What are the types and specific causes of patent administrative litigation?To read!

2020-12-04

Patent litigation refers to the litigants and other litigation participants in the people's court involving the patent rights and related rights and interests of a variety of litigation, patent litigation is divided into civil patent litigation, criminal litigation and administrative litigation.In terms of the broad classification, patent administrative litigation mainly includes five categories, which are introduced in detail in this paper.


According to the provisions of the Administrative Procedure Law, the defendant of administrative litigation should be the administrative organ that makes the administrative act.In China, the administrative organs that take patent administrative actions mainly include the administrative department for patent under The State Council, the Patent Reexamination Board, the administrative department for patent affairs and the customs intellectual property enforcement agency.Therefore, in terms of broad classification, patent administrative litigation mainly includes five categories :

(1) patent administrative litigation with the administrative department for patent under The State Council as the defendant;

(2) Patent administrative litigation with the Patent Reexamination Board as the defendant;

(3) Patent administrative litigation in which the administrative department for patent affairs is the defendant;

(4) Patent administrative litigation in which the local government of the administrative authority for patent affairs is the defendant;

(5) Patent administrative litigation with the customs intellectual property enforcement agency as the defendant.These are described below.


1. Patent administrative litigation with the Patent Reexamination Board as the defendant


In accordance with the provisions of Articles 41 and 46 of the Patent Law, those who are not satisfied with the reexamination decision of the Patent Reexamination Board or the decision of the Patent Reexamination Board declaring the patent right invalid or maintaining the validity of the patent right may, within three months from the date of receipt of the notification, institute legal proceedings in the people's court.As a result, the patent reexamination board as the defendant's patent administrative litigation is the main category: maintain of the patent re-examination board makes a decision of rejection an administrative suit regarding a re-examination decision to refuse to obey, and the patent reexamination board declaring the patent right invalid all made, declaring the patent right invalid, maintain the patent is not satisfied with effective decision about the administrative litigation.


In theory, in addition to the above two kinds of most basic to the patent re-examination board for the patent administrative litigation, according to 60 of the implementation details of the patent law, article 63, article 67 and article 70 of the regulations, it may also include the patent reexamination board in the review procedure, invalidation procedure against other administrative filed patent administrative litigation, such as: will not be accepted and shall be deemed to have not been notice shall be deemed to have been withdrawn, and so on.But in practice, almost no such administrative litigation has occurred.It should be noted that those who are not satisfied with the procedural decisions on patent reexamination and invalidation made by the Patent Reexamination Board may, in addition to filing an administrative suit against the patent, file an administrative reconsideration.


To sum up, the patent administrative litigation with the Patent Reexamination Board as the defendant includes the following situations:

(1) A patent administrative suit initiated by the petitioner against the patent Reexamination Board's reexamination decision upholding the reexamination decision rejected by the patent administration department under The State Council;

(2) A patent administrative lawsuit brought by the claimant against the decision made by the Patent Reexamination Board declaring the patent right partially invalid and maintaining the validity of the patent right;

(3) A patent administrative suit initiated by the patentee against the decision made by the Patent Reexamination Board declaring the patent partially or completely invalid;

(4) A patent administrative suit brought by the petitioner against the procedural decision concerning patent reexamination made by the Patent Reexamination Board during the patent reexamination procedure;

(5) A patent administrative suit brought by the claimant to invalidation or the patentee against a procedural decision made by the Patent Reexamination Board concerning the invalidation of a patent in the patent invalidation procedure.


2. Patent administrative litigation with the administrative department for patent under The State Council as the defendant


The administrative department for patent under The State Council refers to the State Intellectual Property Office. The administrative acts undertaken by the State Intellectual Property Office mainly consist of four categories: the specific administrative acts relating to patent applications and patent rights undertaken by the State Intellectual Property Office;Specific administrative acts concerning compulsory license made by the State Intellectual Property Office;Any specific administrative act of the State Intellectual Property Office concerning the administration of patent agents;Other specific administrative acts undertaken by the State Intellectual Property Office.


To be specific, if an administrative suit is instituted against a person who refuses to accept the specific administrative act concerning patent application and patent right made by the State Intellectual Property Office, it mainly includes:

(1) The applicant for patent is not satisfied with the rejection of his application;

(2) Where the applicant for patent disputes the determination of the date of application;

(3) Where the applicant for patent is deemed not to have claimed the right of priority;

(4) Where an applicant for patent disagrees with the treatment of his or her application for a patent as one of confidential patents or the failure to treat it as one of confidential patents;

(5) Where the applicant for patent is deemed not satisfied with the withdrawal of the patent application;

(6) Where the applicant for patent is not satisfied with the right deemed to have waived the patent right;

(7) Where the patentee is not satisfied with the termination of the patent right;

(8) Where the applicant for patent or the patentee fails to have his or her rights restored because of delay in the relevant time limit, and the applicant or patentee refuses to have his or her rights restored upon request;

(9) Where the applicant for patent is deemed not to be dissatisfied with the sub-application;

(10) The applicant for the international application is not satisfied with the termination of the international patent application by the State Intellectual Property Office in accordance with Article 102 of the Rules for the Implementation of the Patent Law;

(11) The applicant of the international application is not satisfied with the decision made by the State Intellectual Property Office to review the application in accordance with Article 115 of the Rules for the Implementation of the Patent Law.


