Patent Litigation Stategy With China Court

A lot of things you need to know before launch a litigation case in China. As an experienced China IP lawyer, I hereby give you some tips. Preferably you will hire a China IP litigation lawyer that has been practicing in China for at least 10 years.  In addition, you should be aware of the 2 year rule of statute-of-limitation. Not notice pleading must include evidence of infringement. The lawsuit must be filed where defendant resides or infringement took place. You are advised to investigate “local” connections before filing suit, especially government connections. Preliminary injunction are available under some circumstances. The competent court would be the Intermediate People’s Court and only one appeal to Higher People’s Court. The damages can be measured in defendant’s profits, but also could be compulsory licensing.

However much of the recent patent litigation has been initiated by businesses and law firms that only license and develop intellectual property.  These antagonists are likely unwilling to spend aggressively.  Instead, they often look for a quick profit.

After analyzing your opponent, we will also analyze the patents your are alleged to have infringed. Many times patents are asserted that would likely be invalidated if your dispute went to try.  Identifying weak patents can greatly speed a quick and advantageous settlement, particularly if your opponent is looking to assert them against other rivals.

By carefully considering your opponent’s motivations and patents, we are usually able to avoid going to court and reach a settlement on favorable terms. Chinese patent litigation is gaining prominence because of recent successes.  Is it worth investing in Chinese IP rights?

You’ve read the news reports that Chinese patent enforcement actions are succeeding on a more frequent basis.  Your competitors are manufacturing in China and you would like to have some tools at your disposal to stop potentially infringing conduct.  Is it time to go “all-in” in China and start aggressively engaging the Chinese Patent Office by filing for numerous Chinese patents?

A comprehensive foreign filing strategy is imperative during these difficult economic times and pressures on your IP budget.  When deciding whether to file for patent protection in China for a particular product or family of products, recognize that it is still the “Wild West” there, though the number of success stories is growing.  For example – can your patent litigation lawyer even get the evidence you need to succeed in a patent litigation?

To illustrate this point, consider the case of a component part manufacturer, Ace Manufacturing.  Pursuant to a prudent patent filing strategy, Ace evaluated the market for its component, the likely locations its competitors would be manufacturing, and the likely locations its customers would be manufacturing the end product.  All of this analysis was done as part of a smart strategic plan to maximize the impact of Ace’s patent portfolio by only filing where it was most likely Ace would some day seek to enforce its patents.  In the end, Ace filed for patent protection in China, among other jurisdictions.

China patent infringement cases must be filed where the infringer is domiciled or in the place of infringement. Places of infringement include not only the places where the infringing acts actually have occurred but also any place affected by the consequences of infringement. To avoid litigation in a defendant's home court, plaintiffs may wish to join distributors of the infringing product located in jurisdictions more favorable to the plaintiffs as additional defendants.

China has a two-year statute of limitations for patent infringement, which runs from the date on which the patentee knew or should have known about the infringement. For continuing patent infringement, the patentee can usually obtain an injunction against the infringement even if it failed to investigate within the two-year limitations period, provided that the patent rights are still in force, but damages will be limited to those suffered in the last two years.

Patent litigation is in its infancy in China, but it is possible for a foreign company to enforce patent rights in China, given sufficient will and patience to master the Chinese system. China patent litigation system is more and more strong than it is in the past.

Read 481 times Last modified on Saturday, 14 September 2013 04:45
Shenzhen Lawyer

A Shenzhen lawyer practicing in one of the best Shenzhen law firms handle commercial and family law matters across the country. Free preliminary legal consultation. Tel: +86 188 19019636. Email: peterzhulaw@hotmail.com

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