CHINA Law and Practice Contributed by: Binxin Li, Guangzhen Shang, Yue He and Lesley Wang, LeanWill Law Firm
IP offices and the CNIPA respectively. However, there has been a case in which the court of the enforcement action overruled the claim construction concluded by the CNIPA in the invalidation action. A decision invalidating the patent claims used in the enforcement action would cause the dismissal of the enforcement action. Although the enforcement and invalidation proceed ‑ ings are bifurcated in China, there are some experi ‑ mental practices to try synchronous handling of both proceedings. In Nanjing Sanhome v Hunan Warrant , the Supreme People’s Court formed one panel to han ‑ dle the appeal cases relating to both patent enforce ‑ ment and related patent invalidation. In another patent infringement dispute, the Shenzhen court co-operat ‑ ed with the CNIPA to conduct joint hearings for the enforcement case and related invalidation case – ie, the first section is the invalidation oral hearing held by the CNIPA and audited by the court, and the second section is the infringement trial held by the court and audited by the CNIPA. 1.5 Timing for Main Proceedings on Infringement/Validity Enforcement The statute of limitations for IP infringement litigation is three years, counted from the date on which the plaintiff knew or should have known of the asserted infringement. The defendant may raise the defence of limitation, but the court cannot proactively dismiss a case based on the limitation. If the infringement is still ongoing, the plaintiff can seek permanent injunction relief, which is not subject to the statute of limitations and damages for the three years prior to the filing of the complaint. The defendant is normally served electronically or by post, or by public announcement if those methods fail (30 days after the announcement). Service takes effect immediately. The plaintiff may apply for deferred service to prevent the defendant from knowing of the lawsuit, if it files motions for evidence and/or asset preservation. A domestic defendant may file a written answer and a jurisdiction objection within 15 days after the ser ‑ vice of the compliant, and an appeal against a first
instance judgment within 15 days after service of the judgment. A foreign defendant could be served via the channels provided by an international treaty or bilateral judicial assistance agreement, and via its wholly owned enter ‑ prise, representative office, branch or authorised busi ‑ ness agent in China. Furthermore, the 15-day period is doubled for a foreign defendant. After the service of a complaint, the court may arrange evidence-exchange sessions or pre-trial conferences and trial hearings, at its discretion; these steps have no fixed timetable and are not mandatory. The court issues summonses to the parties in advance (at least three days before the event). In practice, the court takes a lenient approach to evidentiary deadlines – usually, the evidence shall be submitted prior to the trial hearing. However, there have been cases in which evidence was filed after the start of the trial hearing. After the trial hearing, the court hands down its judg ‑ ment. The procedure of an administrative enforcement action is similar to that in a civil action. There are deadlines for the closure of patent enforce ‑ ment actions. In terms of civil action, if no foreign party is involved, a court should conclude the case within six months after docketing, although this period can be extended. There is no statutory case closure dead ‑ line for lawsuits involving a foreign party. In practice, a first instance could be concluded after around 18 months, due to the overwhelming case volumes. In terms of administrative action, the IP office should conclude the case within three months after dock ‑ eting, although this period can also be extended. In practice, it may take around one year to conclude the case. Patent Invalidation There is no statute of limitation or cap on the num ‑ ber of filings against a patent. In other words, after the patent is granted, any entity or individual may file multiple invalidation petitions against the patent at any time, even after the patent term expires.
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