15 A Comparative Study on Court Systems and Mechanisms for
Settling Disputes over Intellectual Property in China and Japan—Establishing Specialized Intellectual Property Courts in China(*)
Invited Researcher: YANG Guangming(**)
Nowadays, the establishment of specialized intellectual property (IP) courts seems a world-wide tendency.
From the above perspective, China’s “three-in-one adjudication” mode, i.e., a division set up within courts ofgeneral jurisdiction to handle cases involving IP which would have been handled by civil, administrative or
criminal division respectively, is held no more than a transitional means, while a “specialized court” with fully
integrated characteristics seems to be the best choice for reconstruction of China’s IP court system. Under new
institutional and strategic circumstances of IP law, China should fully consider features of IP trials and learn
more from outside world’s valuable and successful experiences. Thus a comparative study of different IP court
modes in Japan and other main countries or regions is necessarily conducive to realizing unity and efficiency ofjustice. Through the comparison, China should obtain advanced theories and sophisticated laws, which are mostbeneficial to improvement of her system of adjudication of IP disputes. Of course, while integrating present IP
judicial resources, China should pay heed to her own conditions and thus set up specialized courts with Chinesecharacteristics that have jurisdictions over civil, administrative and criminal cases involving IP so as to pushahead changes and reforms of the IP judicial system.

Ⅰ “Three-in-one
Adjudication”
Mode: Practical and Theoreticalanalysis of China’s Intellectual
Property Judicial System andMechanism
In the past, China’s IP civil cases wererespectively heard by civil divisions and economic
divisions. Since 1993, IP divisions were set up insuccession to hear them.
In 2002, administrative cases relating toauthorization and confirmation of patent, trademark,etc. were respectively heard by administrative
divisions and IP divisions. However, since 2009,
these cases were heard by IP divisions.
These measures to some extent solved
disunity of IP civil cases and one part of IP
administrative cases. However, judicial disunitythat IP civil, administrative and criminal cases arehandled simultaneously by the civil division, theadministrative division and the criminal division
within China’s court still existed. It remindedpeople of the urgency of a reform. Therefore, the“three-in-one adjudication” mode was born at theright moment.

1

Pudong (浦東) Mode

The Pudong Court in Shanghai was the firstto set up the IP division in grass-roots courts in1994 and to centralize IP civil, administrative andcriminal cases to the IP division in 1996.
2

Xi’an (西安) Mode

The Xi’an Intermediate Court became the firstintermediate court to adopt the IP “three-in-one
adjudication” mode in 2006 and centralized IP
criminal and administrative cases of first instanceheard by original basic courts before 2007.
3

Zhuhai (珠海) Mode

The first IP tribunal that was authorized by
the intermediate court and functioned nearly likean independent court was formed in Zhuhai of
Guangdong in 2009, having jurisdiction over IP
criminal, civil and administrative cases.
4

Kunming (昆明) Mode

The Kunming Intermediate Court took thelead to carry out the “three-in-one adjudication”(*) This is a summary of the report published under the Industrial Property Research Promotion Project FY2012
entrusted by the Japan Patent Office.
(**) President of Intellectual Property Tribunal, No.5 Intermediate People’s Court of Chongqing, P. R. China● 1 ●IIP Bulletin 2013 Vol.22

mode in Yunnan in 2007.
5

Wuhan (武漢) Mode

IP civil, criminal and administrative cases offirst instance under the jurisdiction of 14
grassroots courts in Wuhan were transferred to the
IP division in Jiang’an Court in 2007. Furthermore,
IP civil, criminal and administrative cases handledby 3 divisions in Wuhan Intermediate Court wereconcentrated to the IP division.
6

Jiangsu (江蘇) Mode

The IP division of Changzhou Intermediate
Court was the first to gather IP criminal andadministrative
cases
heard
by
original
grassroots courts before 2008.
7

Chongqing (重慶) Mode

Chongqing took the lead to carry out the IP“three-in-one adjudication” mode among 3 levelsof courts in 2008.
By the end of June 30, 2012, in China 5 highcourts, 50 intermediate courts and 52 grassroots
courts had experienced to adopt the IP“three-in-one adjudication” mode.
China should gradually concentrate IP civil,
administrative and criminal cases to IP divisions
and strive to end the “fragmented” state where
different divisions within a court handled
IP-related cases.

