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08 July 2014
In order to fight patent infringement on the internet, the State Intellectual Property Office of China (SIPO) has recently issued the Work Plan for the Special Action of Patent Law Enforcement and Right Protection in the E-commerce Sector.
The purpose of this special action, as stated in the notice of printing and distribution of the plan, is to create a responsive, fast-acting, and quicklycoordinated mechanism for patent protection; to explore and establish long-term mechanism for patent enforcement and protection in the e-commerce sector; to curb and fight against patent infringing activities in the e-commerce sector; and to create a patent-friendly e-commerce environment for rights owners, innovators, investors and consumers.
“The issuance of the Plan shows that SIPO takes great efforts in intellectual property protection on the e-commerce sector. Therefore, local IP offices and the e-commerce platform providers will be more active in dealing with the patent infringement cases involving e-commerce,” says Cheng Bing, a partner at AnJie Law Firm in Beijing.
SIPO urges local IP bureaus to make sure the plan is fully deployed to create a patent-friendly e-commerce environment for rights owners, innovators, investors and consumers, while rights protection centres are responsible for coordinating patent protection matters with e-commerce trading platforms.
Cheng expects online patent infringement to decrease after the plan is implemented and says “it will certainly increase patent owners’ confidence and reduce their cost to enforce their patent rights in the e-commerce sector.”
Speaking of the challenges of fighting online patent infringement, Cheng says it is difficult to identify the real infringers on e-commerce platforms as many of the infringers are anonymous. Difficulty also rises from the large number of small enterprise infringers and individual infringers doing business online, noting that it is nearly impossible to defeat them all. Moreover, infringers can easily set up another business at a different platform or use different names.
“There is always a balance consideration between legal cost and affordable damages that patent owners may receive,” Cheng says.
Xiaoman Gu, a partner at Shangcheng & Partners in Beijing, believes the major problem that patent owners face on e-commerce platforms is to confirm or prove patent infringement; patents protect technology, but there may not be enough available technical information upon which a patent infringement can be asserted.
The plan indicates four possible solutions for this action:
1) For obvious infringing activities, quickly delete or block links to infringing products;
2) For complex infringing activities, quickly delete or block links to infringing products with reference to advisory of patent infringing determination;
3) According to the mediation letter or settlement decisions, delete or block links to infringing products and close down online stores in time;
4) Investigate and deal with counterfeiting patents in the ecommerce sector.
The biggest challenge in deploying the plan is to catch the “big fish,” as masters of infringement can easily disguise their real identities and address, says Chen. “Even if some information is found, the real infringer may not be caught. The big fish will continue infringing as long as they are not given enough punishment.”
The plan will be carried out by state and local IP offices from June to November of 2014. Local IP offices are required to submit a report summarizing the special action outcome to SIPO with recommendations on building a longterm mechanism in connection with patent enforcement on e-commerce.
It is good that patent owners have one more way to protect their technology, says Gu. However, based on this plan, a consulting opinion should be requested by the patent owner and issued by the enforcement centre if there is any claim on patent enforcement, she says. “We will wait and see if there is any reference of this consulting opinion to the possible later litigation proceeding by the court if there are any different opinions,” she says.
