On November 7th, 2014, Science and Technology Department of Zhejiang province and Zhejiang Provincial Intellectual Property Office jointly issued <Guidance on the protection of patents in e-commerce of Zhejiang province (Pilot)>, and formally implemented since December 15th, 2015. The guidance has regulated more details on complaints to the patent rights infringements. As Zhejiang province is where the headquarters of e-commerce website Alibaba and Taobao, and this regulation seems to be very important since Zhejiang is where the headquarters of Alibaba and Taobao are located.

This article summarizes the key points of the <Guidance>, and serves as a reference for the intellectual property holders.

I. Key Points
<Guidance>made specific regulations in the following aspects：
(1)Complaints materials requirement for patent infringement
(2) Handling of patent infringement when it is hard to determine who is the transaction platform or the dealer of the commodities
(3) The appeal materials requirement when complained of patent infringement
(4)lements do not constitute patent infringement
(5)atent infringement cases to be submitted to the municipal patent administrative departments
(6)he handling of mass cases with a cumulative total quantity of over 100 commodities links being complained for a single patent
(7)pecified the disposing period for the related patent infringers

II. Details of the key points
1. Complaints materials requirement for patent infringement（Article 7）
Articles of law：
If the patentee considers that the commodities sold on the e-commerce platform are suspected of patent infringement, the patentee can file a complaint through the complaints mechanism provided by the transaction platform, and apply for deletion or blocking of suspected commodities. The complaints materials should include the following:

（1）The patentee’s identity certificate（copy of business license or national identity card）, effective contact information and address. A power of attorney should be provided if the complaint is made through entrusted party.
（2）The patent certificate and the proof of its effectiveness;
（3）The commodity name and its relevant internet links to be deleted or blocked;
（4）The materials of comparison between the suspected infringing commodity and the scope of protection of the patent;
（5）Other evidence that can prove the existence of infringing behavior.
If the complaint is file by a stakeholder of the patent right, additional patent authorization letter or patent licensing contract should be submitted.
The patentee or the stakeholder should be responsible for the authenticity of the complaints materials, and should bear the legal liability if the complaints are made with false materials.

Comments：
Article 7 makes it clear the materials and evidences required for patent infringement complaints, and it is helpful to solve the problem of inconsistency of required materials by different transaction platforms.

2. Handling of patent infringement when it is hard to determine who is the transaction platform or the dealer of the commodities（Article 8）

Articles of law：
The patentee or the stakeholder of the patent can be required to provide the actual physical commodity of the complained product when it is difficult to judge the infringement base on the commodity information on the transaction platform.
The provider of transaction platform, or the dealer of the commodity can entrust an intellectual property aid center or an intellectual property service agency to issue a letter of patent infringement judgment opinion.
Regarding the patent infringing products, where patent holder or interested party submit the consistent legal instruments issued by People’s Court, Patent Administrations or the Arbitration Authority, the trading platform provider shall promptly take the necessary measures to delete or block the infringing links. If the trading platform provider fails to take the necessary measures in a timely manner, which leads to the loss, the trading platform provider shall bear the corresponding legal responsibilities, except as otherwise provided by laws, regulations, rules and judicial interpretations.

Comments：
In Article 8, it clearly specifies that when the trading platform provider feels it hard in patent infringement recognition, the provider can entrust IPR protection assistance centers or IP service agencies to produce an advisory opinion on the patent infringement, but the qualifications on the IP service agencies are not defined. To urge the trading platform provider to do something, the Article also points out that the trading provider shall bear the corresponding legal responsibilities if they fail to take effective measures to prevent the losses.

3. Requirements on the appeal materials submitted by the opposed operator (Article 11)

Articles of law：
Where the opposed operator is not sympathized with the infringement charges, he or she shall submit the appeal materials within 3 days upon receiving the complaint notification. The appeal material shall include the following items:

(1) Personal identity documents (duplicate of the business license certificate or ID card), valid contact info (phone number and address), if the other party is entrusted for the appeal, the POA shall be provided.
(2) Contrast materials illustrating the non-infringement
(3) The other materials proving the non-infringement.
The opposed operator is responsible for the authenticity of the appeal materials.