Ⅱ Practical and Theoretical Analysis
on Judicial System and Mechanismof Intellectual Property in Japanand Rest Main Countries orRegions
The “three-in-one adjudication” mode only
solves the IP judicial disunity inside the same
court, whereas the disunity among different
courts still exists as before. Indeed, it is thecommon problem not unique in China but can befound in Japan and other countries or regions.
1Intellectual
Japan

Property

High

Court

in

(1) Historical Evolution
Japan also met “growing pains” that China is
now confronting. In 2005, Japan began the
postwar largest judicial reform setting up the IP
High Court.

(2) Jurisdiction
First-instance cases involving patents,
utility models, layout-designs of integrated
circuits and software can only be heard before
district courts in Tokyo (east of Nagoya) andOsaka (west of Nagoya), and second-instancecases can only be heard in the Tokyo High Court
since 2004. It also retains overlapping
jurisdictions. Thus, for non-technical IP cases
involving designs, trademarks, other copyrights,
breeding rights (new plant varieties), unfair
competition, the parties could choose not only
competent courts in accordance with previous
provision, but also district courts in Tokyo or
Osaka.1 As a special branch of the Tokyo High
Court, the IP High Court would not only accept
technical appellant cases coming from local courtsin Tokyo and Osaka and non-technical appellant
cases coming from local courts throughout thecountry, but also serve as a trial court to hearadministrative cases relating to patents, utility
models, designs and trademarks. 2(3) Divisions
The court had four divisions and a special
division since 2005. 3
The judge conference is the highest
policy-making body of judicial administration,
which consists of all judges and convenes twice ayear. The standing committee, subject to thejudge meeting, convenes meetings weekly to
decide daily affairs.
(4) Composition
The staff is composed of judges, judicial
research officials, court clerks, court secretaries
and technical advisors.
(i) Judicial research officials survey technicalmatters assisting judges. A scholar observes it isinsufficient for protection of the parties’ rights to
defense because the report is not open. 4 A
scholar points out the court is short of the
avoidance system for judicial research officials.
Firstly, the report is only one of importantreferences, and the judge will also listen toopinions of the parties and even views oftechnical advisors. Therefore, it is not necessary
to open. Secondly, examiners could become
judicial research officials only after resignationfrom the JPO. Avoidance regulations should apply
to them. Furthermore, both profession and ethics
of examiners are deeply trusted by the public.
The unfairness and injustice seems completely
avoided. 5 Therefore, legal system, with theaddition of moral conscience, will be more reliable.

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(ii) Japan established a technical advisor
system in accordance with the Code of Civil
Procedure in 2003 aiming at IP trial and so onthat need to have expertise.
Judicial research officials and technicaladvisors are both professional knowledge
personnel, but one is general, the other isadvanced. Both constitute two pillars oftechnical fact finding. 6

directly accepted by the Supreme Court. As thefirst IP court in Asia, the most striking
characteristic is time saving.

(5) Collegial Panel
It normally consists of three members, butsometimes five panelists: the Grand Panelsystem employed in important cases having agreat impact on enterprises’ economic activities
and the national industrial economy or needed tomake uniform judicial judgments as soon as
possible.

(5) Intellectual Property Court in China
TaiwanChina Taiwan established the specialized IP
court in 2007 that began to hear IP civil, criminal
and administrative cases in 2008. IP civil
litigations of first and second instances are heard
by IP court, whereas cases of third course arehandled by the Supreme Court. IP criminal casesof first instance are ordinarily heard by local
courts, whereas those of second course are triedby IP court, and those of third instance arehandled by the Supreme Court. IP administrative
cases apply the system whereby the second
instance is last resort. So cases of first instanceare tried by the IP court, while cases of lastresort are dealt with by the Supreme
Administrative Court.
Many other countries have also establishedor decided to build the specialized IP court orappeal court.
In addition, some countries or regions have
put forward or are discussing to establish the IP
court.
People also plan to construct a regional andinternational IP court. In 2014, the patent
lawsuits of first instance of 25 member states
within the EU (except Italy and Spain) will behanded under the united jurisdiction of the Courtof First Instance of the Unified Patent Court. In
2009, the world’s largest economies Group of 20
Leaders Summit ever intended to form aninternational court for IP litigation. The so-called
World Intellectual Property Litigation Court
would be established. The idea for a global court
arose at the UN World Intellectual Property
Organization. 8

