Answers From Jiang zhipei Chief Justice of No. 3 Civil Chamber of the Supreme People’s Court of China to the Questions of Journalist Regarding the Release of Judicial Interpretation

Q:   It is said that the Supreme People’s Court has made a Judicial Interpretation regarding Pre-trial Provisional Measure for Ceasing Patent Infringement Conducts.  Would you please kindly elaborate on this matter?

A:   The decision of National Peoples’ Congress Standing Committee on amendment of "Patent Law of the People’s Republic of China" is coming into effect on July 1, 2001.  This is one of the positive preparation works in the legal system for China’s accession of World Trade Organization.  Article 61 of the amended patent law stipulates that patentee or relevant parties of interest may apply to People’s Court for ceasing infringement and property preservation if they have evidence showing that others is carrying out or will carry out conducts infringing their patent right and will cause irreparable harm to their legitimate rights and interests.  This article is a newly added article according to the TRIPS of WTO.  It is a provisional measure entitled by the IP owners when their IP right are infringed.  This provisional measure is of great importance in the intellectual property protection system and mechanism of many countries.  However, this kind of provisional measure is not existed in the current judicial system of China.  Therefore, many questions need to be addressed urgently, such as, after July 1, 2001, how the People’s Court should apply this newly added article correctly?  How to define the applicants of this provisional measure?  How to define the jurisdiction of such applications?  What will be the requirements for requesting such provisional measure?  What will be the standards for People’s Court to make decision on such request?  What will be the conditions for vacate such provisional measure?  In order to implement this article of patent law, the No. 1179 meeting of Adjudication Committee of the Supreme People’s Court passed the "Requirements on Applicable Laws regarding Pre-trial Provisional Measure for ceasing Patent Infringement".  Therefore, it made a specific judicial interpretation on how the People’s Court should apply the pre-trial provisional measure.

Q:   Would you please elaborate the difference between this pre-trial provisional measure and the “Preliminary Injunction” of other countries and what are the specific contents of this judicial interpretation?

A:   The pre-trial provisional measure in the amended patent law is called “Preliminary Injunction” in the legal systems of British-America and continental countries.  It is called provisional measure in Article 50 of TRIPS.  Although there are various names, they are defining substantially the same provisional measure in conformity with the enforcement requirement of TRIPS.  They have essentially the same function and effect.

The judicial interpretation of the Supreme People’s Court of China mainly deals the issue of how the People’s Court apply relevant laws in handling request for pre-trial provisional measure for ceasing patent infringement conduct made by the patentee or other applicants.  Additionally, according to the requirement of TRIPS and the needs of judicial implementation, it covers the issues of requesting evidence preservation simultaneously with the pre-trial provisional measure, as well as requesting pre-trial provisional measure when filing patent infringement lawsuit.  In other words, according to this judicial interpretation, patentee may request evidence preservation when applying for the pre-trial provisional measure.  For the patent right owner who did not request pre-trial provisional measure, he may request it when filing infringement lawsuit.  People’s Court may make decision on this request apart from the infringement lawsuit.  We believe that all these specific interpretations will improve the system for ceasing patent infringement with the pre-trial provisional measure.

Q:   Who can request for pre-trial ceasing patent infringement provisional measures in People’s Court?

A:   Article 61 of patent law stipulates that it is the patentee or parties of interest that can make such request to People’s Court.  However, this article does not specifically define the scope of parties of interest.  Based on the spirit of patent law’s legislation and years of judicial practice on patent cases, the Supreme People’s Court defines the scope of the parties of interest in this judicial interpretation.  The parties of interest include licensees of the patent license agreement and the legitimate hirees of the patent ownership.  For the licensees of the patent license agreement, sole licensee may file request on its own behalf, while the exclusive licensee may file such request on its own behalf when patentee does not apply such request.

Q:   Where and what People’s Court shall have the jurisdiction for request of such pre-trial provisional measures?

