The “Guidelines for Investigating Patent Counterfeiting and Handling Patent Marking Nonconformity Cases” has been implemented since July 13, 2020

In January 1999, SIPO published the “Provisions for Investigation and Handling of Acts of Passing Off Patent by Administrative Authority For Patent Affairs”, which was abolished on April 27, 2002. In the past 18 years, there have been almost no specific guidelines on the administrative enforcement on investigating patent counterfeiting. Recently, SIPO issued the “Guidelines for Investigating Patent Counterfeiting and Handling Patent Marking Nonconformity Cases “(hereinafter referred to as the “New Guidelines”). Since the relevant provisions on the handling patent marking nonconformity cases are basically consistent with the “Guidelines for Handling Patent Marking Nonconformity Cases (Trial)” issued by SIPO in January 2019, we only introduce some key contents on the investigation of patent counterfeiting.

  1. To further explain the patent counterfeiting actions

Article 84 of the “Implementation Regulations for the Patent Law” stipulates four specific acts and a general provision, which have been further explained in the “New Guidelines”. Such as, examples related to labeling a patent mark on products or packaging thereof which are not patented, continue to place patent marking on products or packaging thereof upon declaration of invalidation or termination of patent rights, or mark other’s patent number without license. Two special occasions, which are, (1) labeling a patent mark on products or packaging within the validity period of the patent; and (2) where a seller can prove the legitimate source of the relevant products, although such the sale action is a patent counterfeiting action, the seller would only be ordered to stop selling, and a fine would not be imposed.

In addition, the “New Guidelines” also specifically stipulates the handling of products with foreign patent marks, that is, it cannot be regarded as a counterfeit patent only because the foreign patent mark is marked, instead, the authenticity of the foreign patent should be the key factor on the determination of a patent counterfeiting action.

  1. Several special occasions that shall not be deemed as patent counterfeiting actions.

(1) The production date is earlier than the patent grant date, but the ex-factory date is later than the patent grant date;

(2) The patent is terminated due to the failure in paying the patent fees, if the patentee makes the payment retrospectively, and the patent becomes valid again;

(3) The date of production and labeling are earlier than the patent expiration date;

(4) The seller purchased the product earlier than the patent expiration date.

The “New Guidelines” also stipulates the procedures for handling cases, which are basically the same as those for most administrative penalty cases, but there are some details could be taken into consideration. In addition, the “New Guidelines” also provides many real cases for a more detailed explanation, such as the relevant guidelines on the evidence that the parties should provide.