2Intellectual Property Courts in OtherCountries or Regions(1) Federal Patent Court in Germany
In 1961, it was set up and became the first
professional court in the world. The unique
technology judge system is of less time
consuming, lower costs and higher efficiency. It
only makes judgments whether related industrial
property should be registered or whether
registration should be voided, whereas it has no
power to accept infringement cases involving
industrial property rights.
(2) U.S. Court of Appeals for the Federal
Circuit
It was set up in 1982. Different from theoriginal 12 regional circuit courts, it is anationwide circuit court that has exclusive
jurisdiction over patent appellant cases from 94
district courts, and can accept cases of first
instance directly from the U.S. Patent andTrademark Office or the Columbia Federal
District Court and cases of second instance on
controversies of patent application indirectlyfrom the abovementioned office. 7(3) Central
Intellectual
PropertyandInternational Trade Court in Thailand
It established in 1997. It is a special court
separated from the common courts and severs asa trial court to hear IP criminal and civil cases.
Different from ordinary cases for which a“third-instancesystem”
isapplied,theabove-mentioned cases apply a second-instancesystem, and thus appeals from this court are(4) Patent Court in South Korea
The court, established in 1998, is more likean industrial property administrative court
independent from administrative divisions within
the high courts.

Ⅲ Specialized Intellectual Property
Court:
Optimal
ChoiceofIntellectual Property Judicial
System and Mechanism in China
What kind of IP judicial system and mechanism
are expected in China for the time being and in the
future? Where will the reform go?

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1Mode of Intellectual Property Judicial
System and Mechanism in China

The
novel
mode
of
“three-in-one
adjudication” is a selective real path that canpartly solve the dilemma of old patterns of a“situation of tripartite confrontation,” but it is notenough to unify the judicial scale. Therefore, it is
not the best, but a transitional and temporary
choice while we are waiting for the better one.9
The optimal choice in China should be to set
up specialized IP courts by reference of experiencesin Japan and other countries or regions.102StructureofChineseSpecializedIntellectual Property Court: A Theoretical
Perspective(1) Court Mode of China’s SpecializedIntellectual Property Court
Jiang Zhipei, former Chief Justice of IP
Tribunal of China’s Supreme Court, thought
China’s appellant court was never a copy of any
country’s IP court, but a new establishment with
Chinese characteristics based on China’s national
conditions.
(i) Quantity: One or More?
Scholars such as Li Mingde and Li Shundesuggested five IP appellant courts should be set
up based on consideration of regional divisions,but others maintained to set up one in Beijing. 11
This author thinks, as a long-term goal, it isbest for China to set up only one unified national
IP appellant court in Beijing by reference ofJapan and the U.S.
However, China’s territory is vast andcaseload grows fast. As such, it is hard to compare
China with Japan. In addition, in terms ofgeographical areas, there is not too much difference
between China and the USA, but development in
China seems unbalanced. Therefore, as the recent
goal, China should take example by the “(Paris) + 2(London and Munich)” mode of the European
Patent Court and choose the “1 + 5” transitionmode. Firstly, the national IP appellant court should
be set up in Beijing. Secondly, China may set up fivebranches of IP appellant court according tonationwide regions.
In fact, it was also argued repeatedly that
finally Japan only set up one IP high court. Its
territory is not larger than that of China, but adissenting voice can be still heard without end. It
also incurred some criticism of the inconvenienceof travel that Portugal only set up one IP court inthe capital. It is conceivable that if China only

