Confirmation of Non-infringement of IPR

In practice, it is very common that a patentee or a trademark owner would send warning letters to competitors or distributors. However, after sending out such warning letters, if the patentee or the trademark owner fails to take further action, then the receiver would be affected by such warnings, but the receiver could not get a judicial relief by claim for unfair competition. In order to prevent the abuse of IPR by the rights holders to restrict competition by such warning, the confirmation of non-infringement of IPR (“Non-infringement”) came into being. Non-infringement refers to the party whose interest is affected by the certain IPR, brings a lawsuit against the IPR holder, and asks the court to confirm that it has not infringed the IPR holder’s right.

The current laws and regulations have not stipulated Non-infringement clearly. However, some judicial interpretations and judgements released or made by the Supreme People’s Court have mentioned part of the elements related to Non-infringement, such as the categories, acceptance requirements, claims and etc., which could guide the judicial departments to deal with such lawsuits in practice.

For the categories, “Provisions on the Cause of Action of Civil Cases” has prescribed 3 the fourth level causes under the third level cause, “dispute over confirmation of non-infringement of intellectual property right”. Those 3 the fourth level causes include: (1) dispute over confirmation of non-infringement of patent right; (2) dispute over confirmation of non-infringement of trademark right; (3) dispute over confirmation of non-infringement of copy right. Despite those 3 categories, whether the receiver could apply this to the trade secrets, domain names and other IPR? Although there is no specific rules, “Notice of the Supreme People’s Court on Issuing the Revised Provisions on Causes of Action in Civil Cases”, in which the Supreme People’s Court emphasizes that the courts shall not turn down or reject a complaint in the excuse of no matching cause of the action can be referred in the provisions. While there is no matching cause in the fourth level cause, then the third level cause could be applied. In view of this, more courts prefer to accept the Non-infringement related to IPR other than those 3 categories hereinabove with the third level cause. For example, Shanghai First Intermediate People’s Court has made the judgement (2010) Yi Zhong Min Chu Zi No. 14719, which is for the plant variety right.

For the acceptance requirements, despite the normal requirements for civil cases, “Interpretation of the Supreme People’s Court on Several Issues concerning the Application of Law in the Trial of Patent Infringement Dispute Cases” has prescribed 3 requirements for Non-infringement of patent right, which include, (1) the patentee has sent a warning to the others for claiming the infringement; (2) the receiver or the interested party urges the right holder to exercise the right of action with a written reminder; (3) the patentee neither withdraws the warning nor files a lawsuit within 1 month upon receiving the written reminder, or within 2 months upon issuing the written reminder. For the other categories of IPR, the above requirements are applied in the judicial practice. For example, Beijing Digital Heaven Information & Technology Co., Ltd. V. Nanjing Starry Sky Communications & Development Co., Ltd. challenge on jurisdiction over a dispute. In view of this, the receiver shall well send the written reminder and keep the relevant evidence.

For the claims, especially for the compensation issue, there is a meeting minutes of the Supreme People’s Court on discussing “Some Issues on Trial of Patent Infringement Cases” in 2003, in which the court has mentioned while the warning action by the patentee or the relevant interest parties has infringe the other rights of the receiver, the receiver could claim for compensation, stop the infringement, eliminate the negative effects, make formal apologies. In fact, there are some judgements have reflected such opinion.

Non-infringement reminds the patentee to send a warning letter cautiously in order to avoid the compensation risk; on the otherh hand, the receiver could analyze its reality, and make good use of the above mentioned judicial rules to bring an non-infringment lawsuit in order to protect its own interests.