China’s proposed patent changes are positive, but IP court backlog is a concern

25-09-2015

China’s proposed patent changes are positive, but IP court backlog is a concern

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Proposed changes to China’s patent system would have a positive effect, but there is concern over a backlog of cases at three specialised intellectual property courts, lawyers have told WIPR.

Earlier this month, the State Council of the People’s Republic of China announced a “Legislative Work Programme 2015”, which includes adopting proposed changes to China’s patent law.

The draft proposals were first published by the state council on April 1 this year.

One of the key changes includes shifting the burden of proof in infringement cases from the asserting party to the infringer when assessing damages awarded to patent owners.

Also, in cases where the infringement has been determined “wilful”, a judge could triple the damages.

The term of protection for design patents would also be extended from 10 to 15 years.

Another modification would give applicants the power to obtain a partial design application, which means an individual aspect of an item could be protected.

Currently in China, an applicant can only obtain protection for the whole item as it is sold to the consumer and not for individual parts.

Ted Chwu, partner at law firm Bird and Bird, said that shifting the burden of proof should encourage patentees to come forward with infringement claims.

He added that extending the length of protection for design patents is a “good change” and said that the proposals for allowing partial design protection “provides an additional arrow to patentees' bow”.

Xiaojun Guo, patent attorney at CCPIT Patent and Trademark Law office, said the changes, if adopted, would create a more “sophisticated patent system”.

Despite positivity about the proposed changes to patent law there is concern over whether the specialised IP courts, not yet a year old, would be able to cope with the workload.

As of August 20, the three courts, based in Beijing, Guangzhou and Shanghai, had received almost 11,000 requests to hear claims asserted by IP owners.

Frank Liu, partner at law firm Chang Tsi & Partners, said the courts have proven to be popular since they were introduced, but he is worried about the backlog.

He added that asserting parties are required to provide a lot of material evidence in order to have their case heard at one of the courts.

Guo also has a concern. He told WIPR: “There is a pressure to recruit more IP judges in these courts”.

But he added that the task is not easy because the salary of a judge is “not so high” and the qualification requirements are expensive.

SIPO; China’s State Council; Beijing IP court; patents; design patents

WIPR