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Overview of Patent Cases in Beijing IP Court in Recent Years
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Nov. 2018, marks the 4th anniversary of the founding of Beijing Intellectual Property Court, the first court specializing in intellectual property cases in China.  Since November 6, 2014, Beijing Intellectual Property Court shoulders the mission of improving protection of intellectual property.  It dealt with a number of novel and complex patent cases, including 3G/4G telecommunication patent infringement cases, GUI design patent infringement cases, and standard-essential patent (SEP) cases, providing effective judicial protection to innovation and technological development.  Mr. Jinshan Wang, Chief Judge of Beijing Intellectual Property Court, presented an overview of patent cases and how Beijing Intellectual Property Court tried patent cases over the past 4 years. 

I. Features of All IP Cases Accepted by the Court

Beijing Intellectual Property Court has jurisdiction over certain first-instance and second-instance IP cases.  Among them, first-instance cases within Beijing Municipality include civil and administrative cases concerning technology, civil and administrative cases concerning copyright, trademark, anti-unfair competition, etc., civil cases concerning the recognition of well-known trademarks, and anti-monopoly cases.  Beijing Intellectual Property Court also has jurisdiction over appeals of first-instance decisions that are made by basic people’s courts within Beijing Municipality concerning copyright, trademark, technical contract, anti-unfair competition and other intellectual property civil and administrative disputes.

Ever since its founding, Beijing Intellectual Property Court has accepted a large amount of technical cases concerning patents, new plant varieties, integrated circuit layout designs, technical secrets, computer software and other technology-related cases.  Apart from first-instance civil and administrative cases concerning patents within Beijing Municipality, Beijing Intellectual Property Court also has exclusive jurisdiction over administrative cases in the whole country filed by parties that are not satisfied with the administrative decisions made by Patent Reexamination Board (PRB) of National Intellectual Property Administration (CNIPA) regarding patent prosecution and invalidation, and administrative decisions made by CNIPA regarding compulsory patent license, compulsory license fees and compulsory license remuneration.

From November 6, 2014 to the end of October 2018, Beijing Intellectual Property Court accepted 50,739 intellectual property cases of various types, and the annual growth rate is higher than 30%.  The overall cases are characterized by: a high proportion of first-instance cases, technical cases with highly technical issues, and a fair number of cases related to the parties from Hong Kong SAR, Macau SAR and Taiwan and other countries.  Beijing Intellectual Property Court has concluded 37,999 cases, with an annual growth rate exceeding 50%.

II. Features of Patent Cases Accepted by the Court

In the past four years, Beijing Intellectual Property Court accepted 7,078 patent cases of various types, accounting for 13.9% of all the cases accepted.  Among them, civil cases occupy about 30% and administrative cases around 70%.  By now, Beijing Intellectual Property Court has concluded 3,939 patent cases, accounting for 10.4% of all cases concluded.  Among them, civil cases represent around 40% and administrative cases 60%.

Compared with other cases, patent cases heard by the Beijing Intellectual Property Court exhibit the following features:

First, patent cases cover a wide range of technical areas, and patents in suit are focused on cutting-edge techniques and so complex as to cause difficulty in comprehension.

Second, the litigation process is time consuming in fact-finding.  To investigate technical facts, judges need to delve into and compare technical features.  For more complex technical facts, judges need inspection, experiment, appraisal and other judicial aids to assist investigation.  All of these factors prolong the litigation process.

Third, patent cases exert tremendous influence on both industries and enterprises.  Many well-known companies and MNCs choose to file their patent lawsuits in Beijing Intellectual Property Court.  The Court’s decisions on cases concerning telecommunication patents, internet invention patents, and mobile phone and vehicles design patents, drew huge attention from the public.

III. Measures Taken by the Court to Try Patent Cases

First, Beijing Intellectual Property Court established 12 teams that specialized in patent cases.

On average, the 12 specialized presiding judges within the Court have engaged in intellectual property cases for 13 years, and 8 of them have academic background in technology.  Building specialized teams is the Court’s new attempt to tackle tough technological issues, and its achievements are remarkable.

Second, Beijing Intellectual Property Court introduced technical investigation officers into patent cases as another effective way to ascertain technical facts.  

To make the finding of technical facts more scientifically accurate and neutral, and to ensure the fairness and efficiency of patent case trial, the Court set up the  mechanism of introducing technical investigation officers to pool together technical experts from patent examination administration, research institutes, universities and high-tech companies.  These experts participate in trials, pretrial preservation and inspection to help ascertain the facts of technical cases, and serve as consultants to judges.  In addition, Beijing Intellectual Property Court set up some research and consultancy mechanism such as research groups, specialized judge meetings, judge joint meetings.  It also enhances the participation of jurors with technology background so that the Court has diverse ways to investigate the technical facts.

Third, Beijing Intellectual Property Court enhanced its function in awarding damages that reflects the full value of intellectual property. 

Based on the market value of intellectual property rights, the Court regards the amount of damages as an important factual issue of the case and make well-supported decision on it.  The Court is also exploring punitive damages and more reasonable application of evidence rules to increase the amount of damages for patentees.  In 2016 and 2017, the average damages awarded by Beijing Intellectual Property Court in patent infringement cases was 1.38 million and 660 thousand respectively, with a substantial increase over the past. 

Based on concluded cases since the founding of the Court, it supports 64.9% of reasonable litigation costs requests from winning parties.  By supporting reasonable litigation costs requests and demanding the losing party to pay the costs, the Court makes it clear that infringers pay a high price.

Forth, the Court helps improve the quality of patents by reviewing administrative decisions made by PRB. 

From the founding of the Court to the end of October 2018, the Court concluded 1,809 patent prosecution and invalidation cases, and revoked 238 administrative decisions, accounting for 13.2% of the total.  The Court performs judicial review of the patent prosecution and invalidation process, works with CNIPA to unify patent prosecution and invalidation standard, and helps improve the quality and efficiency of patent examination.

Fifth, Beijing Intellectual Property Court actively explores trial modes and rule of evidence that fit best with intellectual property cases.

The Court attempted some internationally accepted trial procedure such as public opinion solicitation, publication of dissenting opinions and discovery, to satisfy needs of judicial protection and efficiency.  In an internet invention patent case, the Court attempted interlocutory judgment.  After the Court found for the patent infringement, it ordered the infringer to stop infringement before making the final judgment, helping the patentee to take back market share rapidly.  The Court also explores different processes for cases based on their complexity.  It simplifies the format of decisions and shortens their length, so that decisions can be more specific and efficient.  The Court reasonably distributes the burden of proof and properly utilizes trial aids such as injunctions and evidence preservation.  By the end of 2017, the Court issued more than 100 procedural orders, and actively utilizes procedures such as evidence preservation, pretrial injunctions, evidence submission orders, investigation orders and investigation assistance requests.  All these measures reduce the difficulty for right holders to provide evidence.