Managing Intellectual Property IP in Asia Forum 2015 IP Infringement Enforcement Strategies China Munich, 11 June, 2015
Ms. Lena Shen lenashen@sanyouip.com Ms. Lena Shen is a partner of Beijing Sanyou Intellectual Property Agency Ltd., the first private patent firm and a top 10 IP law firm in China. She received education in both China and UK and received an LLM degree in IP laws from Queen Mary, University of London. Her main practice is IP litigation and trademark prosecution. Ms. Shen has involved a number of IP litigation and other enforcement actions and meanwhile is of rich experience on trademark registration, review, opposition, cancellation, etc. Ms. Shen has participated in a Global IP Project to collect and analyze the IP infringement statistics and is responsible for the China data. She is also the Chair of CET 9 (Asian Group) of FICPI.
Dr. Paul Georg MAUÉ Paul is the head of IP in Straumann, a company producing inplant dental products. Before joining Straumann, Paul worked in a few other pharm and medical companies including Ciba, Sandoz and Syngenta. Paul is a European patent attorney. He is the President of the Association of Patent Attorneys in Swiss Industry since 1998 and is active within European Patent Attorney Association.
Dr. Oliver Pfaffenzeller Oliver heads an IP team for low and medium voltage products of Siemens AG. He is responsible for reporting about Chinese Patent Law within the patent department of Siemens. In this capacity, he advises on patent strategies for China and provides training. He also gives courses at Forum Institute on Chinese patent law and published articles on Chinese patent law issues. Plus, he speaks good Chinese. Oliver is a European Patent Attorney and German Patentassessor.
Mr. Arndt Hamann Arndt is the Senior IP Counsel of Saurer Germany GmbH & Co. KG, a Textile machinery company and is also a European and German patent attorney. Arndt has been working in the IP field for over 40 years and has rich experience in enforcement IP rights in China.
Mr. Xiaolin Dang dangxiaolin@sanyouip.com Xiaolin, partner of Beijing Sanyou Intellectual Property Agency Ltd., is a leading patent attorney in China, having received quite a few awards from SIPO and ACPAA such as the titles of Leading Role in IP Field, and Highlevel Talent in Patent Agency Industry. Xiaolin graduated from Peking University and studied in Kent Law School in Chicago, receiving an LLM degree in IP laws. He is very experienced in patent litigation and prosecution.
Overview
The Chinese Court System Court court system 1 Supreme Court Special courts including military courts, maritime courts and railway courts 31 High Courts Over 350 Intermediate Courts Over 3000 Basic Courts *more courts with jurisdiction over TM infringement litigation cases than patent infringement litigation cases
The Chinese Litigation System Courts Bifurcated system Two-instance trial system No jury; panel of 3 or 5 judges (in first instance, may include one lay person named as people s juror) Technical expert likely to get involved; in IP courts, Technical Researcher system will be introduced three specialized IP courts newly established in Beijing, Shanghai and Guangzhou; additionally over 110 courts with jurisdiction over patent infringement cases, which have special IP tribunals; Forum Shopping possible
Actions other than court proceeding Local IP Office action for patent 1. Applicable for patent (invention, utility model and design) 2. Prima facie infringement evidence is sufficient to start the action 3. No damage AIC action for TM 1. Applicable for TM infringement 2. Quick 3. Prima facie infringement evidence is sufficient to start the action 4. Powerful investigation 5. No damage border measurescustoms action for both patent and TM 1. Applicable for import/export of infringing products 2. benecial to record IPR at customs 3. seizure of goods (ex-officio or upon requested)
Pre-Litigation Considerations China Forum shopping possible and important check the validity of your IPR -patent: stable? -TM: continuous use? what is the key goal of your action? negotiation/warning letter go first? Consider declaratory judgment litigation available in China laches: 2-year time limit case evaluation: chance to win? chance to get damage? cost estimation? litigation strategy: target choice; jurisdiction choice any alternative solution?
Proving your case basic rule: who claims, who proves! --formality requirement strict: evidence formed out of China required notarization and legalization; foreign language required to be translated into Chinese --documentary evidence and physical objects weigh more than witness statement; however, experts' opinions invited by the court are normally well respected Evidence Preservation Procedure available evidence preservation request may be submitted with the court with the conditions that: 1. the evidence may possibly disappear; or 2. it may be difficult to collect the evidence later on
Comparison Invention Utility Model Design Patentable subject matter Product & method Product (shape + structure) Product (Design) Examination procedures Prosecution period Preliminary examination & Substantive examination Preliminary examination only (substantial requirements + possible novelty examination) 3-5 years Within 1 year (8-10 months) Preliminary examination Within 1 year (about 6 months) Cost Expensive Inexpensive Inexpensive Patent Term 20 years 10 years 10 years
Bifurcated system Combined Patentee Win Rate From Infringement Litigation and Invalidation Trials, 2007 2012 Infringement litigation Invalidation trial Infringement win rate invalidation trial win rate Invention patents 68% 48% 33% Utility models 73% 44% 32% Design patents 86% 44% 38%
How likely you will win to litigate in China? Patentee Win Rates by Patent Type for cases concluded in 2007 2012 (win/win+lose) (note: the above data comes from the sample cases we collected for 2007-2012)
How likely you will win to litigate in China? Patentee Win Rates by Patent Type and Domestic/Foreign Plaintiff, 2007 2012 (win/win+lose) (note: the above data comes from the sample cases we collected for 2007-2012)
developments --the first three IP courts established in Beijing, Shanghai and Guangzhou in 2014 --Some courts (e.g., Qingdao Intermediate Court and Supreme Court) have established IP Circuit Tribunal --Pioneer Mechanism: Guiding Cases System by the Supreme Court --Another time of amendment to the Chinese Patent Law is undergoing, which focuses on strenghthening the protection of patent rights and making it easier to enforce a patent right --compulsory requirement to publish the court decision in time to be more transparent
questions?