Judicial Remedy and Provisional Measures For
IP Rights Protection in Civil Procedures in China(2)

By JIANG ZHIPEI

II. The Judicial Remedies and Provisional Measures of Chinese Courts for IPR

The Supreme People's Court of PRC drafted and published 10 judicial interpretations[1] during the period from December of 2000 to February of 2002 based on the newly revised Patent Law, Trademark Law, Copyright Law, Regulations on Computer Software Protection, Regulations on Protection of Layout-Designs of Integrated Circuit, Regulations on Protection of New Varieties of Plants. It perfected and improved the remedial measures, burden of proof preliminary injunction of our civil procedure, and administrative procedure pertaining to IPR. From January of 200 l to December of 200l, the courts all over the country accepted 5265 IP-related civil cases of first instance and concluded 504l of them, also accepted 319 IP-related criminal cases of first instance and concluded 314 of them.

(l) Characteristics of the Judicial Remedies in IPR Protection

l  It covers all the IP areas stipulated in TRIPs, including copyright, trademark, patent, trade secret, layout-designs of integrated circuit, new varieties of plants, unfair competition, etc. The patent may be categorized as invention patent, design patent, and utility model. The copyrights include rights to computer software. These rights or interests would get protection through litigation with supports of the Patent Law, Trademark Law, Copyright Law, Unfair Competition Law, Civil Procedure Law, Regulations on Protection of Computer Software, Regulations on Protection of Layout-Design of Integrated Circuit, Regulations on Protection of New Varieties of Plants, and the IP-related judicial interpretations of the Supreme People's Court. If the above-identified rights are unlawfully infringed the right holder or interested party may bring a lawsuit to the people's court or apply for other litigation measures.

2  It sets up several effective civil remedies, such as permanent injunction, ration damage, and finding of infringement under the Doctrine of Equivalent. The Patent Law[2], the Trademark Law[3] and the Copyright Law[4]5 and corresponding Judicial Interpretation have defined that immediately stop the infringing act is one of the civil legal responsibilities. People's Court shall use the stop infringing (i.e., permanent injunction) as one of the court order upon the request of the plaintiff in the first instance and appeal cases. Also, this permanent injunction can be compulsory executed.

The Trademark Law and the Copyright Law has clearly stipulated that the infringer shall bear civil legal responsibilities for their infringement. Infringer shall be liable for not only the loss suffered by the right holder or the illegal interest of the infringer, but also the reasonable expenses of the right holder for investigating and deterring the infringement.[5] Both of these laws have also stipulated the statutory damage. If the damage is hard to calculate, People's Court may order a damage not exceeding 500,000-yuan RMB based on the facts.[6] The Patent Law stipulates that People's Court may use the royalty of patent license as reference for calculating damage. For this calculation of damage, the Judicial Interpretation of the Supreme People's Court has made an explanation. Depending on the infringed patent, the nature of the infringement and its seriousness, the amount of referenced royalty, the nature, scope, duration of the referenced license agreement, damage could be 1-3 times of the referenced royalty.[7] If the damage is hard to calculate, People's Court may order a ration damage of 5,000-yuan RMB to 500,000-yuan RMB depending on the facts.[8]

In order to provide complete and solid protection to the IPR holders and enable People's Court to have a solid legal authority, the Supreme People's Court has set up the standard for applying the Doctrine of Equivalent in one Judicial Interpretation. This is the first time to define the Doctrine of Equivalent as a legal authority in finding patent infringement. It is an explanation to the Article 56 of the Patent Law of China. The term of ..the scope of protection of patent for invention and utility model shall depend on the content of the claims, specification and figure may be used for interpret the claim,, means that the patent protection scope shall depend on the scope defined by the indispensable technical element of the claims as recorded in the specification, including the scope defined by the equivalent of the indispensable technical element. According to this Judicial Interpretation, the so-called equivalent means the technical element equivalent to the indispensable technical element, rather than the equivalent of the claims of the patent. Besides, the Judicial Interpretation has also explained the meaning of the equivalent element. The equivalent element has to meet two conditions simultaneously. First, it is substantially similar to the way, function and purpose of the technical element of the claims. Second, it is obvious to the ordinary skilled person in art, i.e., the ordinary skilled person in art shall be able to think of it without creative work' These two requirements are similar to the requirement of equivalent in other countries and relevant international treaties.

