SEVERAL PROVISIONS OF THE SUPREME PEOPLE'S COURT FOR THE APPLICATION OF LAW TO PRE-TRIAL CESSATION OF INFRINGEMENT OF PATENT RIGHT
(Adopted at the 1179th Meeting of the Adjudication Committee of the Supreme People's Court on 5 June 2001)
With a view to protecting the legitimate rights and interests of patentees and other related injured parties, in accordance with the relevant provisions of the General Principles of the Civil Law of the People's Republic of China, the Patent Law of the People's Republic of China (hereafter referred to as the Patent Law), the Civil Procedure Law of the People's Republic of China (hereafter referred to as the Civil Procedure Law) these Several Provisions for the Application of Law to Pre-action Cessation of Infringement of Patent Right are hereby made as follows:
In accordance with the provisions of Article 61 of the Patent Law, a patentee or related injured party may file an application with the people's court for ordering pre-action the respondent to cease acts infringing the patent right.
The related injured party that files an application includes, the licensee of a licensing contract for exploitation of the patent, and the legal successor to the property right of the patent, etc. Among the licensees of the licensing contract for exploitation of the patent, the licensee of an exclusive patent licensing contract may file an application with the people's court; the licensee of a sole licensing contract in the circumstances where the patentee does not apply, may file an application.
An application for pre-action cessation of infringement of the patent right shall be filed with a people's court that has the jurisdiction over patent infringement cases.
Any patentee or related injured party who files an application with the people's court shall submit the application in writing, the application shall clearly indicate the parties as well as their basic information, the specific contents, scope and reasons for the application. The reasons for the application include a specific explanation of why irreparable harm will be caused to the applicant’s legitimate rights and interests if the relevant acts are not stopped.
The applicant when filing the application, shall submit the following evidence:
(1) The patentee shall submit documents proving the authenticity and validity of its patent right, including the patent certificate, claims, description and receipt of payment of the patent annuity. Where the application filed by the applicant relates to a patent for utility model, the applicant shall submit a search report made by the Patent Administrative Department under the State Council.
(2) The related injured party shall submit the related patent licensing contract and proof that it has been recorded with the Patent Administrative Department under the State Council, where it has not been recorded a certificate from the patentee or other evidence proving that it enjoys the rights shall be filed. Where the licensee of an exclusive licensing contract files an application on its own, it shall submit evidence of the patentee abandoning making an application. The legal successor to property rights in the patent shall submit evidence that has already succeeded or is in the process of succession.
(3) Evidence to prove that the respondent is committing or will commit an act infringing its patent right, including materials such as the alleged infringing product and comparisons of the technical features of the patented technology and the alleged infringing product.
The ruling made by the people's court to cease an act of patent infringement pre-action shall be confined to the scope of the application filed by the patentee or related injured party.
The applicant when making an application shall provide security; where the applicant does not provide security, the application shall be rejected.
Where the security provided by a party is in the form of a mortgage etc and is reasonable and valid, the people's court shall approve.
When the people's court determines the scope of the security, it shall consider the sales turnover of the product the relevant acts related to which are to be injuncted as well as reasonable costs of storage and safekeeping; the losses that may be caused by the respondent ceasing the relevant act as well as other reasonable costs, such as the wages or salaries; and other factors.
Where in the process of enforcing the ruling to cease the relevant act, the respondent may be caused greater losses due to the adoption of the measures, the people's court may order the applicant to provide an appropriate supplementary security. Where the applicant does not supplement the security, the measure to cease the relevant act shall be cancelled.
Any measures taken to execute the ruling to cease the act of patent infringement will not be removed because the respondent provides counter security.
The people’s court after receiving an application filed by a patentee or related injured party to order to cease the act of patent infringement, after examination for conformity with Article 4 of these provisions, shall within 48 hours issue a ruling in writing; where a ruling is made to order the respondent to stop its act of patent infringement, enforcement shall be commenced without delay.
Where the people’s court within the aforementioned time limit, needs to verify relevant facts, it may summon and make inquiries of one or both parties, and then promptly make a ruling.
The people's court making a ruling pre-action to order respondent to cease the relevant act, shall promptly notify the respondent, at the latest it should not exceed 5 days.
Where a party is not satisfied with the ruling, it may apply once for review within 10 days from the date of the receipt of the ruling. The review period shall not suspend the execution of the ruling.
The people's court shall examine the application for reconsideration filed by a party as to the following aspects:
(1) Whether or not the act of the respondent that is being committed or will be committed constitutes infringement of patent right;
(2) Whether or not not taking the relevant measure will cause irreparable harm to the legitimate rights and interests of the applicant;
(3) The conditions of the security provided by the applicant; and
(4) Whether or not ordering the respondent to cease the relevant act would harm the public interest.
Where the patentee or related injured party does not institute legal proceedings within 15 days after the people's court takes measures to cease the relevant act, the people's court shall cancel enforcement of the measures of the ruling.
Where an applicant does not institute legal proceedings or the application is in error causing losses to the respondent, the respondent may institute legal proceedings in a people's court having the jurisdiction requesting the applicant to pay compensation; or may also file a request for damages during the patent infringement litigation instituted by the patentee or related injured party, the people's court may simultaneously handle the request.
The validity of the ruling ordering to cease the infringement of patent right, generally shall continue until and cease after the final legal instrument comes into effect. The people's court may also according to the facts of the case confirm a specific time limit; at the expiration of the time limit, in accordance with the request of a party the people's court may make a ruling for continued cessation of the relevant act.
Where the respondent breaches the ruling made by the people's court to order the cessation of the relevant act, the matter shall be handled according to the provisions of Article 102 of the Civil Procedure Law.
The people’s court when executing pre-trial measures to cease the act of patent infringement, may in accordance with the application of a party, by reference to the provisions of Article 74 of the Civil Procedure Law simultaneously conduct evidence preservation.
The people's court may, in accordance with an application of a party, pursuant to Articles 92 and 93 of the Civil Procedure Law conduct property preservation.
Where the patentee or the related injured party when filing patent infringement litigation simultaneously files a request for ceasing an act of patent infringement in advance, the people's court may first make a ruling.
For a case to stop infringement of a patent, the applicant shall pay fees in accordance with the People's Court Litigation Charges Measures and its supplementary provisions.