If an administrative suit is instituted against a specific administrative act relating to compulsory license made by the State Intellectual Property Office, it shall mainly include:

(1) Where the patentee is not satisfied with the decision granting a compulsory license for exploitation, or the requester is not satisfied with the decision rejecting the request for a compulsory license for exploitation;

(2) Where the patentee or the entity or individual that has obtained a compulsory license for exploitation is not satisfied with the ruling on the fee payable for exploitation;

(3) Where the patentee is not satisfied with the decision rejecting the request for a compulsory license to terminate exploitation, or the entity or individual receiving the compulsory license is not satisfied with the decision to terminate exploitation.


If an administrative suit is instituted against a specific administrative act made by the State Intellectual Property Office concerning the administration of patent agencies, it shall mainly include:

(1) The patent agency refuses to accept the punishment of revoking its patent agency;

(2) The patent agent refuses to accept the punishment of revocation of his patent Agent Qualification Certificate.

Other specific administrative acts undertaken by the SiPO mainly include decisions made after administrative reconsideration by the SIPO and decisions on compensation, etc.


Administrative proceedings involving the administrative department for patent affairs as the defendant

The administrative authority for patent affairs to point to by the people's governments of provinces, autonomous regions and municipalities directly under the central government and the patent management workload big and districts have practical processing capacity of the municipal people's government to set up the administrative authority for patent affairs, the management part of the management work is divided into two levels: the administrative authority for patent affairs at the provincial level and city (prefecture) level of the administrative authority for patent affairs.

The patent administrative litigation with the administrative department of patent affairs as the defendant mainly includes:

(1) The claimant does not accept the decision made by the administrative authority for patent affairs;

(2) The party concerned is not satisfied with the decision made by the administrative authority for patent affairs on whether the infringement is established or not;

(3) The party concerned is not satisfied with the decision of the administrative authority for patent affairs on the punishment of counterfeiting patent;

(4) The party concerned refuses to accept the compulsory measures taken by the administrative authority for patent affairs to seal up or detain the product suspected of counterfeiting patent;

(5) The party concerned is not satisfied with the decision made by the provincial administrative department for patent affairs on the patent agency or patent agent other than the revocation of the patent agency or the revocation of the qualification of the patent agent.


It is important to note that the city not divided into districts or county people's government to set up the administrative authority for patent affairs, although can undertake such as formulated regional patent work planning, promote the patent application, patent information related to patent management work, but it does not have separate patent administrative law enforcement functions, namely can't alone to deal with patent infringement dispute and penalties on fake patent conduct, can only accept prefecture level administrative authority for patent affairs to perform the counterfeit patent behavior investigation and patent dispute mediation work (note that can't accept commissioned by the handling of patent infringement dispute).In the receiving commissioned the counterfeit patent behavior investigation process, still to assume legal responsibility of the administrative authority for patent affairs, the party if not satisfied with the results filed patent administrative litigation, should be in the prefecture level department for the administration of patent work, and not in a county-level city or county where the department for the administration of patent work for the defendant.


4. Patent administrative litigation in which the local government of the department for the administration of patent work is the defendant


Local governments usually does not become a patent administrative lawsuit defendant, however, the administrative authority for patent affairs to the specific administrative act, the parties to the administrative authority for patent affairs belongs to the people's government to apply for administrative reconsideration, and the people's government's decision to change the decision made by the administrative authority for patent affairs, the parties is not satisfied with the it, with the local government to institute an administrative lawsuit defendant.


V. Patent administrative litigation with the customs intellectual property enforcement agency as the defendant

The patent administrative litigation with the customs intellectual property enforcement agency as the defendant mainly includes:

(1) The holder of the intellectual property right refuses to accept the refusal of the General Administration of Customs to record the intellectual property right by the Customs;

(2) The holder of the intellectual property right refuses to accept the cancellation of the intellectual property registration by the General Administration of Customs;

(3) The intellectual property right holder refuses to accept the customs' rejection of the application to detain the goods suspected of infringement;

(4) The parties are not satisfied with the determination by the Customs of whether the infringement of the goods detained is established;

(5) The party concerned disagrees with the decision made by the Customs to confiscate and detain the goods.

Source: IPRdaily Chinese website (Iprdaily.cn) By Huang Xiong

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