The Supreme Court has recently revised 18 judicial interpretations on intellectual property due to the corresponding changes in other relevant laws. Shanghai Dongjin draws a conclusion for the main alterations in those 18 judicial interpretations listing below:

 

1. Patent infringement dispute cases

• Add Civil Code of the People’s Republic of China as the guideline and basis for ruling.
• Use “Patent administrative department of the State Council” to replace the term “Patent reexamination board”.

 

2. Application of law in the trial of cases on patent disputes

• There are eight issues added in the field of patent disputes which are, ownership of patent application right, dispute over the use fee for the temporary protection of invention patent, damage liability dispute for act preservation, damage liability dispute for property preservation, confirmation of non-infringement of patent right, restitution of expense after invalidation of patent right, damage liability dispute for malicious patent litigation and standard necessary patent fee dispute.
• Expand the horizon of “legal rights” with the scope of “works” and “geographical indications”.
• Alter the limitation of action for patent infringement to the period of three years.

 

3. Jurisdiction and application of trademark cases Ⅰ

• New three issues added in the scope of trademark cases which are, confirmation of non-infringement of trademark right, trademark agent contract dispute and damage liability dispute for stopping infringing exclusive registered trademark.

 

4. Application of laws in the trial of cases on civil trademark disputes

• While both the actual loss of the right’s owner and the licensing fee of the registered trademark are difficult to confirm, the compensation fee shall be determined under another consideration as the subjective fault of the infringer.
• Alter the limitation of action for exclusive registered trademark infringement to the period of three years, and the date shall be counted when the due obligator is found out.

 

5. Application of law to the trial of disputes over the protection of famous trademarks

• The definition of famous trademark is changed from “well-know” into “familiar”.
• If the defendant's registered trademark exceeds the time limit for invalidation, the people's court may not support the plaintiff's request.

 

6. Civil disputes over the conflict between registered trademark or enterprise name with prior right

• Add Civil Code of the People’s Republic of China as the guideline and basis for ruling.
• Adjust the corresponding article numbers which are quoted from the Civil Procedure Law of the People's Republic of China and the Anti-Unfair Competition Law of the People's Republic of China.

 

7. Jurisdiction and application of trademark cases Ⅱ

• Use “China National Intellectual Property Administration” to replace the term “Industrial and Commercial Administrative Regulation Department” or “Trademark Office”.

 

8. Administrative cases involving trademark authorization and confirmation

• Use “China National Intellectual Property Administration” to replace the term “Industrial and Commercial Administrative Regulation Department” or “Trademark Review and Adjudication Board”.

 

9. Property preservation for registered trademark

• Longest period of property preservation for registered trademark is altered from six months into one year.

 

10. Application of laws in the trial of civil disputes over copyright

• Use “non-corporate organization” to replace the term “other organization”.
• When each higher court determines that the grassroots court in its jurisdiction shall have power over the civil dispute of copyright on first trial, it shall apply to the Supreme Court for approval.
• Alter the limitation of action for copyright infringement to the period of three years, and the date shall be counted when the due obligator is found out.

 

11. Civil dispute cases involving infringement of the right of dissemination on information networks

• The right owner shall submit preliminary evidence of infringement to the network service provider.
• The necessary measures taken by the network service provider could be determined on the preliminary evidence of infringement and the type of service.

 

12. Dispute cases on new varieties of plants

• Eight categories of new varieties of plants are included within the litigation scope, which are application for rejection of administrative review, fraud of new variety of plant from others, authorship dispute for cultivating party, temporary protection fee dispute, administrative penalty dispute, administrative review dispute, administrative compensation dispute and administrative award dispute.
• Cases of new varieties of plants under the jurisdiction of the Second Intermediate Court of Beijing were changed to Beijing Intellectual Property Court for first trial.
• The appeals against new varieties plants cases shall be heard by the Supreme Court.
• Defendant in cases of application for rejection of administrative review shall be the review and approval administration.

 

13. Infringement of rights for new varieties of plants

• The identification of specialized problem is only an opinion, not a conclusion.
• Preservation shall be brought before the proceedings are instituted.
• Loss of the right’s owner shall be the actual loss.
• If the loss of the right’s owner or the benefit obtained by the infringer is difficult to determine, it may be reasonably determined with reference to the multiple of the licensing fee for the new variety of plant.
• Reasonable expenses paid by the right’s owner to stop the infringement shall be calculated separately.
• RMB three million Yuan shall be the upper limit when the amount of compensation is difficult to confirm.
• Intentional infringement of right on new varieties of plants from others, if the circumstance is serious, the amount of compensation would be determined more than twice or less than three times.

 

14. Civil cases on anti-unfair competition

• Add Civil Code of the People’s Republic of China as the guideline and basis for ruling.

 

15. Civil dispute cases arising from monopolistic conduct

• Intellectual property court would gain the jurisdiction power for first trial monopoly civil dispute case.
• The identification of specialized problem is only an opinion, not a conclusion.
• Alter the limitation of action on claim for damage arising from monopolistic act to the period of three years, and the date shall be counted when the due obligator is found out.
• For more than twenty years from the date of damage to the rights, the court shall not protect them, but those right’s owners who have special circumstances shall apply for an appropriate extension.

 

16. Civil disputes over domain names of computer network

• If the infringer intentionally infringes and the circumstance is serious, the plaintiff would have the right to request punitive compensation from the court.

 

17. Disputes over technology contracts

• If one party adopts fraudulent means and the other party enters into a contract against the true intention, the due contract shall be revoked.
• The licensor of the invalid contract shall be responsible for the return of the fee paid by the technical secret user to the licensor.
• The scientific and technological achievements in the technology transformation contracts should be with practical value.
• If the parties did not agree on the time limit for the implementation of the patent or the use of technical secret or the agreement is unclear, the implementation of the licensee shall also not be limited by the time limitation.
• Relevant provisions of the technical secret licensing contract shall apply for the licensing contract between the parties before the patent application is made public.

 

18. Jurisdiction of the intellectual property courts of Beijing, Shanghai and Guangzhou

• The appeals of first trial and reconsideration cases that should be heard by the Supreme Court according to law are only heard by the Supreme Court.

 

All these 18 revised judicial interpretations become effective on the date of January 1^st, 2021.

 

If you want to read the complete article, you can refer to the below link (in Chinese only): http://www.shanghaiinvest.com/cn/viewfile.php?id=15675

 

If you have any question, please contact me. 

Mr. Mike Chang (Partner)

TEL: 0086-21-68868321

Email: mikechang@shanghaiinvest.com