USPTO Seeks Comments on Patent Enforcement in China
The U.S. Patent and Trademark Office is requesting public comments on China's patent enforcement system as part of its effort to identify and assess the challenges U.S. investors are facing with China's judicial and administrative patent enforcement systems. The USPTO will use these comments to create a report with recommendations for improvement. Comments are due by November 4, 2011.
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Patents Obtained in China Have Increased but Cases Filed in Court Unchanged Since 2005
The USPTO states that as China has become a major U.S. trading partner, U.S. rights holders are increasingly seeking to protect and enforce their intellectual property (IP) in that country. The USPTO states that the effective functioning of China's patent enforcement system will be critical to the success of U.S. innovators in China.
China's State Intellectual Property Office (SIPO) is now one of the largest patent office in the world in terms of patent filings, receiving 1.2 million patent applications in 2010. Despite an increase in the number of patents obtained in China, the number of patent cases filed in Chinese courts has remained relatively unchanged since 2005.
Companies Don't File More Patent Suits in Court due to Judiciary Concerns
Patent enforcement in China comprises two mechanisms—judicial and administrative. Concerns over China’s judiciary (such as lack of adequate discovery powers, evidentiary burdens, and low damages rewards) have been cited as reasons why U.S. and foreign companies do not file more patent suits in Chinese courts.1 Furthermore, China issues utility model and design patents that do not undergo substantive examination and have complicated actual inventors’ pursuit and enforcement of their IP rights in China.
Limited Administrative Investigative Powers also Weaken Patent Enforcement
Patent enforcement in China can also occur administratively in SIPO’s provincial IP offices, which have the authority to issue cease-and-desist orders, seize infringing goods, and exact penalties against infringers. However, limited investigative powers of the agency and ineffectual penalties have been cited as reasons for the weakness of this enforcement route.
USPTO Held Series of Roundtables to Evaluate China's Enforcement System
The USPTO, in coordination with the White House Intellectual Property Enforcement Coordinator (IPEC), has conducted a series of roundtables to evaluate U.S. rights holders’ views of China’s patent enforcement system. These views have included first-hand experiences enforcing patent rights in China, defending against charges of infringement in China, as well as suggestions for future improvements to the system.
Seeks Comments to Produce Report Recommending Improvements
To ensure that the USPTO receives a wide array of views on China’s patent enforcement system, the USPTO is now seeking written comments on patent enforcement issues in China, including but not limited to (1) acquisition and enforcement of utility model and design patents; (2) evidence collection and preservation in Chinese courts; (3) obtaining damages and injunctions; (4) enforceability of court orders; and (5) administrative patent enforcement.
Based on these comments, the USPTO intends to produce a report that details the U.S. view of the patent enforcement landscape in China and identifies any challenges faced by U.S. innovators, together with recommendations for improving the system.
1According to China’s Supreme People’s Court, only about 4% of civil IP cases in China involve foreign parties.
(See ITT's Online Archives 11080256 for BP summary of China stating that its courts are giving out tough sentences for IPR infringements.)
USPTO Contact -- Elizabeth Shaw (571) 272-8494 elizabeth.shaw2@uspto.gov
(D/N PTO-C-2011-0056, FR Pub 10/17/11)