On October 9, 2021, SIPO issued the “Reply on the Application of Provisions Regarding Patent Counterfeiting in the Patent Law and the Suspected False Patent Advertisements in the Advertising Law”

High-tech is an important selling point of many products. Several companies even take patent as a focus on product’s packaging or in advertisements. However, improper labeling may commit patent infringement and/or false publicity. Such situation may encounter the dispute on the application of relevant provisions in the “Patent Law” or the “Advertising Law”, which may further bring the conflict of the two different authorities, the market supervision and management authority or the intellectual property management authority, and the conflict of administrative penalties by the two authorties. In view of this, SIPO and SAMI discussed the aforesaid problem, and on Oct. 9, 2021, SIPO issued the “Reply on the Application of Provisions Regarding Patent Counterfeiting in the Patent Law and the Suspected False Patent Advertisements in the Advertising Law” (hereinafter referred to as the “Reply”). The main contents of the “Reply” are as follows:

1. Regarding the act of continuing tagging patent logo on products or packaging thereof upon declaration of invalidation or termination of patent rights

Such act belongs to the patent counterfeiting as stipulated in Article 84 of the “Implementation Regulations for the Patent Law”, however, if it has the characteristics of commercial advertising, it could be deemed as an illegal behavior as stipulated in Article 12 and 59 of the “Advertising Law”. Under such circumstance, both laws could be applied, and the amount of fines shall be determined in accordance with Article 29 of the “Administrative Punishment Law”. It is worth to be noted that such act would only be punished for one administrative punishment method, because the principle of administrative punishment of “no more punishment for the same thing”.

2. Regarding the act of marking others’ patent numbers and related sales activities

According to the “Reply”, such act should be determined and punished in accordance with Article 84 of the “Patent Law”. In fact, marking others’ patent numbers in an advertisement is an obvious act of false propaganda, but the “Reply” confirms that such act shall be regulated from the perspective of infringement.

3. Regarding the act of marking patents which are not patented in product specification and other materials

According to the “Reply”, if a product specification and other materials are only used as an introduction document and inserted in the product packaging, it should be determined in accordance with Article 84 of the “Implementation Regulations of the Patent Law”; and if such product specification and other materials are used in an advertisement, or use a patent application statement in an advertisement, then such act should be determined in accordance with Article 12 of the “Advertising Law”.

4. Regarding the rules on the marking of a patent logo

According to the “Reply”, if advertised products or methods are patented, the relevant advertisements shall indicate the patent number and patent category; and the irregular marking of patent logo behavior in sales activities shall be determined in accordance with the “Measures on Labeling of Patent Logos”.