Administrative Solutions to Patent Infringement in China

Under the TRIPS agreement, China is required to step up enforcement of IP rights. Enforcement must be effective, fair and equitable. Judicial and administrative decisions should be in writing and available for review, and decisions should provide ample compensation. Criminal charges must be able to be brought against large, commercial infringing organizations.

According to Mei Gechlik in a paper she wrote for the Carnegie Endowment, “Protecting Intellectual Property in Chinese Courts,” the most efficient and inexpensive enforcement mechanism for patent enforcement appears to be the Patent Reexamination Board (PRB) of China’s State Intellectual Property Office. In case you missed the paper in January of 2007, here’s a summary of her points:

Steps to Protect Inventions and Designs:

• US companies should use the PRB more often, and use Chinese legal representation when they do because Chinese lawyers correlate with a greater success rate. Even if the US party does not succeed in the cheap and easy PRB review, they can still appeal to the Chinese court system as Pfizer did with their Viagra patent.
• US companies should apply for Chinese patents with haste and apply for multiple types of patents. According to Ms. Gechlik, US companies are largely unaware that China has a first to file system rather than a first to use system, and there are plenty of Chinese companies that closely monitor inventions being filed in the US. Since invention patents take a while to process, Ms. Gechlik also suggests that US companies concurrently file for utility model and design patents.
• US companies should endeavor to understand Chinese patent protection, and if they are unsatisfied they should direct their complaints to the Chinese government. Two avenues are offered: for SMEs, China's intellectual property ombudsman in Washington; for all, the biannual Business Communication Session of China's SIPO.

Pressuring the Government

• US business and government should pressure China to publish all of their IP decisions as per TRIPS. It is unclear that all decisions are actually being published at www.ipr.chinacourt.org.
• US business and government should pressure China to improve efficiency and quality of the judicial process. They need more judges and more staff because too many errors are creeping into the decisions.

Ms. Gechlik's paper is a good read and the points she makes are important, and the wider the audience the more greater its effect.

At the very least, changes in US law should make US companies more aware of how to pursue patent strategy in China, and should decrease whining and excuses based in ignorance of China's laws.