Regulations of Shanghai Municipality on the Protection of Patents

(Adopted at the 35th Session of the Standing Committee of the 11th Shanghai Municipal People’s Congress on December 28, 2001)

Chapter I General Provisions

Article 1 For purposes of protecting patent rights for inventions and creations, of safeguarding the legitimate rights and interests of patentees, of promoting technological renovations, and of maintaining the economic order of the market, these Regulations are formulated in accordance with the“Patent Law of the People’s Republic of China”and the“Rules for the Implementation of the Patent Law of the People’s Republic of China”and other relevant laws, administrative statutes and in line with the actual circumstances of this Municipality.
Article 2 These Regulations apply to the patent administration, the administrative treatment and mediation of patent disputes and the investigation of illegal acts relating to patents and other patent protection activities in this Municipality’s administrative area.
Article 3 The municipal and district/county people’s governments shall strengthen the leadership over the patent work, raise the whole society’s awareness of patent, strictly enforce laws and regulations governing patent protection and safeguard the legitimate rights and interests of patentees.
Article 4 Shanghai Municipal Intellectual Property Bureau (hereinafter referred to as the“MIPB”) is the competent administrative department of this Municipality’s patent work responsible for the patent administration and for organizing the implementation of these Regulations in this Municipality’s administrative area.
The departments of district and county people’s governments responsible for patent work shall, according to the provisions of these Regulations, carry out relevant patent work under the leadership of the MIPB.
Other administrative departments concerned shall, according to their respective functions, do well in the patent protection work.
Article 5 Relevant trade associations shall encourage their members to apply for, and exploit, patents, urge their members to respect other persons’patent rights, support their members to safeguard their independent patent rights and provide their members with consulting services concerning patent.
Article 6 Any units or individual persons have the right to report illegal acts about patents to the patent administrative departments or other relevant departments.

Chapter II Administration over Patents

Article 7 The MIPB and the departments of district/county people’s governments responsible for patent work (hereinafter jointly referred to as the patent administrative departments) and other relevant administrative departments shall direct enterprises and institutions to carry out the patent protection work, and guide enterprises and institutions to establish and perfect the system of patent management.
Article 8 Units and individual persons are encouraged to apply for overseas and domestic patents on the inventions and creations that conform to the patent application requirements.
Article 9 Enterprises, institutions and individual persons, when developing technology, doing the import and export trade or establishing enterprises with appraised patents contributed as investments, are encouraged to carry out patent search by themselves or entrust intermediary agencies engaged in patent services with such work.
In any of the following circumstances involving patented technology, the applicant or declarer shall submit a patent search report to the relevant administrative department; if the applicant or declarer fails to submit such report, the relevant administrative department will not grant project-filing, accreditation or award:
(1) To apply for projects of research and development or of technological renovation with government subsidy;
(2) To declare projects of transforming advanced new technology into productivity;
(3) To declare projects for the Municipality’s science and technology advancement awards.
Article 10 The right to apply for a patent on post-related invention and creation belongs to the corresponding unit; upon approval of the application, the said unit shall be the patentee.
The unit granted a patent shall, according to the provisions of laws and regulations, give awards to the inventor(s) or designer(s) of post-related invention and creation; the said unit, if exploiting by itself, or licensing others to exploit, the patent, shall, according to the provisions of laws and regulations, give rewards to the inventor(s) or designer(s) of the post-related invention and creation; the said unit, if assigning the patent, shall, by making reference to the provision on licensing others to exploit the patent, give rewards to the inventor(s) or designer(s) of the post-related invention and creation.
Awards or rewards may be paid in cash, shares, equity earnings or other form agreed on by the parties concerned and the amount, time and form of payment shall be agreed on by the parties concerned. Such awards and rewards shall not be lower than the minimum standard stipulated by laws and regulations.
Article 11 Intermediary agencies engaged in patent agency, patent search, patent evaluation, patent licensing trade and other patent services shall have corresponding qualification and go through the registration formalities according to law before taking up intermediary services relating to patents. The registering agency shall report matters relating to the registration to the MIPB. The MIPB shall strengthen guidance and supervision over the intermediary agencies engaged in patent services.
Intermediary agencies engaged in patent services and their staff members shall abide by the provisions of laws and regulations, carry out intermediary services in an independent, objective and just way, and are not allowed to issue false reports, collude with the parties concerned to seek unjust interests, or damage the legitimate rights and interests of patentees and other parties concerned, or the public interests of society.
Article 12 Holders of exhibitions, demonstrations, popularization meetings, trade fairs and other conventions are entitled to inspect the patent certificates or patent licensing contracts for the products and technologies bearing patent marks on exhibition. The holders are entitled to refuse to admit those products and technologies without covering patent certificates or patent licensing contracts to the exhibitions as patented ones. Holders of conventions and exhibitions, when discovering any act of imitating other person’s patent or passing the false patent off as genuine patent have the right to report it to the patent administrative departments.
Article 13 The patent administrative departments shall strengthen the building of patent information networks to provide the society with patent protection information service and other related patent information services.
Article 14 The MIPB and relevant departments shall strengthen the patent administration and the training of patent service personnel.

