China's draft patent enforcement guidelines may not be enough

Gao Min has been quoted extensively in an article published in Managing Intellectual Property on China's Draft Administrative Patent Enforcement rules.

On 27 January 2015, SIPO released a revised draft of its Administrative Patent Enforcement rules with the purpose of reducing the time frame for patent administrative litigations and improving both procedures and online enforcement.

Gao has commented in MIP on the draft's aim to increase transparency by requiring authorities to publish their decision online, but she says "From experience, I find that the agencies are often reluctant to publish their decisions, perhaps because they might not be confident of their logic and they don’t want to be scrutinised."

Gao has also noted some problems with the current rules where anyone qualified to be a government official is able to work as a patent administrative enforcement officer and "Often, the administrative enforcement officers are former military veterans who have very little if any experience with IP, or they are fresh graduates with a legal background but no scientific expertise. I often see administrative enforcement officers pushing for settlements rather than judgments, and I think it's because they lack confidence due to their lack of background." Consequently, Gao usually recommends, despite the added time and effort, that clients pursue enforcement actions through the courts rather than going down the administrative route.

She argues further that the reduced time frame for patent administrative litigations in which cases involving invention or utility model patents are closed within three months, and design infringement matters within two months is not efficient enough. Gao instead says that "There are better ways to do this; Taobao's system for dealing with infringement on its marketplace takes only one week, and in some instances, can be completed in two days". Gao suggests instead that there should be separate and faster procedures for cases involving obvious infringement, which would help rights holders react quickly to more egregious cases.

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