CHINA Law and Practice Contributed by: Binxin Li, Guangzhen Shang, Yue He and Lesley Wang, LeanWill Law Firm
In administrative proceedings, if the defendant fails to obey the injunction and also did not file an appeal before a court against the decision, the IP office may apply to a court for compulsory enforcement with ‑ in three months from the date on which the appeal period lapses. If the IP office does not apply for com ‑ pulsory enforcement, the IP owner may apply to a court directly for compulsory enforcement within six months. 5.3 Discretion to Award Injunctive Relief (Final or Preliminary) If infringement is established, the court would normal ‑ ly award injunction reliefs as claimed by the plaintiff. However, in some cases the court could have discre ‑ tion as to whether or not to award injunction reliefs requested by the plaintiff. Regarding PI, the court may especially consider the public interest (eg, public access to related medicines) when deciding whether to grant the PI application filed by the plaintiff. The court would generally grant a permanent injunc ‑ tion once infringement is established and upon the plaintiff’s request. Nevertheless, based on consid ‑ erations of national or public interest, the court may instead award reasonable compensation for the ongo ‑ ing implementation of patented solutions. 5.4 Damages Damages are only available in civil enforcement pro ‑ ceedings. Damages can be calculated and deter ‑ mined by the court via the following methods in patent infringement cases: • the actual losses the plaintiff suffered due to the infringement; • the illegal profits the defendant gained from the infringement; • a reasonable multiple of the relevant licence fee for the patent; or • statutory damages ranging from CNY30,000 (approximately USD4,230) to CNY5 million (approx ‑ imately USD704,870). The plaintiff is entitled to apply one of the above meth ‑ ods for damages calculation. The court will rely on
statutory damages if it is not possible to ascertain the actual losses, illegal profits and relevant licence fee. In addition, if both the plaintiff and the defendant have previously agreed on damages, the court may adopt such agreed damages. Punitive damages of up to five times the damages awarded are also available for wilful infringement causing severe circumstances. Normally, the damages will be calculated from the infringement occurrence date to the complaint filing date. However, if the plaintiff knew or should have known of the infringement but filed the action after the three-year statute of limitation and the infringement continues at the time of filing, the damages shall be calculated based on the three-year period preceding the date of filing the lawsuit with the court. The dam ‑ ages awarded shall be payable as required by the court in the judgment. After the due date stipulated in the judgment, the interest will be calculated for unpaid damages. Damages will be addressed along with other issues (eg, plaintiff standing, infringement analysis) by the court during the trial. However, if the court considers that all issues cannot be dealt with in a single hear ‑ ing, it may split the trial for infringement and damages calculation into two hearings. In practice, upon the application of the plaintiff, the court could also issue a partial judgment addressing only the infringement issue and leaving damages for a separate judgment. Damages claims are also available for the defendant against the plaintiff’s wrongful actions (eg, malicious and wrongful PI action). If an application for a PI is ultimately found to have been wrongful, the applicant may need to compensate the respondent for the loss suffered due to the wrongful PI. In this case, wrongful ‑ ness would include the following situations: • the applicant fails to institute proceedings or arbi ‑ tration within 30 days after the PI is granted; • the PI was improper ab initio because, for example, the IP right is declared invalid; • the final judgment finds no infringement or unfair competition; or
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