(By Luo Yanjie) According to the Customs Protection Regulations for Intellectual Property (“Regulations”) patent protection through customs recordation means that customs protects the intellectual property rights related to import and export as well as those rights protectable under Chinese laws and regulations. It generally covers the protection of trademark’s exclusive use right, copyright, and patent. As to trademark protection through custom recordation, you may check our past article “How to Apply for Trademark Recordation in China Customs”. Today we would focus on patent protection through customs recordation.
I. Can all the patents be immediately recorded with Chinaese customs?
Just like trademark recordation, customs recordation for patents requires a written application to the General Administration of Customs (“GAC”), a certificate of rights, licensing information, and etc. Also, its examination period is quite similar to that of trademark recordation; GAC must make a decision on approval or refusal within thirty days after the application. Upon approval, GAC issues the patent rights holder a certificate of recordation.
But, unlike the simplicity of the trademark, patents can be divided into three types: invention, utility, and design. Furthermore, when rights are assigned for utility patents and design patents, the State Intellectual Property Office (“SIPO”) does not carry out material examination. Therefore when recording utility and design patents with customs, the patent evaluation report issued by SIPO is also required to serve as evidence of the effectiveness of the patent. The aforesaid report can be applied for through agencies or patent lawyers, and acquiring the report usually requires about three months. For this reason, the rights holder should be prepared prior to filing for recordation. As to the patent evaluation report, you may check our previous article “Brief Introduction to the Assessment Report for Utility Models Patent in China”
II. Will customs actively check to see whether or not products infringe recorded patents?
The purpose of a rights holder filing for customs recordation is to receive protection from customs when infringing products are imported and exported, and there are two primary methods for initiating customs protection:
1. Active protection by customs
This protection method can only be used for patents recorded with customs. When detaining any imports or exports suspected of infringement against a recorded patent, customs will immediately notify the patent holder. After receiving the notification, the patent holder has three working days to decide whether to apply to have the products detained. If the patent holder files for detainment, it must provide a guarantee.
2. The rights holder applies for protection
When the rights holder discovers infringing products will soon be imported or exported, it can file an application for customs to detain the products. If the rights holder’s patent has already been recorded, customs will only require evidence of the infringement, which demonstrates that the product will soon be imported or exported and that the product has violated the rights of the recorded patent. But, if no record has been made by the rights holder, the rights holder must also provide evidence of ownership of the right, such as the invention certificate. For utility and design patents, the rights holder must further provide the patent evaluation report.
III. How does customs dispose of detained products?
After the detaining the products, customs has thirty days to start an investigation and make a determination on whether the suspected products have infringed the recorded patent. Based on the results of the determination, customs will dispose the products in the following ways:
- The products are determined to be infringing
According to the Regulations:
“Once detained products suspected of infringement have undergone investigation by customs and are confirmed as infringing intellectual property rights, they will be confiscated by customs.”
The confiscated products are then disposed of in the following ways:
(1) When the confiscated infringing products can be devoted to the public welfare, customs shall transfer them to public interest organizations for public welfare.
(2) When the rights holder would like to purchase the products, customs can transfer them to the rights holder for the consideration paid.
(3) When the confiscated infringing products cannot be applied to social benefit and the rights holder does not wish to purchase them, customs may put them up for auction after removing the infringing features; where infringing features cannot be removed, customs shall destroy them.
2. The products cannot be determined to be infringing
If customs’ decides that no infringement can be established and no notice of enforcement assistance is sent from the People’s Court within fifty working days after the detainment, customs shall release the products. In other words, to ensure protection over the patent, the right holder shall immediately file a patent infringement lawsuit with the People’s Court after the products have been detained by customs. At the same time, the rights holder should apply for evidence preservation in order to avoid release of the products fifty days later by customs.