sets up one IP appellant court at present,
opponent voice will be more sharp than that inJapan or Portugal.
(ii) Status: Absolute or Relative Independence?
With respect to independence of China’s IP
specialized court, scholars also have different
opinions. At the beginning, Japan had two ideas.
One is absolutely or fully independent. The otheris relatively or not fully independent. Finally, thesecond was passed.
This author thinks, as the goal in the near
future, China can refer to Japan. However, as forthe long-term goal, China can refer to the U.S.
and China Taiwan to set up the absolutely
independent specialized IP court.
(2) Jurisdiction of China’s SpecializedIntellectual Property Court(i) Onlytechnical,ortechnical
andnon-technical cases are available?
Scholars pointed out the specialized IP court
should mainly concentrate technical cases. Japan
also thought copyright infringement cases were
unfavorable to be concentrated.
This author persists China can refer to Japanin the short term. The new varieties of plants,
technical secrets and other technical cases shouldbe also concentrated in addition to four kinds ofmain technical cases such as patents, utility
models, layout designs of integrated circuits andsoftware. It can draw lessons from Thailand andChina Taiwan, and concentrate all technical andnon-technical IP cases in the long run.
(ii) “Two-in-one adjudication” or “three-in-one
adjudication?”
Scholars think China should choose the“two-in-one adjudication” mode. 12This author argues China should refer toJapan in the near future and adopt the“two-in-one adjudication” mode of civil andadministrative cases. However, as for the
long-term goal, China may refer to China Taiwan
to concentrate IP civil, administrative andcriminal cases.
(iii) Jurisdiction Level
The status of China’s IP trial court should beequal to that of the intermediate court, having
jurisdiction over all IP first-instance cases. IP
appellant court should be equal to the high court
while having jurisdiction over IP appellant cases.

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(iv) Invalidation of Patents: Between Competent
Executive Agencies and Courts
Scholarsbelieveoverlapofpatentinvalidation declaration and tort litigation is along-term issue that puzzles China’s patent
protection. 13 Judicial procedures seem toocomplex in patent infringement proceedings
where the defendant pleads on the basis of patent
invalidation. Such kinds of cases are generally
deemed time consuming. At present, these kindsof time-consuming litigation keep increasing,which has produced profound negative effects.
Therefore, it has been put on the schedule tosimplify judicial procedure and streamline trials.
Before 1992, the defendant might apply for
declaration of invalidation of a patent to the
Patent Reexamination Board (PRB) of the China
Patent Office at any stage, and where theapplication was filed the lawsuit was to besuspended. The Judicial Interpretation in 1992
limited the application only in the time ofpleading and in 2001 further narrowed thesuspension scope. These provisions eased theabove contradictions to a certain extent, but
normally courts had to suspend the process ofaction in order to reduce risks.
China’s current paradigm to solve said cases
is: the local intermediate court serves as the first
instance court before civil actions →the PRB of
the China State Intellectual Property Office(CSIPO) is in charge of review of appeals →theFirst Intermediate Court of Beijing serves as thetrial court to hear action brought against theadministrative agency → the High Court ofBeijing serves as the appellant court to hearappeals from the trial court of administrative
litigation →the PRB of the CSIPO is in charge ofredetermination of the case → the local
intermediate court serves as the trial court toreassume the civil litigation → the local highcourt serves as the court of second instance tohear the civil action. At most seven links can be
involved so the complexity of procedures reveals
obviously and time is bound to be consumed.
This author thinks, as the short-term goal,
China should learn from Japan’s system that the
court may directly judge where the patent isobviously invalid.
For the short-term reform goal, China canalso learn from Japan’s experience of “formal
party” regime in administrative litigation, which
does not take the administrative agency for theaccused, but takes a party related to proceedings
for the defendant. 14
As for the long-term reform goal, China canbe reference for the U.S., Britain, France,
Germany and Australia, etc., where the patent isonly of presumptive effect, so any person caninitiate an action before the court against its
effect. China may authorize the specialized IP
court to confirm the patent validity. Two steps
just are needed: one is to bring the action to the
local IP court serving as the trial court, the otheris to appeal to the IP appeal court serving as thecourt of last resort. The process is greatly
simplified and it is no longer time consuming.
(3) Divisions within China’s SpecializedIntellectual Property Court
The divisions with specialized judicial
functions should be set up. Division 1 may
specialize in hearing technical cases concerning
patents, utility models, software, layout designsof integrated circuits, technical secrets and newplant varieties. Division 2 may specialize intrademarks, names, packages and decorations offamous commodity, geographic indications anddesigns. Division 3 may specialize in othercopyrights. Division 4 may specialize in unfair
competition and monopoly, etc.
(4) Composition of China’s SpecializedIntellectual Property Court
The most prominent problem faced by the IP
court is how to find out the technological fact. As
an ultimate decider of the fact, the judge mustsurely determine the veracity of technicalevidences. Therefore, it is necessary for China to
pay much of the personnel mechanism and draw
lessons from Japan and other countries or areas.
(i)

