CHINA Law and Practice Contributed by: Binxin Li, Guangzhen Shang, Yue He and Lesley Wang, LeanWill Law Firm
1.14 Discovery/Disclosure There is no discovery/disclosure procedure in China. However, there are some tools and mechanisms avail ‑ able to assist the plaintiff in collecting evidence – eg, evidence preservation, court investigation and docu ‑ ment submission order. Furthermore, the burden of proof could be shifted to the defendant in certain cir ‑ cumstances. 1.15 Defences and Exceptions to Patent Infringement In patent infringement litigation, aside from the non- infringement defence (including not being for com ‑ mercial purpose and not being within the patent pro ‑ tection scope), the principal defences available for the defendant include: • the Bolar exemption (often raised by defendants); • research use (often raised by defendants); • alleged infringing technology is prior art; • alleged infringing technology is used prior to the filing date of the patent; In civil actions, the court would have discretion to decide whether or not to stay infringement proceed ‑ ings due to the invalidation proceedings initiated by the defendant. For invention patent infringement cases, the court would not normally stay the infringement proceeding due to the invalidation action initiated by the defend ‑ ant. For utility model or design patent infringement cases, the court would normally stay the case if there is a pending invalidation action filed by the defendant dur ‑ ing the answering period and the plaintiff does not provide a favourable patent evaluation report issued by the CNIPA. However, the court would not normally stay the infringement proceeding under the following circumstances: • legitimate source; • right exhaustion; • temporary transit; and • patent abuse. 1.16 Stays and Relevance of Parallel Proceedings Stays Caused by Invalidation Procedures
• the defendant files the invalidation action after the answering period of the infringement case and requests the court to stay the infringement case based on such invalidation action; • the patent at issue has survived through previous invalidation action; • there is a favourable patent evaluation report to support the validity of the patent at issue; • the defendant provides sufficient evidence proving that the accused infringing solutions it is exploiting are common knowledge; or • the invalidation raised by the defendant is obvi‑ ously groundless. In administrative actions, the IP office usually stays infringement proceedings due to the invalidation pro ‑ ceedings initiated by the defendant. Other Influence of Invalidation Procedures The court would normally require the plaintiff to submit information related to invalidation or other enforce ‑ ment proceedings in China, as claim amendments and statements may cause estoppel. If the patent claims used for enforcement were declared invalid in the invalidation proceeding, the infringement case will be dismissed accordingly. Relevance of Corresponding Foreign Cases From the legal perspective, foreign litigation or invalid ‑ ity proceedings have no legal impact on ongoing Chi ‑ nese infringement actions or invalidation proceedings. However, the claim construction of the counterpart in another jurisdiction may be used for the claim con ‑ struction of the corresponding Chinese patent under the same patent family. 1.17 Patent Amendment Patents cannot be amended in infringement proceed ‑ ings. However, if the defendant raises an invalidation proceeding before the CNIPA, a patentee can amend the patent claims within a certain timeframe during the invalidation proceeding. If claim amendments are accepted by the CNIPA, the authorities (court or IP office) in the infringement pro ‑ ceedings shall use the amended claim as the basis for infringement analysis.
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