CHINA Law and Practice Contributed by: Binxin Li, Guangzhen Shang, Yue He and Lesley Wang, LeanWill Law Firm
If an infringement proceeding has been commenced and the defendant wishes to seek a stay of the civil case, the defendant must file the invalidation petition during its answering period in the civil case. The CNIPA serves documents in the proceeding to the parties electronically or by post. Service is deemed completed on the 15th day of the dispatch via postal service, and on the date when the document enters the electronic system designated by the parties. Within one month after filing the initial invalidation petition and evidence, the petitioner is allowed to file supplementary briefs and additional evidence. Upon the receipt of the invalidation petition through the CNI ‑ PA, the patentee has one month to submit a response, amendments and counter-evidence. The same one- month deadline applies to any later supplementary submissions from the petitioner through the CNIPA. An oral hearing is usually held by the CNIPA, although this is not mandatory. After the oral hearing, the CNI ‑ PA renders its decision, which may take around six months after the filing of the initial invalidation petition. Trade Mark Invalidation The statute of limitations is five years if one files an invalidation against a registered trade mark based on the relative grounds. There is no statute of limitations for filing an invalida ‑ tion based on the absolute grounds, nor against mali ‑ cious registration of a well-known trade mark based on the relative grounds. 1.6 Requirements to Bring Infringement Action An enforcement action can only be filed after the grant of a patent, against any infringement that occurred during the term of the patent. The plaintiff needs to provide at least: • the asserted patent claims; • the identity of the defendant; • evidence proving the validity of the patent at issue and the asserted infringement acts; and • remedies sought from the enforcement.
For a civil action, the plaintiff also needs to prove evi ‑ dence related to damages. For a manufacturing process patent for a novel prod ‑ uct, the burden of proof is shifted to the defendant to provide evidence proving that its process differs from the patented one. Moreover, if the plaintiff successfully demonstrates that it already exhausted reasonable efforts to pro ‑ duce evidence proving the infringement, the court may shift the burden of proof to the defendant. 1.7 Pre-Action Discovery/Disclosure There is no provision for pre-action discovery/disclo ‑ sure in China. However, the plaintiff can file a motion of evidence preservation prior to the filing of a com ‑ plaint, under the condition that the circumstances are urgent and that evidence may be lost or become dif ‑ ficult to obtain in the future. It is also possible to use materials obtained overseas as evidence in China. China’s accession to the Con ‑ vention Abolishing the Requirement of Legalisation for Foreign Public Documents streamlines the recogni ‑ tion of evidence collected in other signatories. Since 7 November 2023, public documents issued in other signatories of the Convention are recognised for use in China after being apostilled in the issuance country. Furthermore, the plaintiff can file a motion to ask the court to collect evidence in overseas jurisdictions via the official channel under the Hague Convention on the Taking of Evidence Abroad in Civil or Commercial Matters. 1.8 Search and Seizure Orders Evidence preservation is an available remedy for the plaintiff to search and seize evidence in the defend ‑ ant’s possession that is related to the lawsuit. The plaintiff needs to demonstrate to the court that such evidence is likely to be destroyed or difficult to obtain at a later stage. A motion can be filed prior to or during the lawsuit, and a bond is required. Upon the court’s grant of the motion for evidence preservation, the court may search, copy, photograph, video-record or take samples to preserve the evidence controlled by the defendant.
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