A new online filing system concerning customs enforcement of intellectual property rights has been launched by the General Administration of Customs (“GAC”) from 1 March 2014. The new online filing system brings about the following key changes:
China prohibits the import and export of goods that infringe upon intellectual property rights. Rightholders are entitled to file their intellectual property rights with the GAC. After the GAC has accepted the filing, the local customs are obliged to inform the rightholders of the consignment of goods suspected of infringing the intellectual property rights. As of 24 March 2014, the GAC has accepted filing for 22,336 pieces of intellectual property rights. Among them, 16,021 are trade mark rights, 992 are copyrights and 5,323 are patent rights (including inventions, utility models and new designs). Under former practice, the rightholders had to submit a hardcopy of the filing documents to the GAC after they completed a standard application form online. With the implementation of the new online filing system, purely e-filing is sufficient and no hardcopy is necessary to be submitted to the GAC. Therefore, the formalities for filing new intellectual property rights with the GAC are simplified under the new online filing system.
New requirements for customs enforcement of patent rights
According to Chinese law, no patent is protected without paying an annuity fee. Under the new online system, patent rightholders are required to submit the relevant annuity payment certificates to the GAC on a yearly basis. For the year 2014, the patent rightholders need to submit the latest annuity payment certificates to the GAC via the new online system according to the following requirements:
- If a patent was filed with the GAC before 31 January 2014, a copy of the latest annuity payment certificate needs to be submitted before 31 May 2014
- If a patent was filed with the GAC after 1 February 2014 but before 17 February 2014, a copy of the latest annuity payment certificate needs to be submitted before 31 December 2014.
If a patent rightholder fails to submit the relevant annuity payment certificate to the GAC within the respective time limit, the GAC is entitled to suspend the filing of the relevant patent rights. It will be resumed only after the rightholder has submitted the relevant annuity payment certificate to the GAC through the new online system.
Furthermore, no filing was accepted by the GAC during the period from 17 February 2014 to 28 February 2014 due to the uploading of the new online filing system. Starting from 1 March 2014, any application for filing a new patent right needs to be filed with the GAC together with a copy of the latest annuity payment certificate of the patent.
Customs detentions are a key method by which rightholders can enforce their intellectual property rights in China. The new online filing system simplified filing requirements. This reflects that the GAC has a positive attitude to mitigate the administrative burdens of the rightholders. On the other hand, the patent rightholders would be advised to comply with the new requirements for filing the annuity payment certificate in time so as to avoid the suspension of their patent filings at the GAC under the new online filing system.