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Demystifying China’s Intellectual Property Jurisdiction: Does the New Supreme Court Jurisdiction Rule Present a “Mere-glance” Guideline?
By Chen, Fei[1] and Jiao, Yuxin[2]
31 May 2022
The 3rd. Division of the PRC Supreme Court announced a new set of rules on 21 April 2022 concerning Provisions on Jurisdiction of Intellectual Property Civil and Administrative Cases of First Instance（”Jurisdiction Rules” ）.[3] The new Jurisdiction Rules represents a new round of endeavor of the PRC Supreme Court to cope with the complications arising from the chronicle problem of contradictory and often opaque rules of intellectual property jurisdiction. Said jurisdictional rules of the Supreme Court is to take effective on 1 May 2022.
The jurisdictional maze of intellectual property cases often tantalizes lawyers and inhouse counsels due to either of the two or both of the following reasons: (i) the local court variations of criteria for first-instance jurisdictions of sub-level classifications concerning the causes of actions for intellectual property disputes such as entitlement of patent, technology contract and trademark; and (ii) the complexities caused by overlapping jurisdictional maps arising from the establishment of intellectual property courts, intellectual property tribunals and the grassroot courts with special authorizations from the Supreme Court with jurisdictional power for particular types of intellectual property cases.
The chronic bewilderment caused by the entanglement of rules and jurisdictional territories is said, by Mr. Li Jian, the vice divisional head of the 3rd Division of the Supreme Court[4], will come to an end by “a mere glance” of the new IP Jurisdictional Rules promulgated by the Supreme Court.
Ensuing numerous glances by my lawyer colleagues, practioners in the IP field and even discussions with several judges handling some of our on-going cases, we reluctantly conclude that the new Supreme Court Jurisdiction Rules still puzzles lawyers and the courts in evaluating the venue and level of the courts in order to anchor IP cases with appropriate jurisdictions. This said, the Supreme Court Jurisdiction Rules did layout several basic lines that may provide some more than quasi-reliable predictions to which court your IP cases may eventually land with.
As always, reality is more complex than the PRC Supreme Court officials’ optimism for solving the IP jurisdiction problems by a mere glance at the fresh Jurisdiction Rules. For those who failed the Supreme Court officials’ expectations, as we did, to walk through the PRC IP jurisdictional maze by a mere glance, we would share our home-made measurements as follows to ease the anxieties arising from disorientation of the IP jurisdictions even after painful staring at the Jurisdictional Rules. Bearing in mind with the following measurements while reading the various IP case jurisdictional rules, including the Jurisdiction Rules issued by the Supreme Court in the past decade may enhance your ability to read the IP jurisdictional map and make the venues of your cases more predictable.
1. Courts at all four levels in the spectrum of the PRC court hierarchies may take jurisdiction over IP cases. That means the grassroot courts, known as district courts, the intermediate courts (courts in municipalities above the district courts), the high courts (courts in provinces or municipalities directly under the Central Government such as Beijing, Shanghai, Tianjin and Chongqing) and the Supreme Court.
2. First instance trials for the following seven categories of civil and administrative cases substantially involved with technical expertise, namely entitlement and/or infringement cases regarding invention patents, utility model patents, new plant varieties, integrated circuit layout designs, technical secrets, computer software and monopoly disputes, are within the jurisdictions of intellectual property courts, intermediate courts in provincial capitals, and intermediate courts specifically appointed by the Supreme People's Court, from time to time.
3. After 1 May 2022, the effective date of the IP Jurisdiction Rules, the first instance jurisdiction for contractual disputes of intellectual property involving invention, utility patents, technical secrete, new plant varieties, layout designs and computer software will be within the jurisdictions of the grassroot courts appointed by the Supreme Court, from time to time.
4. Cases concerning ownership and infringement of design patent, civil and administrative cases of first instance involving recognition of well-known trademarks are within the jurisdiction of intellectual property courts and the intermediate people's courts. However, the Jurisdiction Rules also made ad hoc carveout from the jurisdictional grips of IP courts and intermediate courts for recognition of well-known trademark disputes by a proviso which reads “with the approval of the Supreme People's Court, cases concerning ownership and infringement of design patent may also be under the jurisdiction of the basic people's court, with the exception of administrative cases concerning design patents.”
5. Except for the special types of cases specified in the Jurisdiction Rules, trial jurisdiction over other civil and administrative intellectual property cases rest in the jurisdiction of the grassroot courts appointed or to be appointed by the Supreme People's Court.
6. The high courts have trial jurisdiction concerning intellectual property civil cases involving claimed pecuniary interest in excess of 200 million RMB (about 30 million USD according to the exchange rate of this article), and intellectual property civil cases involving claimed pecuniary interest in excess of 100 million RMB (about 15 million USD according to the exchange rate of this article) if one of the parties’ domicile is outside of jurisdictional territory of the high court or the case involves foreign or Hong Kong, Macao and Taiwan elements[5].
7. Grassroot courts appointed by the Supreme People's Court have trial jurisdiction over intellectual property civil cases, not particularly carved out according to the nature of dispute by the Jurisdiction, involving claimed pecuniary interest not exceeding 5 million RMB, and cases involving claimed pecuniary interest not exceeding 10 million RMB if all parties of the case have their respective domicile in the jurisdictional territory of the high court to which the grassroot court taking jurisdiction subordinates[6].
In short, trial jurisdictions of IP cases are determined by one or combination of the following matters: the nature of dispute or cause of action, the size of money the plaintiff claimed, the domiciles of the parties, the involvement of foreign or Taiwan, Hong Kong or Macao elements, the complexity of the technical issues and certain discretions of the court.
[1] Chen, Fei Attorney at ZY Partners 陈非，北京正见永申律师事务所律师
[2] Jiao, Yuxin Attorney at ZY Partners, Patent Agent 焦雨歆，北京正见永申律师事务所律师、专利代理人
[3] Provisions of the Supreme People's Court on the First-Instance Jurisdiction over Civil and Administrative Cases Involving Intellectual Property Rights (Interpretation No. 13 of the Supreme People's Court [2022])《最高人民法院关于第一审知识产权民事、行政案件管辖的若干规定》（法释〔2022〕13号）
[4] Li, Jian Deputy chief Judge of the Civil Division III of the Supreme People's Court 李剑，最高人民法院民三庭副庭长
[5] Article 1, Circular of the Supreme People's Court concerning Adjustment of Standard for Local People's Courts of All Levels for Exercise Trial Jurisdiction over Intellectual Property Civil Cases (Circular No. 5 of the Supreme People's Court [2010])《最高人民法院关于调整地方各级人民法院管辖第一审知识产权民事案件标准的通知》（法发〔2010〕5号）第一条
[6] Article 3, i.d. 第三条，出处同上