A:   The cases relating to pre-trial ceasing patent infringement provisional measure is of great professional essence as that of patent infringement cases.  According our practical regulations, patent infringement cases are handled by the High People’s Courts, Intermediate People’s Courts in capital of each provinces, and a few Intermediate People’s Courts specially authorized by the Supreme People’s Court.  Therefore, in order to ensure the uniformity of applying relevant laws and the fairness of the decisions in each of this type of cases, as well as coordinating on jurisdiction issue over this kind of cases, the article 2 in the judicial interpretation addresses this issue.  This article requires that any request for pre-trial ceasing of patent infringement provisional measure shall be filed with the People’s Court having jurisdiction over patent infringement cases.  The People’s Court having jurisdiction over patent infringement cases has a two-fold meaning.  On the one hand, it means the People’s Court that has the jurisdiction over patent infringement cases, i.e., the People’s Court that can hear the patent infringement cases.  On the other hand, it means the People’s Court who has the geographic jurisdiction according to Civil Procedure Law, i.e., the People’s Court in the locality of the infringement conducts or the residence of the infringer.  Only the People’s Court who meets this two-fold requirement will have the jurisdiction over the request for pre-trial ceasing patent infringement provisional measure.

Q:   What is the procedure for requesting pre-trial ceasing patent infringement provisional measure in court?  What evidences and documentation are required?  Does the alleged infringer entitle a review for the decision made by court on such pre-trial provisional measure?  What factors and aspects that shall be examined by People’s Court in review procedure?

A:   Because carrying out a pre-trial ceasing patent infringement provisional measure will generally have great impact on the civil interest of the relevant party, such as a corporation or other organization, it must be carried out with great cautiousness.  Therefore, certain requirements shall be imposed to the applicant of such request.  Of course, none of such requirement on applicant need to encumbrance or delay the patent owner to execute his patent right.  In this judicial interpretation, the Supreme People’s Court has made relevant requirements on the conditions of accepting such request and standards for reviewing the decision in order to ensure the fairness and effectiveness of implementing such provisional measure.

       Article 3 and 4 of this judicial interpretation define the formality element of such request, including that applicant shall submit application form, specifying the scope and reasons of his request, as well as the evidences need to be submitted by the applicant.  For example, patentee shall submit documentation showing the validity of the patent right.  Patentee of a Utility Model Patent shall submit research report issued by relevant patent administrative authority.  Parties of interest shall submit license agreement and document showing recordation of such license agreement.  Applicant for such request shall also submit evidence showing that the alleged infringer is infringing or will infringe his patent right and so on.  With these conditions on accepting such request, the relevant parties will be clearer about how to file such request and People’s Court will be able to make timely decision on specific situation.

       According to the article 10 and 11, party who not satisfied with the decision on pre-trial ceasing patent infringement entitles a review of the relevant decision.  Within 10 days of receiving the relevant decision, relevant party may file petition for review once.  The execution of the decision on pre-trial ceasing patent infringement provisional measure shall not be terminated or suspended by the review procedure.  During the review, People’s Court shall timely examine the evidence and documents submitted by both parties.  If the original decision is found correct by the review, the petition shall be rejected.  If the original decision is incorrect, it shall be amended or vacated.  For ensuring the uniformity of the reviewing standard, the Supreme People’s Court set up the following four factors, 1) if alleged infringer’s conduct consists of patent infringement; 2) without provisional measure, the infringement causes irreparable harm; 3) if applicant for provisional measure deposit appropriate guarantee; 4) if public interest will be harmed.  People’s Court accepting request for provisional measure shall examine the request by the above-mentioned four factors.

Q:   Is it necessary to deposit guarantee when request for pre-trial ceasing patent infringement provisional measure?

A:   Yes.  Applicant for such kind provisional measure must deposit appropriate guarantee.  TRIPS requires that the applicant for provisional measure to the judicial authority shall provide guarantee.  Some other countries also require applicant to deposit guarantee when executing provisional measure.  All these requirements are meant to prevent the abuse of patent right.  Article 61 of the amended patent law stipulate that, when handling request for pre-trail ceasing patent infringement provisional measure, it is the articles 93 to 96 of Civil Procedure Law of China shall apply.  The article 93 of Civil Procedure Law stipulates the requirement of deposit guarantee.  Therefore, article 6 of this judicial interpretation requires deposit of guarantee when requesting pre-trial ceasing patent infringement provisional measure, as well as factors need to be considered when deciding the amount of guarantee.