3 Providing Provisional measures of Evidence Preservation, Property Preservation, and Preliminary Injunction. The Patent Law, the Trademark Law and the Copyright Law in China has defined pre-trail preliminary injunction on infringement.[9] The Trademark Law and the Copyright Law also defines pre-trial evidence preservation measure.[10] In order to improve the pre-trial provisional measures in the civil adjudication system and answers the questions relating to relevant applicable laws, the Supreme People's Court has issued Judicial Interpretations in regarding to patent, trademark and computer chip topology.

According to relevant laws and judicial interpretations, pre-trial evidence preservation, property preservation, and preliminary injunction are available in all kinds of intellectual property fields. For the disputes relating to infringement of trade secret and unfair competition, evidence preservation, property preservation and injunction may be requested at the time of or after lodging the lawsuit according to the relevant judicial interpretation.[11]

4 Setting up the Professional Tribunal and Training of Professional Judges. Since year of 2000, People's Court system has undergone a reform. At the present, the Supreme People's Court of China and 3l People's High Courts all over China has set up the No. 3 civil chamber for hearing intellectual property disputes. In the Intermediate People's Court located in the 3l capital of provinces, cities under the direct jurisdiction of central government, and autonomous regions, intellectual property tribunal has been set up in each of them, According to the judicial

interpretation of the Supreme People's Court, 43 Intermediate People's Courts assigned by the Supreme People's Court have jurisdiction to hear patent infringement cases as first instant court. Trademark and copyright related disputes are heard by more than 300 Intermediate People's Courts nationwide as the first instance. A few district court in several cosmopolitan cities assigned by relevant People's High Court also has the jurisdiction to hear first instance intellectual property disputes. The No.3 Chamber in these courts has been assigned professional judges in order to assure the justice of decisions.

(2) Applying Provision Measures by the Court in China

According to the stipulation in Patent Law, Trademark Law, Copyright Law, and the <<Judicial Interpretation on Questions Relating to Applicable Law for Pre-trial Deterring Patent Infringement>>, the <<Judicial Interpretation on Questions Relating to Applicable Law for Pre-trial Deterring Trademark Infringement and Evidence Preservation>>, applying provisional measures shall pay attention to the following provisions:

l. Requirement for the Applicant and the Acceptance of the Application.

Applicant shall be the patentee, trademark registrant, copyright owner or the neighboring rights holder, licensee, and legitimate heritor' Among the licensee, sole licensee may file application, exclusive licensee may file application only when the patentee does not file the application.

2. Application Procedure  When filing application, required documentation includes an application in writing stating the scope and reason of the application. The applicant shall also submit evidence. For example, patentee shall submit document to show the truthfulness of the patent right. Patentee of Utility Model patent shall also submit a search report issued by the competent patent authority. Other applicant shall submit patent license agreement and recordation thereof. The applicant shall also submit evidence to show that the alleged infringer is or about to carry on infringement, including the alleged infringing product and the comparison of technical feature between the patented product and the alleged infringing product.

Trademark registrant shall submit the certificate of trademark registration or license agreement to show the applicant having the right to make such an application as well as the evidence relating to infringement.

Filing application for evidence preservation to court has to comply with the requirement of law. For example, when evidence is at risk of disappearing or hard to obtain later on, the preserved evidence shall be that impossible to be obtained by the applicant and his trial attorney. When filing pre-trial application for evidence preservation, an application form is also required and the information of the alleged infringer and the place of the evidence, etc. shall be contained therein.

(To be continued)