The Supreme People's Court has just passed “The Decision on Amending the ‘Provisions of the Supreme People’s Court on Several Issues Concerning Intellectual Property Tribunal’” (Fa Shi [2023] No. 10) (hereinafter “the Judicial Interpretation”) on October 16, 2023, and issued “The Notice of the Supreme People's Court on the Implementation of the Revised ‘Provisions of the Supreme People's Court on Several Issues Concerning Intellectual Property Tribunal’” (Fa [2023] No. 183) (hereinafter “the Notice”) on October 21, 2023.

According to the Judicial Interpretation and the Notice, several adjustments on the Intellectual Property Tribunal (hereinafter “the IP Tribunal”) of the Supreme People’s Court (hereinafter “the SPC”), which are specified by the Judicial Interpretation, shall take effect since November 1st, 2023.  Based on a comprehensive reading of these adjustments, in combination with the Notice, Lifang & Partners holds such opinions that, the Judicial Interpretation not only adjusts the jurisdiction scope of the SPC’s IP Tribunal, but might also signal some potential changes to occur with regard to its roles.  How it will evolve in the future is worth of particular attention and further observation.

I. Adjustment of the scope of appeal cases and retrial cases accepted by the SPC’s IP Tribunal

According to the Judicial Interpretation, the standard of acceptance by the SPC’s IP Tribunal for the appeals concerning ownership/infringement civil cases and administrative cases of “utility model patents, technical secrets, and computer software” was adjusted to “significant and complicated”. Compared with the previous practice, this adjustment clearly raises the standard of acceptance of such appeal cases by the SPC’s IP Tribunal.

Before this Judicial Interpretation, all appeals concerning ownership/infringement civil cases and administrative cases of “utility model patents, technical secrets and computer software” were uniformly heard by the SPC’s IP Tribunal.  However, henceforward, only the appeals concerning those cases of “utility model patents, technical secrets and computer software” which are recognized as “significant and complicated” and heard by provincial High People's Courts in their first instances can be accepted by the SPC’s IP Tribunal.  “Ordinary” cases of this kind that are not heard by the provincial High People's Courts in the first instance will go to these local High People's Court for the second instance.

In addition, according to the second subparagraph of the second paragraph of Article 2 of the Judicial Interpretation, the SPC’s IP Tribunal shall adjudicate “cases eligible for trial-supervision procedures in which a motion for retrial, protest, retrial and the like are filed according to the law against already legally effective judgments, rulings and mediations of the first instance civil and administrative cases as provided for in the preceding paragraph”.  Compared to the pre-amendment provisions, this provision only adjusts the expression without touching the substantial content.  However, according to the foregoing amendments, local provincial High People’s Courts shall have the jurisdiction over the appeals of ordinary civil and administrative cases of utility model patents, technical secrets, and computer software.  Now if such a second instance ruling or judgement issued by the High People’s Court takes effect, whether or not a trial-supervision case instituted against such ruling or judgment should still be accepted by the SPC’s IP Tribunal, express provision in this regard is absent from this Judicial Interpretation.  How it will be interpretated and practiced in the future need to be further watched.

Noteworthily, the establishment of the SPC’s IP Tribunal has long been regarded as an exploration and rehearsal of establishing a state-level patent appellate court.  However, through this amendment, the appeals on ownership/infringement civil cases and administrative cases of ordinary utility model patents are re-adjusted back to the local provincial High People's Courts.  It remains to be seen whether this change is only a provisional response to the status quo of “too few judges with too many cases” currently faced by the IP Tribunal, or an intended prolusion of restoring the previous regime that the local provincial High People's Courts have jurisdiction over the patent appeal cases, eventually leaving the SPC with the preservation of the mere jurisdiction over the patent related trial-supervision cases.

II. Adjustment of the scope of other cases accepted by the SPC’s IP Tribunal

According to this newly passed Judicial Interpretation, the SPC’s IP Tribunal has enlarged its jurisdiction scope to “review of ruling on action preservation application” involved in certain first instance civil and administrative IP cases.  

The addition of this provision is supposed to nationwide standardize the criteria for granting of “action preservation” involved in such first instance civil and administrative IP cases.  Such action preservation applications, including applications of “preliminary injunction” and the like, especially the controversial “anti-suit injunction”, are usually faced with varieties of complicated circumstances and have been attracting great concerns at home and abroad.  Previously, the review request of the ruling on such action preservation application is directly handled by the first instance court who itself renders such ruling.  Now the jurisdiction for reviewing such review applications is uniformly escalated to the SPC, indicating that the SPC intends to establish a unified standard for such cases, as a response to the great concerns from all quarters.

III. Curbing the abuse of litigation rights

The Judicial Interpretation adds a new Article 4: “The IP Tribunal may require the parties to disclose the circumstances of the associated cases concerning the ownership, infringement, right granting and verification related to the disputed IP rights. Refusal of a truthful disclosure by a party may be deemed as a consideration factor for determining whether such party follows the principle of good faith and constitutes an abuse of rights, etc.”

This provision would be conducive to a certain extent to curbing the inequitable conducts conducted by right holders in IP litigations.  Whether this provision will only be limited to the IP Tribunal of the SPC, or it can be extended to all levels of courts in the future, is also worthy of further attentions .