CNIPA’s Issues Draft Measures for Patent Dispute Adjudication and Mediation
Published 23 July 2024
Yu Du
The China National Intellectual Property Administration (CNIPA) has recently released two significant drafts aimed at enhancing the handling of patent disputes: the Measures for Administrative Adjudication and Mediation of Patent Disputes (Draft for Comment) and the Measures for Mediation of Disputes Arising from Implementation of Patent Open Licensing (for Trial Implementation). These drafts reflect CNIPA’s continuous efforts to refine and optimize the legal framework surrounding patent protection and dispute resolution in China. The public is invited to provide comments on the first draft until 2 September 2024, while the second draft has already been put into effect.
I. Draft Measures for Administrative Adjudication and Mediation of Patent Disputes
The draft measures introduce substantial enhancements in three main areas: the implementation of new systems, the refinement of case handling norms, and the optimization of case handling procedures. These improvements aim to provide clearer guidelines for authorities and involved parties, ensure more precise determination standards for patent infringement, and streamline procedural norms.
The draft proposes the establishment of new systems that facilitate more effective case handling and resolution. It addresses the specific needs of case-handling authorities and involved parties, provides clear substantive standards for determining patent infringement, covering aspects like scope of protection, application of comprehensive coverage principles, doctrine of estoppel, dedication rule, and standards for identical and equivalent infringement, and enhances other procedural norms to ensure more efficient case handling and resolution, including provisions for early resolution mechanisms for drug patent disputes.
II. Measures for Mediation of Disputes Arising from Implementation of Patent Open Licensing
These measures provide a structured approach to mediating disputes that arise from the implementation of patent open licensing. They outline the processes for case acceptance, mediation, and closure, ensuring a comprehensive framework for dispute resolution.
Regarding case acceptance, the measures specify that parties involved in disputes related to the payment standards and methods for patent open license fees, the effective time of the license, and the duration of the license, who voluntarily accept mediation, should submit a written application to the CNIPA. When filing an application, parties must provide specific documents, including an application form detailing the dispute, identification documents, relevant evidence such as the registered patent open license statement and effective implementation contract, and a power of attorney if the party is represented by an agent. CNIPA may accept applications from both parties jointly or from one party, in which case the other party will be notified and must respond within 10 working days.
The following chapter of the measures details the mediation process once CNIPA accepts an application. The CNIPA is required to promptly appoint mediators to oversee the mediation. Depending on the case’s complexity, the mediation may be conducted by one mediator or a panel of three to five mediators. Mediators must recuse themselves if they have a conflict of interest. Mediation staff must avoid any behavior that compromises fairness, such as partiality or soliciting bribes. During mediation, parties have the right to express their will, request open or closed sessions, accept or reject mediation, and suspend or terminate mediation. The mediation process involves verifying identities, clarifying facts, and conducting mediation through various methods, such as on-site or online mediation, to reach a resolution.
Regarding the case closure, the measures state that if mediation can be immediately fulfilled or both parties agree that a written agreement is unnecessary, the mediation result can be recorded directly in the mediation transcript. However, if the parties reach an agreement that involves financial payments or other significant matters, a written mediation agreement should be drafted, detailing the parties’ information, dispute issues, mediation results, and any other agreed terms. The mediation agreement takes effect upon signing and is distributed to all parties involved. Mediation must be completed within 30 working days, though this period can be extended by mutual agreement for complex cases. If mediation is terminated, CNIPA must issue a termination notice, and the parties may not apply for mediation on the same grounds again. All case materials are to be archived following the closure of the case. Comment
The introduction of these measures by CNIPA is a commendable step towards strengthening the patent protection and dispute resolution landscape in China. These measures promise more predictable and transparent adjudication processes, reducing the uncertainty that often accompanies patent disputes.
