30 December 2020
Did you know?
After more than a decade of discussion, China finally published the 4th amendment to the Patent Law on 17 October 2020. The amendments will come into effect on 1 June 2021.
Why does this matter to you?
Patent enforcement in China has long been criticised for being ineffective at deterring infringers. The new law enhances the enforcement of patent rights.
The amendments introduces punitive damages in patent infringement cases. Infringers engaged in serious wilful patent infringement may be liable for up to five times the loss suffered by the patent owner. The maximum amount of statutory damages will also be increased from the current RMB1 million to RMB5 million. This is of significant practical importance as statutory damages are awarded in the majority of cases due to evidentiary difficulties in proving actual damage.
In connection with this, the lack of a discovery procedure in China has often hampered the ability of plaintiffs to prove the actual amount of damage or infringing gain, if defendants refuse to disclose their financial records. Under the new law, if the patentee has done its best to provide evidence but the materials are in the hands of the infringer, the court may order the disclosure of account books and other information. If the infringer does not disclose, or provides false records, then the court may award damages based on the patentee’s claim.
These are welcome changes to improve the enforcement of patents in China. Look out for our further Bitesize reports on how the new law affects design patents, pharmaceutical patents and the commercialisation of patents in China.
For further information, please contact:
Ian Liu, Deacons
hongkong@deacons.com
