On October 27, 2023, the Supreme People’s Court (SPC) promulgated the Decision of the SPC on Amending the Provisions of the Provisions of the Supreme People’s Court on Several Issues concerning the Intellectual Property Tribunal (Amendment), which came into effect on November 1, 2023. This article will describe the impact of this amendment on intellectual property litigation.
I. Main elements of the new regulation
The amendments to the Provisions of the Supreme People’s Court on Several Issues concerning the Intellectual Property Tribunal mainly include the following aspects:
1. Adjustments were made to the scope of cases heard by the Intellectual Property Tribunal of the Supreme Court
According to the Amendment, the Intellectual Property Tribunal will hear the following appeal cases: (a) administrative appeal cases on the authorization of patents, new plant varieties and integrated circuit layout designs; (b) civil and administrative appeal cases on the ownership and infringement of invention patents, new plant varieties and integrated circuit layout designs; (c) major and complex utility model patents, technical secrets and computer software ownership, infringement civil and administrative appeal cases; (e) monopolization civil and administrative appeal cases. Besides, the Intellectual Property Tribunal will also hear the following other cases: (a) significant and complex civil and administrative cases of first instance nationwide of the types stipulated in the preceding paragraph; (b) cases applying for trial supervision procedures such as reexamination, protest, retrial, etc., in accordance with law, to judgments, rulings, and conciliations that have already become legally effective in respect of civil and administrative cases of first instance as stipulated in the preceding paragraph; (c) cases of disputes over the jurisdiction of civil and administrative cases of the first instance as stipulated in the preceding paragraph, applications for reconsideration of rulings on the preservation of acts, applications for reconsideration of decisions on fines and detentions, and applications for extension of the time limit for trial; and (d) other cases deemed by the Supreme People’s Court to be heard by the Intellectual Property Tribunal.
Compared with the original provisions, the Amendment narrowed the scope of “appeal cases” heard by the Intellectual Property Tribunal of the Supreme Court, limiting the scope of civil and administrative appeals on utility model, technical secret and computer software copyright ownership and infringement to “major and complex” cases. At the same time, the Amendment also add a new type of justiciable case to the scope of justiciable “other cases” covered by the original provisions, i.e., cases applying for reconsideration of behavioral preservation rulings in the first instance of justiciable appeal cases.
As for the criteria for determining “significant and complex”, according to Article 1 of the Notice of the Supreme People’s Court on the Implementation of the Revised Provisions of the Supreme People’s Court on Several Issues concerning the Intellectual Property Tribunal issued by the Supreme Court on the same day, Article 2, Paragraph 1(3) of the amended Provisions of the Supreme People’s Court on Several Issues concerning the Intellectual Property Tribunal stipulates that “major and complex civil and administrative appeal cases concerning utility model patents, technical secrets and computer software ownership and infringement” refer to cases in which appeals are lodged against decisions of the Higher People’s Courts of the first instance in respect of the relevant cases.
2. A new article is added as Article 4: “The Intellectual Property Tribunal may require the parties to disclose the ownership, infringement and authorization of the intellectual property rights involved in the case. If the party refuses to disclose truthfully, this may be considered as a factor in determining whether the party has complied with the principle of good faith and constitutes an abuse of rights.”
3. Adjustments were made to the provisions on the disclosure and inquiry of case information and documents, with the deletion of the phrase “may be inquired about through the electronic litigation platform and the China Trial Process Information Disclosure Network”.
II. Major changes in the adjudication of intellectual property cases
The above Amendment mainly adjusted the second instance trial of infringement cases of utility model, technical secret, and computer software copyright, while there was no change in the second instance trial of infringement cases of invention patents, new plant varieties and integrated circuit layout design ownership. The jurisdiction of second instance cases of infringement of utility model patents, technical secrets and computer software ownership will be centralized by the existing Intellectual Property Tribunal of the Supreme Court, i.e., the first instance cases of such cases heard by the middle courts of various regions will be appealed to the high courts of various regions in the second instance. In turn, first-instance cases heard by local high courts will be appealed to the Intellectual Property Tribunal of the Supreme Court.
However, the criteria of “significant and complex” issued by the Supreme Court do not give rise to litigation jurisdiction in the practice of such cases. At present, the first instance intellectual property cases directly handled by the high courts around China are inherently significant and complex in nature, so the second instance of the first instance cases they hear would have been heard by the Supreme Court. According to the Amendment, if the first instance infringement cases of utility model patents, technical secrets and computer software are heard in the Intermediate Court, even if there are significant and complex factors in the case itself, such as the case involves foreign parties, hot issues, a relatively high amount of subject matter, and a large social impact, etc.. However, since they are not tried in the first instance by the High Court, they do not meet the “significant and complex” criteria of the Amendment, and therefore cannot be appealed to the Supreme Court, but can only be tried by the High Courts of the various regions.
It is worth noting that the Amendment have not modified the jurisdiction of the Intellectual Property Tribunal of the Supreme Court over administrative appeals against patent granting and determination, so that administrative appeals against granting and determination of patents for inventions, utility models and designs still fall within the scope of the Intellectual Property Tribunal of the Supreme Court.
III. Impact of the Amendment
The promulgation of the Amendment marks a new stage in the management of intellectual property litigation cases in China. The adjustment of the scope of cases to be tried by the Intellectual Property Tribunal in the Amendment may be conducive to the Intellectual Property Tribunal of the Supreme Court concentrating its efforts on major intellectual property litigation cases with certain influence on the society, economy, science, and technology in the next stage, and further improving and strengthening the consistency of intellectual property litigation through the system of guiding cases. In addition, by assigning the second instance trials of infringement of utility model patents, technical secrets, and computer software copyrights, which have recently become more numerous, to the high courts of various regions, the Supreme Court’s Intellectual Property Tribunal can further ease the current backlog of cases, and better safeguard its central function in the trial of intellectual property lawsuits.
Moreover, under the Amendment, the second instance of infringement of utility model patents, technical secrets and computer software copyrights will be heard in the high courts of various regions, and the entire trial process of such cases will be completed in the province where the court of first instance is located. Therefore, as the right holder of utility model patents, technical secrets, and computer software copyrights, it is necessary to pay more attention to the selection of the court of first instance with jurisdiction over the relevant types of intellectual property cases, to be able to better cope with the changes in the trial brought about by the Amendment.