Moreover, the focus on mediation for disputes arising from patent open licensing is particularly noteworthy. It reflects a growing recognition of the importance of alternative dispute resolution mechanisms, which can provide quicker and more amicable solutions compared to traditional litigation. By clarifying the roles and responsibilities of mediators and the parties involved, these measures are likely to enhance the efficiency and effectiveness of mediation processes.
Overall, these drafts represent a significant advancement in CNIPA’s efforts to foster a more robust and reliable patent system.
I. Draft Measures for Administrative Adjudication and Mediation of Patent Disputes
The draft measures introduce substantial enhancements in three main areas: the implementation of new systems, the refinement of case handling norms, and the optimization of case handling procedures. These improvements aim to provide clearer guidelines for authorities and involved parties, ensure more precise determination standards for patent infringement, and streamline procedural norms.
The draft proposes the establishment of new systems that facilitate more effective case handling and resolution. It addresses the specific needs of case-handling authorities and involved parties, provides clear substantive standards for determining patent infringement, covering aspects like scope of protection, application of comprehensive coverage principles, doctrine of estoppel, dedication rule, and standards for identical and equivalent infringement, and enhances other procedural norms to ensure more efficient case handling and resolution, including provisions for early resolution mechanisms for drug patent disputes.
II. Measures for Mediation of Disputes Arising from Implementation of Patent Open Licensing
These measures provide a structured approach to mediating disputes that arise from the implementation of patent open licensing. They outline the processes for case acceptance, mediation, and closure, ensuring a comprehensive framework for dispute resolution.
Regarding case acceptance, the measures specify that parties involved in disputes related to the payment standards and methods for patent open license fees, the effective time of the license, and the duration of the license, who voluntarily accept mediation, should submit a written application to the CNIPA. When filing an application, parties must provide specific documents, including an application form detailing the dispute, identification documents, relevant evidence such as the registered patent open license statement and effective implementation contract, and a power of attorney if the party is represented by an agent. CNIPA may accept applications from both parties jointly or from one party, in which case the other party will be notified and must respond within 10 working days.
The following chapter of the measures details the mediation process once CNIPA accepts an application. The CNIPA is required to promptly appoint mediators to oversee the mediation. Depending on the case’s complexity, the mediation may be conducted by one mediator or a panel of three to five mediators. Mediators must recuse themselves if they have a conflict of interest. Mediation staff must avoid any behavior that compromises fairness, such as partiality or soliciting bribes. During mediation, parties have the right to express their will, request open or closed sessions, accept or reject mediation, and suspend or terminate mediation. The mediation process involves verifying identities, clarifying facts, and conducting mediation through various methods, such as on-site or online mediation, to reach a resolution.
Regarding the case closure, the measures state that if mediation can be immediately fulfilled or both parties agree that a written agreement is unnecessary, the mediation result can be recorded directly in the mediation transcript. However, if the parties reach an agreement that involves financial payments or other significant matters, a written mediation agreement should be drafted, detailing the parties’ information, dispute issues, mediation results, and any other agreed terms. The mediation agreement takes effect upon signing and is distributed to all parties involved. Mediation must be completed within 30 working days, though this period can be extended by mutual agreement for complex cases. If mediation is terminated, CNIPA must issue a termination notice, and the parties may not apply for mediation on the same grounds again. All case materials are to be archived following the closure of the case. Comment
The introduction of these measures by CNIPA is a commendable step towards strengthening the patent protection and dispute resolution landscape in China. These measures promise more predictable and transparent adjudication processes, reducing the uncertainty that often accompanies patent disputes.
Moreover, the focus on mediation for disputes arising from patent open licensing is particularly noteworthy. It reflects a growing recognition of the importance of alternative dispute resolution mechanisms, which can provide quicker and more amicable solutions compared to traditional litigation. By clarifying the roles and responsibilities of mediators and the parties involved, these measures are likely to enhance the efficiency and effectiveness of mediation processes.
Overall, these drafts represent a significant advancement in CNIPA’s efforts to foster a more robust and reliable patent system.