I  Introduction (Establishment and Performance)

The system of pre-trial provisional measures was newly incorporated into the Chinese legal framework according to the requirements of the TRIPs Agreement.[1] Article 61 of the latest amendments of the Patent Law (2000) expressly provide pre-trial injunction (Preliminary injunction) for the first time in China. Thereafter, the revised Copyright Law, the revised Trademark Law, the Regulations for Protection of Computer Software (RPCS) and the Regulations for Protection of Topographies of Integrated Circuits also provide similar provisions. The revised Copyright Law, the revised Trademark Law and the RPCS clearly stipulate the system of pre-trial preservation of evidence. These revised IP laws and relevant regulations also reaffirm the system of pre-trial preservation of property, which has been established under the Civil Procedure Law. In 2001, The SPC issued two Judicial Interpretations concerning the Application of Preliminary Injunction and preservation of evidence with regard to patent and trademark infringements, setting up the proceedings in detail for granting pre-trial provisional measures according to relevant laws.

The pre-trial injunction, pre-trial preservation of property and pre-trial preservation of evidence in China correspond largely to interlocutory injunction, freezing injunction (used to be Mareva injunction) and search order (used to be Anton Piller order) in the UK.

II  Proceedings

1) Time for filing application

The IPR holder may separately or simultaneously apply for the court to take pre-trial provisional measures. This can occur before the institution of an action, when filing a lawsuit or in the course of proceedings.

2) Grounds for application

When applying for preliminary injunction and pre-trial preservation of property, the applicant (IPR holder or other interested party) needs to show that the adverse party is carrying out or about to carry out infringing act to its IPR which will cause irreparable harm. Under the circumstance where evidence could be lost or will be difficult to obtain afterwards, IPR holders may apply to the court for evidence preservation before initiating legal proceedings.

3) Guarantee, supplementary guarantee and counter-guarantee

Any applicant shall provide guarantee when filing an application for pre-trial injunction. When the adoption of the measure may lead to a greater losses to the respondent, the court may order the applicant to provide supplementary guarantee. The party against whom an application is filed may provide a counter-guarantee, but any measure taken to execute the ruling of pre-trial injunction shall not necessarily be removed.

The court may order the applicant to provide a guarantee for an application for pre-trial preservation of evidence.

4) Application for reconsideration

Where the interested party is not satisfied with the ruling, it or he may apply for reconsideration within l0 days from the date of the receipt of the ruling. However, the execution of the ruling shall not be suspended during the reconsideration.

5) Implementation

For all application of those provisional measures, a court must make the decision within 48 hours after the application and the measures should be taken without delay if they are considered necessary.

Where the applicant fails to institute legal proceedings within 15 days after the court adopted the measures of preservation, the court should terminate such measures.

III  Factors for Consideration

According to statistics covering six provinces, since the establishment of the pre-trial regime, local courts have received 257 applications for issuing preliminary injunction and preservation of evidence and 183 have been upheld. However, the attitudes to the applications for taking the new measures of different regional courts appeared different, some stringent and conservative while some relaxed and proactive.

According to the provisions of laws and related judicial interpretations, major factors of consideration are the probability of committing infringement, irreparability of losses as well as the nature of IPRs. Generally speaking, the applications for taking preliminary injunction and preservation of evidence are more easily upheld in trademark and copyright cases than in patent cases.

The SPC has expressly delivered basic guidelines for granting preliminary injunction in patent case in its decision on Jiangsu Huasheng v. Eli Lilly (Dec, 2003). In light of the SPC decision, courts should not only be active but also cautious in making decisions on taking provisional measures and should particularly stress on the probability of constituting patent infringement. If the respondent’s activities do not constitute literal infringement and relatively complicated technical comparison should be conducted for determining whether there is an infringement, it is not appropriate for courts to take injunctive measures. Under the circumstance that the respondent has filed a separate complaint for declaration of non-infringement of the applicant’s patent or initiated a request for invalidating the applicant’s patent in advance, courts should examine the facts and reasons on which the respondent’s claims are based and make the decision on injunctive measures more cautiously.

Undoubtedly, the provisional measures, especially the preliminary injunctions are powerful judicial remedies for IPRs. However, since pre-trial injunction is quit a new system in the Chinese legal system, judges and parties may still need time to well understand and practice such provisions, whereas pre-trial preservation of property has long been in the procedural law and often applied in various civil actions.