       In considering that executing such provisional measure may increase the injury to the alleged infringer, article 7 of the judicial interpretation defines the increase of guarantee on the basis of the original guarantee.  In addition, it also defines that if the amount and the way of deposit guarantee are valid and effective, the People’s Court which accepting the request shall grant the pre-trail provisional measure.

Q:   How the People’s Court practically carries out this provisional measure?

A:   The Supreme People’s Court defines the practical implementation of this pre-trail ceasing patent infringement provisional measure in several articles in the judicial interpretation.

       Firstly, according to the article 61 of the amended patent law, the pre-trail ceasing patent infringement provisional measure is a way of dealing with urgent matters that will cause irrevocable harm to the patent owner if this provisional measure is not granted.  Therefore, time is of essence to such a provisional measure.  According to article 93 (2) of Civil Procedure Law, the article 9 of the judicial interpretation requires that People’s Court shall make a decision in written within 48 hours from receiving the request for pre-trial ceasing patent infringement provisional measure.  If the provisional measure is granted, it shall be executed immediately.  When relevant facts need to be verified, People’s Court may request one or all parties for a hearing.  Then, People’s Court shall make its decision promptly.  Article 5 of the judicial interpretation requires that the People’s Court shall decide on the items requested by the applicant of such a provisional measure only.  All these requirements are of great importance for People’s Court to make timely and correct decision as well as not abuse its discretion.

       Secondly, Part III, article 50 of TRIPS stipulates that where provisional measures have been adopted inaudita altera parte, the parties affected shall be given notice, without delay after the execution of the provisional measures at the latest.  This is to say that, in order to effectively execute the provisional measure and not to leak the information, People’s Court may execute the provisional measures without notify the affected party until the execution, rather than notify the affected party in advance.  This notification to the affected party ensures the opportunity of a review.  According to this requirement, the Supreme People’s Court makes a requirement in the article 9 (2) that People’s Court shall notify the affected party no later than 5 days from the date of grant provisional measures.  This 5 days lap reflects the spirit of the TRIPS regarding inaudita altera parte decision on provisional measures.

       Thirdly, the contents and conditions for pre-trial ceasing patent infringement provisional measures are different from that of property preservation and the damages caused by not granting such a provisional measure are irreparable simply by money.  Therefore, the decision of vacating such provisional measures could not be made only because the affected parties deposit counter guarantee.  Otherwise, these provisional measures will be meaningless.  Consequently, article 8 of the judicial interpretation states that these provisional measures shall not be vacated by the affected parties’ counter security or guarantee.

Fourthly, this provisional measure granted by judicial authority is one of the provisional measures in the judiciary procedure.  It is for the benefits of patent right owners.  However, according to the requirement of TRIPS and other countries’ relevant regulations, if the party requesting for provisional measure fails in initiating a proceedings leading to a decision on the merits of the case within a reasonable period, or where it is subsequently found that there has been no infringement or threat of infringement, the provisional measures granted shall be revoked or ceased to have effect.  In such cases, the applicant for the provisional measures shall provide defendant appropriate compensation for any injury caused by these provisional measures.  The article 12 and 13 specifies the procedure of deciding compensation.

Fifthly, this judicial interpretation also defines the valid period of the pre-trial ceasing patent infringement provisional measure.  Generally speaking, such a provisional measure shall be effective until the decision on the merits of the case coming into effect.  However, People’s Court may set up a time limit of a provisional measure depending on the specific situation of the case.  When the time limit expires, People’s Court may decide whether the provisional measure shall be continued for another term.  This approach is more flexible and suitable to the judicial practice in China.

In order to effective and promptly execute the pre-trail ceasing patent infringement provisional measure and maintain the authority of law, the judicial interpretation states that any conduct violating the provisional measure will be punished according to the article 102 of Civil Procedure Law ranging from fine to personal detention.   If such conduct constitute criminal offense, it will be punished accordingly by Criminal Law of China.

Q:   When will this judicial interpretation come into effect?

A:   The judicial interpretation of "Requirements on Applicable Laws regarding Pre-trial Provisional Measure for ceasing Patent Infringement" will come into effective on July 1, 2001.