iOn December 11, 2023, China’s National Intellectual Property Administration (CNIPA) released the Second Batch, Part II, of Warning Cases for the “Blue Sky” special rectification action in the intellectual property agency industry (第二批知识产权代理行业“蓝天”专项整治行动警示案例发布（二）). CNIPA released Part I on December 9, 2023. CNIPA has been cracking down on both trademark and patent agencies that violate laws and regulations including unauthorized practice of law, filing of irregular (fake) patent applications, bribery, etc. So far, more than 7,400 patent and trademark agencies have been interviewed, more than 4,500 have been ordered to make corrections, and more than 930 warnings and fines have been issued. Agency qualifications have been revoked and agency business has been suspended for 33 agencies, with fines and confiscations of more than 40 million RMB.
[Case 5] Case of leasing qualifications of a patent agency in Chongqing
Helping unqualified institutions submit patent applications to the CNIPA constitutes an act of essentially lending patent agency qualifications and will be severely dealt with.
Basic case facts: On March 18, 2020, the parties signed an “Entrustment Agreement” with a Sichuan Intellectual Property Agency that has no patent agency qualifications. It was agreed that the parties would package the documents and send them to the agency, and the agency would submit patent applications to the CNIPA through the party’s own electronic application client. As of the filing of the case, the parties involved had submitted a total of 24 patent applications on behalf of the company, involving a total of 12,185 yuan in official fees, seriously disrupting the order of the patent agency industry.
Legal basis and punishment: Chongqing Jiangbei District Market Supervision and Administration Bureau is based on the provisions of Article 25, Paragraph 1, Item (5) of the “Patent Agency Regulations” and Article 51, Item (9) of the “Patent Agency Management Measures,” ordered the party concerned to make corrections within a time limit, gave a warning, and imposed a fine of 15,000 yuan.
[Case 6] A case of serious consequences caused by negligence of an intellectual property agency in Taizhou
Where anyone who engages in any abnormal patent application seriously interferes with the normal patent examination work, tacitly approves or appoints a patent agent to sign the legal documents such as the patent application which has not been written or examined by him/her, he/it shall be severely punished for his/its intentional act or gross negligence, which has caused losses to the interests of the principal and resulted in serious consequences.
Basic facts of the case: When conducting patent agency business, a party concerned, a certain intellectual property agency office of Taizhou, unilaterally assigned the patent application business to the person who had not obtained the qualification certificate of patent agent for writing, acquiesced in a practice patent agent’s submission only after simple examination of the format of the patent application documents and the number of items of the claims, which led to the fact that the 1,552 patent applications represented by the party concerned had been preliminarily determined by the CNIPA as patent applications not for the purpose of protecting innovation, and ultimately all the patent applications were withdrawn, causing losses to the party concerned because the contract purpose for which the party concerned entrusted the party concerned to apply for a patent could not be realized and the interests of the party concerned were thus lost.
Legal basis and punishment: Jiangsu Provincial Intellectual Property Office ordered, in accordance with the provisions of Article 25, paragraph 1, item (5) of the Patent Agency Regulations and Article 51, item (1) of the Patent Agency Management Measures, the party concerned immediately stop the illegal behavior, was given a warning, and was fined 50,000 RMB.
[Case 7] A case in which a Guangdong law firm failed to register, resulting in the applicant’s loss of rights
If an agency neglects management and makes mistakes during the agency process, and causes heavy losses to the interests of the client due to gross negligence, it shall bear corresponding legal liability.
Basic facts of the case: During the agency process of the patent involved, the party neglected management and failed to complete the registration procedures for the patent involved and the procedures for requesting restoration of the patent rights on time. As a result, the CNIPA finally decided not to restore the patent rights, causing serious harm to the interests of the client.
Legal basis and punishment: According to the provisions of Article 25, Paragraph 1, Item (5) of the Patent Agency Regulations and Article 51, Item (1) of the Patent Agency Management Measures, the Guangzhou Municipal Administration for Market Regulation ordered the party concerned to make corrections immediately and was warned.
[Case 8] A law firm in Nanjing accepted an engagement from a party with a conflict of interest
Those that accept engagements from parties with conflicts of interest will be punished accordingly.
Basic case facts: The client, a law firm in Nanjing, acted as a patent agency. After representing Company A in its patent application, it accepted the engagement of Company B, a party with a conflict of interest, to carry out business in relation to the infringement dispute litigation of the same patent right.
Legal basis and punishment: The Jiangsu Provincial Intellectual Property Office gave the party a warning penalty in accordance with the provisions of Article 25, Paragraph 1 (2) of the “Patent Agency Regulations”.
