IPR ENFORCEMENT MEASURES

To protect the intellectual property rights (IPR), a Right holder might exercise the right to self-defend or request the enforcement agency to deal with acts of IPR infringement by way of civil remedies, administrative measures or criminal punishments, or might request the application of import/export control measures to discover, prevent or deal with importations and exportations of right infringing goods.

CHART ON THE RELATIONSHIPS BETWEEN ENFORCEMENT MEASURES


 

1. The relationship between (1) civil remedies and (2) administrative measures, (3) criminal punishments and (4) control of IPR-related imports/exports:

- If the IPR infringing party is currently subject to an administrative penalty or a criminal punishment, the right holder or the aggrieved organization or individual might initiate a lawsuit against the infringing party at the court to ask for damages.
- Upon the application of the measure of control of IPR-related imports and exports, if the customs authority finds out any IPR infringing goods, the customs authority shall notify this to the right holder for him to exercise the right to initiate a civil lawsuit with the Court or file a request with a relevant agency for an administrative penalty (in this case, the right holder still have the right to initiate a lawsuit with the court to ask for damages).

2. The relationship between (2) administrative measures and (3) criminal punishment and (4) measure of control of IPR-related imports/exports:

- In the process of settlement of acts of right infringement, if there is any sign of a crime of IPR Infringement, the enforcement agency by administrative measures must transfer the dossier to the competent criminal proceeding agency for handling.
- In the case, the IPR infringing party was sued, prosecuted or liable for a decision to be brought out to trial according to criminal proceedings, but later the investigation or the case was suspended, if such as of right infringement contains a sign of an administrative violation, the proceeding performing agency shall transfer the dossiers of the violation to and request the enforcement agency for settlement.
- When applying the measure of control of IPR-related Imports/exports, if the Customs authority detected any IPR infringing goods, the Customs authority will notify this to the right holder for the right holder to request the Customs authority to deal with the act of importing/exporting infringing goods (in case of detecting IPR counterfeit goods, the Customs authority has the right to immediately impose an administrative penalty thereon).

3. The relationship between (3) measure of control of IPR-related imports/exports and (4) criminal punishment

There is no direct relationship between (3) measures of control of IPR-related imports/exports and (4) criminal punishments. The measure of control of IPR-related imports/exports shall be taken at the request of the right holder, upon detection of infringing goods, the Customs authority will take administrative measure to handle (if the right holder requests, except where IPR counterfeit goods are detected, the Customs authority has the right to take administrative measure to deal with immediately such good). During the review process to determine the applicable penalty, if there is any sign of an IPR infringement offence, the Customs authority shall transfer the case file to the competent criminal proceeding agency to deal with the act by criminal punishment.

ROLE OF IP EXAMINATION, IP AGENTS, AND RIGHT ESTABLISHMENT AGENCIES IN IPR ENFORCEMENT

1. ROLE OF IP EXAMINATION

IP examination plays a role to assist IPR enforcement forces in assessment and making conclusions of the following:
- Legal status, the protectability of IPR subject matter, and the scope of protected IPRs;
- The determination of evidence to identify the loss;
- The determination of the right infringement elements, infringing goods/services, the factors that serve as the basis to determine the value of the protected IPR subject matter, and the infringing party;
- The possibility to prove the right holder status, to prove the infringement, infringing goods or possible counter-proof of the documents and evidence used in the dispute or infringement.
The IP Examination conclusion of the examination organization or examiners is one of the sources of information/documents of references for the enforcement agencies to conclude whether or not an act of IPR infringement is committed.
A request for examination can be made by the right holder, relevant organizations and individuals and the enforcement agencies when necessary.
Examination activities shall be carried out by the eligible organizations and individuals that meet the practising conditions as prescribed by law.

2. ROLE OF IP IP AGENTS

IP agent is a type of services provided by organizations or individuals in order to protect, on behalf of the right holder, the legitimate rights of IPR holder and is responsible for providing evidence or information about the act of the infringement of the IPR right whose holder is being represented by them, and for clarification before enforcement agencies of the content relating to the request for settlement.

3. ROLE OF RIGHT ESTABLISHMENT AGENCIES:

The role of a right establishment agency: the State management agency on IPR (The National Office of Intellectual Property, the Copyright Office, Office of plant variety protection) is not to directly implement IPR enforcement measures, but to act as technical agencies, in many cases these agencies will provide comments to help enforcement agencies to make csonclusions of whether or not an act of IPR infringement exists.
The provision of technical comments is carried out in the same manner like IP examination but by the right establishment agency and only an enforcement agency has the right to seek for comments from these agencies. The right establishment agency shall not provide its technical comments to the right holder or other relevant organizations and individuals.