Chapter III Administrative Treatment and Mediation of Patent Disputes

Article 15 No units or individual persons shall illegally exploit other person’s patents or provide any facility of production and operation for illegal exploitation of other person’s patents.
Article 16 In the case of infringement disputes arising from the exploitation of patents without the patentee’s permission, the patentee or interested person may, according to the provisions of laws and regulations, bring lawsuits to the people’s court or request the MIPB to handle such disputes.
If the party concerned requests the MIPB to handle the matter, the MIPB shall accept and hear the case according to law.
Article 17 Any person who requests the MIPB to handle disputes about patent infringement shall meet the following requirements:
(1) The requestor has direct interests in the patent infringement dispute;
(2) Having definite requested person(s), specific matters and facts in request;
(3) None of the parties concerned have brought lawsuits to the people’s court; and
(4) Matters falling under the jurisdiction of the MIPB.
Article 18 Any person who requests the MIPB to handle patent infringement disputes shall submit a letter of request for handling patent infringement dispute and related proofs.
Article 19 The MIPB shall, within five days from receiving the letter of request for handling patent infringement dispute and related proofs, decide whether or not to take up the case and notify the requestor in writing. If the submitted materials are not complete, the MIPB may ask the requestor to make them up within the prescribed time.
Article 20 The MIPB shall, within five days from taking up a patent infringement dispute, send a copy of the letter of request to the requested person(s). The requested person(s) shall, within 15 days from receiving the copy of the letter of request, submit the statement of defense and related proofs.
If the requested person(s) fail(s) to submit the statement of defense and related proofs, the progress of handling procedure will not be affected.
Article 21 The MIPB, when handling patent infringement disputes, may first conduct mediation on the basis of the will of both parties concerned. If an agreement is reached through mediation, the MIPB shall make out a letter of conciliation. When parties concerned are not willing to go to mediation or the mediation is unsuccessful, the MIPB, if affirming the establishment of a patent infringing act, shall make a treatment decision and order the wrongdoer to stop the infringing act; the MIPB, if affirming that the patent infringing act is not established, shall notify in writing the parties concerned. When the MIPB affirms that a patent infringing act is not established, the party concerned may also bring a civil lawsuit according to law.
Article 22 The MIPB shall verify relevant proofs before making a treatment decision on a patent infringement dispute.
The MIPB may, according to the request of the party concerned, probe and collect proofs that the party concerned cannot collect by itself for objective reasons. Relevant units and individual persons shall provide materials accurately.
In handling patent infringement disputes, the MIPB may, according to the application of the party concerned or the needs of the case in question, entrust relevant units to do technical appraisals.
Article 23 In making treatment decision on patent infringement disputes, the MIPB may adopt the following forms to curb torts
(1) Ordering those who make patented products to stop the making, destroy or scrap the moulds and special equipment for making patented products and not to use and transfer the patented products already made nor to put the said products on the market in any forms;
(2) Ordering those who use patented process to stop the use and not to use or transfer the products obtained directly by the patented process or put the said product on the market in any forms;
(3) Ordering those who sell patented products or the products obtained directly by patented process to stop sales and not to transfer in any forms the patented products or the products obtained directly by patented process which have not yet been sold out;
(4) Ordering those who promise to sell patented products or the products obtained directly by patented process to stop expressing the intention of effecting the sales, and not to take any actual selling action;
(5) Ordering those who import patented products or products obtained directly by patented process to stop using such products that have entered this city nor transfer the same in any forms.
The MIPB, if still unable to curb the infringing act by adopting the forms mentioned in the previous clause, may order the wrongdoer to destroy or scrap the products involved in the infringing act.
Article 24 The parties concerned may also request mediation for the following patent disputes according to law:
(1) Disputes about the amount of compensation for patent infringing act;
(2) Disputes about the right to apply for patents and the ownership of patents;
(3) Disputes about the qualifications of inventors and designers;
(4) Disputes about the awards and rewards to inventors and designers of post-related inventions; and
(5) Disputes about failure to pay any appropriate fees for the use of invention after the publication of the invention patent application and before the grant of the patent right.
The MIPB shall conduct mediation according to law and make out a letter of conciliation if an agreement is reached; and if the mediation fails, the party concerned will be advised to bring a civil lawsuit according to law.