Comments：
In Article 11, it clearly stipulates the materials submitted for the appeal as well as the submission deadline, which is very helpful for the infringement recognition and subsequent case processing.

4. Non-infringement circumstances (Article 12)

Articles of law：

The following cases do not constitute patent infringement:
(1) It can be proved that public sales date of the opposed products is earlier than the application date of the patent, and the structure & design of the opposed products could be clearly manifested.
(2) The People’s Court, Patent Administrations or Arbitration Authority issued non-infringement legal documents
(3) The cited patent has been declared invalidation, termination or waiver
(4) The other non-infringement circumstances specified by laws and regulations.

Comments：
In Article 12, it explicitly lists non-infringement examples and provides legal basis for infringement recognition work.

5. Regarding the cases submitted to the municipal Patent Administration Office(Article 13)

Articles of law：
As for those far-reaching, unfathomable patent infringement complaints, the trading platform provider shall submit them to the municipal Patent Administration Office and call for the verification paper on the patent infringement.
（1）Patent infringing cases that IPR enforcement assistance centers or IPR intermediary service institutions are able to judge;
（2）Disputes over patents of unstable novelty, creativeness and utility involving in the major industries of Zhejiang province;
（3）Patent infringing cases involving security of people’s livelihood and the society public interest;
（4）Patent infringing cases involving foreign or HK, Macao and Taiwan affairs;
（5）Fake patent cases with the aggregate involved sales of above RMB 100,000;
（6）Other patent infringing cases that have significant social influence.

Comments：
Article 8 gives clear-cut viewpoint on whether the trading platform providers shall submit the patent infringing cases that have significant social influence or are able to judge to the IPR enforcement assistance centers or IPR intermediary service institutions or to the municipal patent administration.
Which should be noted that, the regulation “(5) Fake patent cases with the aggregate involved sales of above RMB 100,000” seems solely applicable to fake patent cases (mainly referring to the deed of counterfeiting others’ patent numbers on products), but not patent infringing cases.

6. Instruction for trading platform providers to handle the mass cases with more than 100 product URLs complained in total for each patent rights (Article 18)

Articles of law：
Once the trading platform provider spots any mass case with more than 100 product URLs in total being complained for each patent rights, the platform provider shall immediately report to the relevant provincial patent administration department, which will be handled legally by the provincial patent administration department or will be transferred to the patent administration department with jurisdiction. Besides, trans-provincial cases will be transferred to the State Intellectual Property Office of China by the provincial patent administration department.

Comments:
The article gives a clear-cut instruction to handle the serious patent infringing cases on trading platforms and specifies the quantity of complained product URL, in order to effectively prevent vicious infringement.

7. To set handling time for relevant authorities

Comments:
The handling time for each stage in handling the patent infringing case was specified as below:
a) Review of the complaint and making decision whether to accept by the trading platform providers: within five working days (Article 8)
b) Submission of justificatory materials by sellers of complained products: within three working days (Article 11)
c) Assessment of patent infringement and issuing of Advice of Patent Infringement by IPR execution assistant centers: within three working days (Article 15)
d) Review of the complaint and making decision whether to accept by the municipal patent administration department: within three working days
Contact of each party involved in the case to mediate and the handling once accepted: within five working days (Article 14)

As the rapid development of e-commerce in China in the past few years, online infringing cases are not restricted to trademark infringement. From the promulgation of <Network Transaction Management Measures> in early 2014 to this <Guidance of Patent Protection in E-commerce Field in Zhejiang Province (pilot)>, we can see that the government is now propelling the supervision of network patent infringement. We are continuing to pay attention to the relevant laws and regulations in network IPR protection and will update for you once the new laws and regulations are promulgated.

 

Author: BIWG/IPR Protection Dept.
Shanghai BOB Intellectual Property Service Ltd.

2015-01-20