Page 92 - 2016_WhitePaper_web
P. 92
6 White Paper on the Business Environment in China
The Decision of the Supreme People’s Court on owner’s actual loss due to infringement can be calcu-
Amending the Several Provisions of the Supreme lated by multiplying the sum of the infringed products
People’s Court on Issues concerning the Applica- sold in the market by the reasonable profits of every
tion of Law in Trial of Patent Case Disputes patent product.
According to the Patent Law, if the obligee’s loss, the
The Decision of the Supreme People’s Court on Amending the infringer’s profits, and patent license fee are all impossi-
Several Provisions of the Supreme People’s Court on Issues con- ble to determine, the people’s court may, by taking into
cerning the Application of Law in the Trial of Cases of Patent consideration such factors as the type of patent, nature
Disputes (hereinafter referred to as “Decision”), was adopted at and particulars of the infringement, etc., decide on a
the 1641st Session of the Judicial Committee of the Supreme compensation in the sum of not less than RMB 10,000
People’s Court on January 19, 2015, and come into force on but not more than RMB 1,000,000.
February 1, 2015. The highlights of this judicial interpreta-
tion are as follows: The State Council issued a special opinion on
fighting against internet intellectual property
1. Cancels the obligation of the plaintiff to initially sub- infringement
mit a patent evaluation report while filing a lawsuit,
and instead, revises it to “can submit”. On November 12, 2015, in order to handle the IPR in-
It grants the people’s court the authority “to demand fringement and illegal activities in production and sale of
the plaintiff to submit an evaluation report”. The plain- counterfeit and shoddy products in the internet field and to
tiff ’s “obligation to submit initially” in the original Pro- strengthen the management of infringing and counterfeiting
visions is amended to the present “should submit the acts on the internet, and create an open, regulated, honest
report as required”, and provides the plaintiff ’s liability and safe internet transaction environment and promote the
and result for refusing to submit such report without e-commerce’s healthy development, the State Council issued
justifiable causes. On the one hand, since at the current the following opinion:
stage, the plaintiff lacks effective means of relief when
facing the results of the research report or patent assess- The Opinion represents the determination of the Chinese
ment report that are unfavourable to the plaintiff, if to government to handle online intellectual property right in-
submit this report initially is the obligation even the fringing acts and also indicates the direction of legislation in
condition for lodging an action, then it might occur respect to intellectual property rights at the next stage of de-
that the plaintiff ’s legitimate interests are not effective- velopment.
ly protected due to the mistake in the research report or
patent assessment report. This revision better protects 1. Crackdown on online sales of counterfeit and shod-
the plaintiff ’s legitimate interests. dy products. Specifically, there will be strengthened
sample inspection of products sold online and an
2. Establishes the donation rule to prevent “two heads online customer complaints system to protect con-
off ”. sumers’ after-sale rights in internet transactions. The
Article 5 of the Interpretation establishes the “donation emphasis will be on consumer products and produc-
rule”, which means that where a technical scheme is re- tion resources that are principally reflected by society,
corded in the specification, yet fails to be described in concern health and safety, and influence public safety.
the patent claim, it shall be deemed donated to the pub- Moreover, there will be the integration of combating
lic by the patent holder, and may not be claimed for pro- infringing and counterfeiting acts with the daily su-
tection during the litigation. The underlying rationale is pervision of the post industry. Postal enterprises and
that patent applicants will use more general terms when express enterprises will strengthen the supervision and
describing the technology in their claims, while trying to qualification examinations of contractual customers
expand the explanation when it comes to Specifications including e-commercial enterprises, etc. In addition,
and Figures, to more easily obtain a patent license. the disposal of internet infringing and harmful coun-
terfeiting information will be conducted according to
3. Establishes a method of calculation of compensation laws and regulations.
damages in patent infringement cases.
The Patent Law provides that the patent owner’s actual 2. Crackdown on online infringement and pirating.
loss due to infringement can be calculated by multiply- Strictly crackdown on illegal infringing acts that use
ing the total reduced sales arising from infringement the internet to commit crimes, focus on protection of
by the reasonable profits in every patent product. If it IP rights including trademark, copyright and patent
is hard to determine the total reduced sales, the patent rights. Reinforce the investigation and punishment
of sale of products that counterfeit well-known trade-
92
The Decision of the Supreme People’s Court on owner’s actual loss due to infringement can be calcu-
Amending the Several Provisions of the Supreme lated by multiplying the sum of the infringed products
People’s Court on Issues concerning the Applica- sold in the market by the reasonable profits of every
tion of Law in Trial of Patent Case Disputes patent product.