Chapter IV Investigation and handling of Illegal Act Relating to Patent

Article 25 No unit or person is allowed to imitate other person’s patent, pass the false patent off as genuine patent or provide any facility of production and operation for imitating other person’s patent or passing the false patent off as genuine patent.
Article 26 The MIPB shall investigate and handle the acts of imitating other person’s patent, passing the false patent off as genuine patent and of providing any facility of production and operation for imitating other person’s patent or passing the false patent off as genuine patent. The patent administrative department of district/county people’s government in the locality where the infringing act occurs shall cooperate in investigation and handling.
Article 27 In investigating the acts of imitating other person’s patent, passing the false patent off as genuine patent and of providing any facility of production and operation for imitating other person’s patent or passing the false patent off as genuine patent, the MIPB may exercise the following functions and powers:
(1) Questioning the parties concerned and related witnesses;
(2) Consulting and duplicating contracts, drawings, account books and other materials relating to the case;
(3) Making on-the-spot inspection, taking photos and tape records or registering and keeping articles relating to the case.
In investigating and collecting evidence, patent administrative law-enforcers shall notify the parties concerned and relevant persons to be present and shall keep the business secrets involving the parties concerned. The parties concerned and relevant persons shall cooperate in the investigation and shall not refuse or obstruct the investigation.

Chapter V Legal Liability

Article 28 If a project for which no patent search report is provided or placed on file, accredited or granted an award in violation of the provision of Article 9 Clause 2 under these Regulations, the persons directly responsible shall be given administrative punishment by their work unit or superior authorities according to law.
Article 29 Violators of the provision of Article 11 Clause 2 under these Regulations shall be punished by the relevant administrative department according to the provisions of laws and regulations; among them, those who issue false patent search reports to seek unjust interests shall be given warnings by the MIPB and have their illegal gains confiscated and cumulatively be fined between not less than 1,000 yuan and not more than10,000 yuan.
Article 30 Those who imitate other person’s patent or pass the false patent off as genuine patent in violation of the provision of Article 25 of these Regulations shall be punished by the MIPB according to the provisions of Articles 58 and 59 of the“Patent Law of the People’s Republic of China”; if a crime is constituted, the party concerned shall be prosecuted for criminal liability according to law.
Article 31 Those who provide any facility of production and operation for imitating other person’s patent or passing the false patent off as genuine patent in violation of the provision of Article 25 of these Regulations shall be ordered to make correction by the MIPB; refusal to make correction shall be subject to confiscation of illegal gains and a fine of between not less than 1,000 yuan and not more than 10,000 yuan.
Article 32 The party concerned, if disagreeing with the specific acts of the MIPB or other administrative departments, may apply for administrative reconsideration or bring an administrative lawsuit according to the provisions of the“Law of the People’s Republic of China on Administrative Reconsideration”or the“Administrative Litigation Law of the People’s Republic of China”.
If the party concerned does not apply for reconsideration of the specific administrative act, nor brings a lawsuit, nor performs the specific administrative act before the deadline, the administrative department that makes the specific administrative act may apply to the people’s court for compulsory enforcement.
Article 33 Staff workers of the patent administrative departments who commit any of the following acts that are not serious enough to constitute crimes, shall be given administrative punishment by their work units or superior authorities according to law with illicit gains, if any, confiscated:
(1) Harboring or indulging units or individual persons imitating other person’s patent or passing the false patent off as genuine patent;
(2) Divulging secret information to units or individual persons imitating other person’s patent or passing the false patent off as genuine patent to help them evade investigation and handling;
(3) Showing partiality to one side to a dispute and infringing on the legitimate rights and interests of the other side in the course of mediating the patent dispute;
(4) Revealing business secrets of the parties concerned;
(5) Other acts like abusing powers, neglecting duty and malpractice for personal gains etc.

Chapter VI Supplementary Provision

Article 34 These Regulations shall become effective on July 1, 2002.