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E-commerce Law and E-commerce Intellectual Property Protection Forum, which was sponsored by Beijing Municipal Intellectual Property Office and Beijing Higher People’s Court, and hosted by Beijing Intellectual Property Protection Association and the Intellectual Property Protection Alliance of E-Commerce, was successfully held on September 12, 2019 in Beijing.
Brief flow chart
1. Highlights of the Forum
At the forum, the representative from Beijing Municipal Intellectual Property Office introduced the “Regulations for Rapid Handling of Patent Infringement Disputes in the E-Commerce Sector in Beijing (Trial)” (referred to as “Regulations” hereinafter), which was published recently. The Regulations were implemented on September 1, 2019. The Regulations include 18 articles, which are brief in content, including the scope of dispute trial, complaint materials, handling procedures, handling results and so on.
A. The scope of dispute trial
For E-commerce platform whose place of registration or main business is located in the administrative area of Beijing, as to patent infringement complaint that occurs in this e-commerce platform, if the case is considered to be complicated, and the parties have not filed a lawsuit against the patent infringement dispute to the people’s court, the operator of the e-commerce platform may transfer the case to Beijing Municipal Intellectual Property Office for rapid handling after obtaining written consent of the complainant and the respondent.
B. Complaint materials
For the case the E-commerce platform requesting rapid handling, when a utility model or design patent is involved, the complainant shall submit a copy of the patent register or the receipt of the annual patent fee in the current year to prove that the patent right is valid, and shall submit an evaluation report to prove its stability.
C. Handling procedures
The Beijing Municipal Intellectual Property Office, within five working days from the date of receipt of all materials handed over by the e-commerce platform, if it believes that it does not meet the requirements, will return the case to the e-commerce platform. If the Beijing Municipal Intellectual Property Office believes that it meets the requirements, it will mediate according to the wishes of the parties and produce a mediation agreement within five working days. If the mediation agreement cannot be reached, the Beijing Municipal Intellectual Property Office will close the case within 45 days from the date of filing the case. If the case is complicated, the time limit may be extended, but the maximum period is no more than 15 days. If it is found that the fast procedure is not applicable, the Beijing Municipal Intellectual Property Office may notify the parties to switch to the ordinary patent administrative mediation procedure. If the parties do not agree, the case will be returned to the e-commerce platform.
D. Handling results
If the Beijing Municipal Intellectual Property Office believes that the infringement is established and needs to order the infringer to immediately stop the infringement, it shall clearly state the type, object and scope of the order to immediately stop the infringement. If it is determined that the infringement is not established, the request shall be rejected.
It should be noted that, in the case where the department that manages the patent work or the people’s court has already made the infringement determination, if the infringer makes the same type of infringement again for the same patent right, the Beijing Municipal Intellectual Property Office can directly make a decision to immediately stop the infringement within five working days.
2. Work experience of BEIP
In the past work, BEIP has dealt with many works involving patent infringement complaints on e-commerce platforms. In some cases, the e-commerce platform has been unable to make judgments, resulting in multiple rounds of “notice-counter-notification” between the patentee and the operators in the platform. Although it can be seen that the platform has tried to handle complaints steadily, the result is often a deadlock in the entire process. In order to break the situation, the patentee is likely to choose to withdraw the complaints on the e-commerce platform and switch to the patent administrative enforcement and patent civil proceedings.
BEIP believes that the above situation, although it cannot represent the handling results of the majority of complaints, it reflects the limitations of the e-commerce platform in handling patent infringement complaints. Objectively, the intervention of external forces is needed to promote the rapid and efficient resolution of relevant disputes without excessively increasing the costs of all parties.
3. Optimistic outlook of BEIP
BEIP believes that the Regulations can be considered as a further implementation of “E-commerce Law”. Under the current framework, this is a useful attempt to improve the efficiency of patent infringement judgment in the e-commerce sector and create a good business environment. The Regulations not only provide a new choice for the e-commerce platform in Beijing, as well as related patent holders and operators within the platform, but also truly enhance the work value of intellectual property lawyers and patent attorneys. We believe that the Regulations will play an active construction role in practice.
BEIP is dedicated to providing quality intellectual property services to our clients. In addition to senior domestic and international intellectual property professionals, BEIP also has rich practical experience in intellectual property dispute resolution such as patents, as well as the willingness and ability to meet the different needs of clients. BEIP is also willing to actively work with patentees, e-commerce platforms, and platform operators to conduct exchanges and cooperation around “Regulations for Rapid Handling of Patent Infringement Disputes in the E-Commerce Sector in Beijing (Trial)”.