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Dealing with patent infringers at exhibitions




Kang Quan and Chen Shihua of DEQI IP Law Corporation advise on what to do with an infringer at an exhibition

Exhibitions are very important platforms for innovative enterprises to introduce their products to the public, but they can also be used by patent infringers to exhibit and sell their infringing products.

The 2006 Measures for the Protection of Intellectual Property Rights during Exhibitions provide for patent protection at exhibitions. Article 6 states that for exhibitions of 3 days or more, exhibition organisers should establish intellectual property complaint agencies, and, in the absence of such agencies, the local intellectual property administration shall "strengthen guidance on and supervision of the protection of intellectual property rights in the exhibition and the handling of relevant cases".

So what should a patentee do if he finds an infringer of his patent at an exhibition?

Lodging a complaint

The patentee may submit a written complaint to the intellectual property agency of the exhibition or the local intellectual property office in the place the exhibition is conducted. If the complaint is accepted by the former, it can order the infringer to withdraw from the exhibition. If the complaint is accepted by the latter, and it rules in the patentee's favour, it can order the infringer to cease its activities and to compensate the patentee.

Whichever one the patentee submits a complaint to, it should provide the following materials:

Legal and effective intellectual property ownership certificate: If relating to a patent, it is required to submit the patent certificate, granted specifications, patentee's identity/entity certificate, and patent's legal status certificate. The "patentee's identity/entity certificate" shall be defined as follows: If the patentee is an individual, his/her certificate shall mean his/her ID Card, or passport as notarized or certificated, etc.; if the patentee is a Chinese legal person, it means the business license and the legal representative's ID Card; and if the patentee is a foreign entity, it means the entity's qualification certificate as notarized by the national notarial organ in the jurisdiction where the patentee is located and as certified by the Chinese embassy in the patentee's country, and the legal representative's qualification certificate.

General information about the suspected infringer. For example, if the suspected infringer is an individual, it is required to provide his/her name, identity, address, etc.; and if the suspected infringer is a legal entity, it is required to provide its name, and industrial and commercial registration information as issued by the home country's industry and commerce administration, etc.

Evidence of infringement. May comprise photos or videos taken in the exhibition premises and the exhibition promotion brochure containing the information about the infringing products.

If an agent files a complaint on behalf of the patentee, it is required to submit the power of attorney. The power of attorney shall have the signature or seal of the legal representative. If the patentee is a foreign individual or entity, the power of attorney shall be notarized or certified.

A complaint to the local intellectual property office will not be accepted if: the patentee has already initiated a lawsuit against the infringer; the patent right has lapsed, or is invalid; there is an ownership dispute for the patent right and the dispute is proceeding in the courts or in the IP management office.

The rules may vary depending on the locality. For example, the Pudong Intellectual Property Office in Shanghai does not accept complaint requests and is only prepared to conciliate patent disputes at exhibitions.

Taking it to court

A patentee may of course choose to file a patent infringement lawsuit with the courts. The materials to be submitted for such a suit are similar to those for complaints, except that they must be notarized by a notary. This is because, by the time it's heard in court, the exhibition will probably be over, and the court would not be able to verify whether the infringements at the exhibition truly happened. After checking the identity of the patentee or its agent, the notarial organ will proceed to the exhibition premises to take photos and record sound and video, before issuing the evidence notarization report.

Kang Quan
  Kang Quan is a patent attorney of DEQI IP Law Corporation and has practiced IP law for 13 years. She focuses on drafting and prosecuting patent applications, re-examinations, and invalidations. She earned a BS degree in Mechanical Engineering and Automatization and MS degree in Mechanism and Automation Engineering from Beijing Institute of Technology. She was named a Beijing Outstanding Patent Attorney in 2015, and was elected as a teacher at Capital Patent Agency Teacher Library. She is a member of the All-China Patent Agents Association.

Chen Shihua
  Chen Shihua is a patent attorney at DEQI IP Law Corporation and has practiced IP law for 14 years. She focuses on drafting and prosecution. She holds an MS and BS in Biomedical Engineering from Capital Medical University. She worked as a hospital-based medical engineer and carried out research into medical image processing for several years. She was named a Beijing Outstanding Patent Attorney in 2016, and was elected as a teacher at Capital Patent Agency Teacher Library. She is a member of the All-China Patent Agents Association.


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