“The major issue in patent litigation in the People’s Republic of China is obtaining evidence to prove infringement.” ~ Douglas Clark
As China’s economy has risen to be one of the largest in the world, disputes involving intellectual property rights will become more frequent as well as increasingly critical for business survival.
“Patent Litigation in China” by Douglas Clark (Oxford University Press 2011; 320 pp.), provides U.S. and other non-Chinese practitioners with an overview of the patent litigation system in China and enable those contemplating or involved in patent litigation in China to better comprehend the risks and challenges they face, as well as to ensure better decision-making by those responsible for bringing or defending patent actions.
The People’s Republic of China (PRC or China) has a dual administrative and judicial system for enforcing patents. Patent enforcement actions may be brought in either administrative bodies or to the courts. The State Intellectual Property Office (SIPO) and the Patent Review and Adjudication Board (PRAB or Patent Re-examination Board) is the key administrative body handling patent related matters.
Under the administrative system, patent enforcement actions are brought to local branches of the SIPO where the infringement is occurring although the General Administration of Customs also can take action to seize imports or exports of products that infringe a patent. Meanwhile, the courts may handle all infringement cases directly but have no power to act on validity cases other than on appeal.
The book covers the grounds for invalidating patents, evidence gathering, litigation strategy and procedure, as well as defenses and remedies. Additional topics include design patents and preliminary and interlocutory issues.
This is an extremely useful guide for attorneys who want to proactively address the considerable challenges and risks associated with pursuing patent litigation in China. The coverage of the topic is both thorough and informative.
About the Author
Douglas Clark is an intellectual property lawyer who has practiced in China for more than 15 years. Until the end of 2010 he was a partner with the international law firm of Hogan Lovells and head of the firm’s mainland China intellectual property practice as well as co-head of its worldwide patents group. Since 2011 he has worked as a sole practitioner.
“Patent Litigation in China” by Douglas Clark (Oxford University Press 2011; 320 pp.) can be ordered from Amazon.