Plaintiffs can now ask authorities to force the disclosure of needed data

Parties in a patent dispute can now seek help from the authorities to collect evidence, according to a revised regulation of the patent law issued by the State Intellectual Property Office (SIPO).

Evidence collection has long been a major concern in maintaining rights in court, especially in cases of intellectual property infringement.

The new regulation that will take effect on Feb 1 stipulates that parties in disputes can ask local patent administrations to investigate and collect evidence if adversaries cannot acquire the needed information themselves due to "objective reasons".

The revision also authorizes enforcement officials to decide whether to accept an application for help and reject those deemed abusive.

The previous regulation, adopted in 2001, said authorities could become involved in searching for proof at their own discretion without giving disputing parties the right to apply for assistance.

"Basically filing a complaint against a patent infringement is a private interest," Song Jianhua, deputy director general of SIPO's Law and Treaty Department, told China Daily.

Burden of proof

"So the burden of proof usually falls on the complainant, as it is a fundamental doctrine in civil procedures who claims rights is obligated to establish proof," Song said.

Yet in practice there are cases where it is "very hard or even impossible for the plaintiffs themselves to acquire evidence", she noted.

She cited an infringement on a patented production method as an example, where the complainant had no way to enter the defendant's production site and could not gather evidence.

In such a case, involvement by an administrative force at the request of the complainant is justified, she said.

In addition, the new regulation also sets deadlines to improve efficiency in enforcement.

Timely results

Authorities should release an investigation result on an infringement a month after they accept the complaint and settle a patent dispute in four months.

The timeline can be extended when circumstances are complicated, though the extension needs approval of the enforcement organization's head.

As well, SIPO is authorized to coordinate enforcement in cross-province patent disputes or infringements, according to the regulation.

The new regulation aims to enhance patent protection, balance the public interest and patentee rights while promoting social progress, SIPO Vice-Commissioner Bao Hong said at a news conference held in Beijing on Jan 12.

The patent law has been revised three times since it took effect in 1984.

All versions authorized administrative organizations to settle patent disputes.

The latest full revision that came into force in 2009, adds administrative enforcement as a way to fight patent counterfeits.

Over the past decade, local patent administrations have wide rich experience in patent law enforcement, which is reflected in the revised regulation, Bao said.

SIPO initiated the revision work early last year and posted a draft on its website to solicit opinions from the public.

It received 40 detailed suggestions from local intellectual property offices and companies, as well as a host of online comments, according to Bao.

The revision further standardizes and enhances administrative enforcement of the patent law and provides improved protection for intellectual property rights, Bao said.

Since the State Council mounted a nationwide campaign to fight piracy and counterfeits in November last year, administrative investigations into patent infringement have been undertaken across the nation.

Over the past three months, the authorities dealt with more than 400 patent disputes and 230 infringements nationwide.

The move will continue this year.

Yangtze, Pearl deltas

The Yangtze and Pearl river deltas, which have a myriad of small private manufacturing businesses, will be the focus areas through February, Bao said.

High-tech and industrial design industries will receive priority attention, she added.

In bustling trade regions like Beijing and the provinces of Jiangsu and Zhejiang, authorities will pay more attention to industrial parks and target group and intentional patent infringements, she said.

China Daily

(China Daily 01/19/2011 page17)