CHINA Law and Practice Contributed by: Hans She, Muran Sun, Yichen Zhou and Herman Zhang, Fangda Partners
2. Initiating a Lawsuit 2.1 Actions Available Against Infringement
to request the restoration of rights from the CNI- PA. During the periods of waiting fee payment and restoration of rights, the patent rights are not invalidated, and the patent holder can main- tain their rights’ validity through certain actions. If the patent holder does not initiate the restora- tion process or if the restoration request is not approved, the patent office must proceed with the invalidation process and publish it in the Pat- ent Gazette four months after issuing the termi- nation notice. 1.10 Post-Grant Proceedings Available to Owners of Intellectual Property Rights Once a patent has been granted, any proac- tive amendments to the application documents received after the issuance of the patent grant notification will not be considered by the CNIPA. During the patent invalidation phase, patent holders are permitted to make corresponding modifications to the patent documents. How- ever, these alterations must adhere to the fol - lowing criteria: • they must not alter the core theme of the original claims; • they must not expand the protection scope of the original claims beyond what was author- ised; • they must stay within the range specified in the original specification and claims; and • generally, they should not add technical fea- tures not included in the authorised claims. Thus, modifications during patent invalida- tion typically involve the deletion of claims, the removal of technical aspects, further refinement of claims, and correction of evident errors.
A patent owner or interested party, such as a licensee with sole licence rights or a third party explicitly authorised by the patent owner, can either file a lawsuit before the People’s Court or file a complaint before the CNIPA or a local pat- ent office seeking resolution. Furthermore, for cases involving patent coun- terfeiting, aside from assuming civil liability as stipulated by law, the department responsible for patent enforcement can order corrective action and public notification. Such actions can be taken by administrations for market regulation or customs. Generally, patent infringement will not constitute a criminal offence. 2.2 Third-Party Remedies to Remove the Effects of Intellectual Property In China, several mechanisms, including oppo- sition actions, patent invalidation procedures, declaration of non-infringement lawsuits and compulsory licensing procedures, are in place to assist third parties to remove the effects of the technical intellectual property right. For opposition action and patent invalidation proceedings, any entity or individual may initiate such a proceeding and there is little restriction under the law for the qualification of a complain- ant and the institution of the proceeding. Oppo- sition actions must be initiated from the date of publication of a patent application until the granting of the patent is announced. For patent invalidation proceedings, any entity or individual, from the date the CNIPA announces the grant- ing of a patent, who believes that the grant of such patent does not comply with the relevant
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