According to the Patent Law, if the obligee’s loss, the
The Decision of the Supreme People’s Court on Amending the infringer’s profits, and patent license fee are all impossi-
Several Provisions of the Supreme People’s Court on Issues con- ble to determine, the people’s court may, by taking into
cerning the Application of Law in the Trial of Cases of Patent consideration such factors as the type of patent, nature
Disputes (hereinafter referred to as “Decision”), was adopted at and particulars of the infringement, etc., decide on a
the 1641st Session of the Judicial Committee of the Supreme compensation in the sum of not less than RMB 10,000
People’s Court on January 19, 2015, and come into force on but not more than RMB 1,000,000.
February 1, 2015. The highlights of this judicial interpreta-
tion are as follows: The State Council issued a special opinion on
fighting against internet intellectual property
1. Cancels the obligation of the plaintiff to initially sub- infringement
mit a patent evaluation report while filing a lawsuit,
and instead, revises it to “can submit”. On November 12, 2015, in order to handle the IPR in-
It grants the people’s court the authority “to demand fringement and illegal activities in production and sale of
the plaintiff to submit an evaluation report”. The plain- counterfeit and shoddy products in the internet field and to
tiff ’s “obligation to submit initially” in the original Pro- strengthen the management of infringing and counterfeiting
visions is amended to the present “should submit the acts on the internet, and create an open, regulated, honest
report as required”, and provides the plaintiff ’s liability and safe internet transaction environment and promote the
and result for refusing to submit such report without e-commerce’s healthy development, the State Council issued
justifiable causes. On the one hand, since at the current the following opinion:
stage, the plaintiff lacks effective means of relief when
facing the results of the research report or patent assess- The Opinion represents the determination of the Chinese
ment report that are unfavourable to the plaintiff, if to government to handle online intellectual property right in-
submit this report initially is the obligation even the fringing acts and also indicates the direction of legislation in
condition for lodging an action, then it might occur respect to intellectual property rights at the next stage of de-
that the plaintiff ’s legitimate interests are not effective- velopment.
ly protected due to the mistake in the research report or
patent assessment report. This revision better protects 1. Crackdown on online sales of counterfeit and shod-
the plaintiff ’s legitimate interests. dy products. Specifically, there will be strengthened
sample inspection of products sold online and an
2. Establishes the donation rule to prevent “two heads online customer complaints system to protect con-
off ”. sumers’ after-sale rights in internet transactions. The
Article 5 of the Interpretation establishes the “donation emphasis will be on consumer products and produc-
rule”, which means that where a technical scheme is re- tion resources that are principally reflected by society,
corded in the specification, yet fails to be described in concern health and safety, and influence public safety.
the patent claim, it shall be deemed donated to the pub- Moreover, there will be the integration of combating
lic by the patent holder, and may not be claimed for pro- infringing and counterfeiting acts with the daily su-
tection during the litigation. The underlying rationale is pervision of the post industry. Postal enterprises and
that patent applicants will use more general terms when express enterprises will strengthen the supervision and
describing the technology in their claims, while trying to qualification examinations of contractual customers
expand the explanation when it comes to Specifications including e-commercial enterprises, etc. In addition,
and Figures, to more easily obtain a patent license. the disposal of internet infringing and harmful coun-
terfeiting information will be conducted according to
3. Establishes a method of calculation of compensation laws and regulations.
damages in patent infringement cases.
The Patent Law provides that the patent owner’s actual 2. Crackdown on online infringement and pirating.
loss due to infringement can be calculated by multiply- Strictly crackdown on illegal infringing acts that use
ing the total reduced sales arising from infringement the internet to commit crimes, focus on protection of
by the reasonable profits in every patent product. If it IP rights including trademark, copyright and patent
is hard to determine the total reduced sales, the patent rights. Reinforce the investigation and punishment
of sale of products that counterfeit well-known trade-
92
