agreement and the TPP (Trans-pacific Partnership Agreement) lead by the US deeply demonstrate the gradually sophisticated international relationship on Intellectual Property. TheDeclarationemphasizes too much on the interpretation of the regulations in TRIPs agreement, which barely adapt to the practical international protection environment.
(ii)Status quoof Patent Law and Relevant Issues in China
Article 66Where a patentee or interested party has evidence to prove that someone else is committing or is going to commit an infringement upon the patent right, and its (his) lawful rights and interests will be damaged and are difficult to be remedied if the said infringement is not stopped in time, it or he may, prior to initiating a lawsuit, apply to the people's court for taking such measures as ordering the stop of the relevant act.
When an applicant files an application, it shall provide a guarantee. If it or he fails to do so, the application shall be rejected.
The people's court shall make a ruling within 48 hours as of its acceptance of an application. If it is necessary to extend the time limit in a special circumstance, the time limit may be extended for up to 48 hours. If a ruling is made to stop the relevant act, it shall be executed immediately. If any party refuses to accept the ruling, it (he) may apply for one review. The execution of the ruling is not suspended during the process of review.
If the applicant fails to lodge a lawsuit within 15 days after it takes such measures as ordering the stop of the relevant act, the people's court shall lift the said measure.
Where there are errors in an application, the applicant shall compensate the party against whom an application is filed for the losses caused by the stop of the relevant act.
Observations:
a.The regulatory contents tends to simplified, especially the elements and procedure of issuing preliminary injunction, and lack of specific regulations; meanwhile, the lack of procedure assurance such as the hearing process and rights on self-explanation on accused infringer.
b. The Chinese patent judicial practice still lacks of concentration and caution.
c. The problems under the system and judicial practice need further improvement. The aboveDeclarationshould be the focal guidance.
(iii) Latest Judicial Interpretation of China
Interpretation of Several Issues on the Application of Law Concerning the Reviewing of Dispute in Intelelctual Property and CompetitionCase by The Supreme People’s Court, and call for suggestions from the public.
The major regulatory contents:
Application party; choice of forum and the moving of pre-trial preservation; application and the written contents; reviewing timeline; reviewing procedure; contents of action preservation; the confirmation of irrecoverable damages; the guarantee measure; the removal of applicant’s guarantee measure and action preservation; term of preservation measure; reconsideration; decision on breach of preservation measure; removal of action preservation (withdraw a claim, due to changing circumstances, application by applicants); the treatment on false application.
Observations:
a. some Articles are immature and contain controversial issues even though multiple discussions;
b. whether “action preservation” is an appropriate phrase or not;
c. whether it is rationale to equal the competition dispute to the Intellectual Property dispute under the single concept of action preservation.
II Criminal Penalty
(i) Contents and Comments onDeclaration on Patent Protection
TheDeclarationexplains the reason why we should impose criminal penalty on patent infringement with caution: “the range of patent exclusive rights and the validity of patent itself usuallyare unstable, thus the criminal penalty might generate counterproductive effects on legitimate activity.”
Theargument fromDeclarationbrings about critical insights which enlightens the domestic legislation on the patent protection through criminal penalty.
(ii) Current legislation in China
The Criminal Law provides “the crime of counterfeiting patent”. Because of the 2008 Patent Law revision, the “the crime of counterfeiting patent” and the “pretending patent crime” were combined into “counterfeiting patent crime”. Therefore, the confirmation of “counterfeiting patent crime” must rely on the combination of Patent Law and Criminal Law.
(iii)Observation on Patent Protection through Criminal Legislation
One domestic argument emphasizes on criminal penalty over unauthorized exploitation of others’ patent (i.e. produce, sales of others’ patent products), substantial amount of damages by infringement, or “other severe criminal actions” (i.e. one academic paper published inStudies in Law and Business). As a matter of fact, such argument greatly extends the criminal penalty and leads to counterproductive effects on innovation and protection of legitimate transaction and trade.
The reinforcement of China Intellectual Property Criminal Protection is the major argument and assertion by the US, the EU, and other developed countries. The patent protection through criminal penalty should followthe general principle under the Criminal Law and with strict limitation so as to ensure the boundary of criminal defense.
