CHINA Law and Practice Contributed by: Hans She, Muran Sun, Yichen Zhou and Herman Zhang, Fangda Partners
6. Remedies 6.1 Remedies for the Patentee
People’s Court shall have the right to seize, impound, freeze, auction, or sell a portion of the party’s property depending on the actual situa- tion to satisfy the obligations. 6.2 Rights of Prevailing Defendants A prevailing defendant does not need to bear litigation costs including case acceptance fees, application fees for certain matters, and certain fees arising from the appearance of witnesses, authenticators, interpreters, and adjustment makers in the People’s Court. Normally, a prevailing defendant shall bear its own attorney’s fees. However, in an intellec- tual property infringement case, if the defend- ant submits evidence to prove that the plaintiff abused its rights and interest in filing the case, the People’s Court may support the defendant’s claim that the plaintiff compensates for the rea- sonable expenses such as lawyer’s fee, travel- ling expenses, and board and lodging expenses. The defendant can also file a separate lawsuit claiming such expenses. 6.3 Types of Remedies The available remedies are applicable to each type of patent. 6.4 Injunctions Pending Appeal If the People’s Court orders the defendant to cease the infringement act in the judgment, the order would not be enforceable until the judg- ment comes into force. Pending an appeal, the court decision of the first instance is not effec- tive and enforceable. However, the plaintiff could apply to order certain conduct of the defendant or prohibit the defendant from certain conduct either before or during the lawsuit, which would prohibit the defendant from further infringing the patent if necessary.
The remedies for a prevailing patentee in the pat- ent infringement lawsuit typically include cessa- tion of infringement – ie, permanent injunction, and compensation for loss – eg, damages. In cases where the infringement is wilfully commit- ted and severe, punitive damages can also be awarded by a court. Under the Chinese court, permanent injunction is awarded upon the establishment of the infringement and there is no additional requirement for such a remedy. The damages for a patent infringement shall be determined primarily on: • the actual loss suffered by the patentee due to the infringement; • the benefits obtained by the infringer from the infringement; or • a reasonable multiple of the patent royalty if the aforementioned amounts are hard to determine. For intentional patent infringement acts with seri- ous circumstances, the judge has the discretion to render punitive damages as not less than one nor more than five times the amount determined above. If the amount of the damages is difficult to approve, the judge has the discretion to ren- der statutory damages between CNY30,000 and CNY5 million by taking into account fac- tors such as the patent type and the features of the infringement. The damages for a patent infringement shall also include the reasonable disbursements of the patentee for preventing the infringement, including the attorney’s fees. If a party refuses to comply with the effective court decisions, the opposing party may request the People’s Court to enforce the decision. The
115 CHAMBERS.COM
Powered by FlippingBook