From Expert Consulting System toTechnical Advisor System
China’s specialized IP court may establish
the technical advisor system similar to that ofJapan by strengthening the function of technicalconsulting experts in trial.
(ii) From
Judicial
Technology
Auxiliary
Working System to Judicial Research
Official System in the Court
The judicial technology auxiliary work in the
court has three modes. One is of administration.
The second is of technology. The third is ofadjudication. The current is mixed. 15 This author
maintains it should center at first on theadministrative mode, then the technical mode andat last the judicial mode. China’s specialized IP
court may establish the judicial mode similar to
the judicial research official system of Japan by● 5 ●IIP Bulletin 2013 Vol.22

out right now! 16

above three steps.
(iii) From Expert Assessor System to Technology
Judge System
China’s expert assessors lack stability justlike German technology judges. Therefore,
China should empanel IP technology judges
besides law judges.
If judicial research officials and technicaladvisors cannot satisfy the demand of technicalfact finding in IP litigations, Japan may introduce
expert assessors and technology judges.
(5) Collegial Panel within China’s SpecializedIntellectual Property Court(i) Grand Panel System
China’s three types of IP litigations havelegislative and judicial basis to implement the
grand panel system of Japan, but the key is tochange its arbitrariness and ensure its
institutionalization.
(ii) System of Collegial Panel Composed ofTechnology Judge and Law Judge
If introducing the technology judge system inGermany, China’s specialized IP court may
respectively make up a collegial panel of law
judges or technical judges according to different
types of cases.
Before China introduces it, the mode of “atechnology group of three members, a collegial
panel of five members” created by Beijing 2nd
Intermediate Court in 2008, is worth of promoting.
From the decentralized mode where IP civil
cases are heard by economic divisions and civil
divisions to other mode where cases arecentralized by IP divisions, from the mode where
IP divisions, administrative divisions and criminal
divisions are respectively responsible for IP civil,
administrative and criminal cases to the mode
where IP divisions are responsible for all IP cases,
and then to the mode where specialized IP court
controls in unity, integration and coordination has
ushered and proclaimed the initiation and comingof the reform of China’s IP judicial system. It will
gradually penetrate into the level of IP litigationand justice system and mechanism from IP trial
system and mechanism. The systematic design ofspecialized IP court may not be perfect, but theauthor believes that it is worth trying. As the“capital of legal empire,” China’s courts shallshoulder the historical responsibility to reformthe IP judicial system and pave a way with
Chinese characteristic.
Since the road is long, it is time for us to set

1

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2
Zhu Xingguo, “The Advancing National Intellectual
Property Strategy of Japan,” Intellectual Property,
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3
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Court Website, December 11, 2011.
4
Wang Mingyong, “Research Official System of JapanIntellectual Property High Court,” Symposium of
Taiwan Science and Technology Law and Policy, Vol. 6,
Issue1, June 2009.
5
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6
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WIPO Hopeful Host,”
http://www.ip-watch.org/2009/04/01/g20-envisions-worl
d-ip-court-wipo-hopeful-host/, last visited on October25, 2012.
9
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Property Rights Court,” People’s Court Daily, April 9,
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10
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11
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12
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Property Three-in-one Adjudication -- Concurrently
TalkingaboutJapan’sIntellectual
Property
Specialization Trial Mode and China's Path Selection,
Politics and Law, Volume 11, 2011, P. 116.
13
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Situation of the Intellectual Property Trial
Institution and Personnel in our Country,” Academic
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Type,” Chinese People’s Public Security University
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Work Symposium,” People’s Court Daily, August 10,
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16
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Transformation,” How does the System Form, Peking
University Press, 2007, P. 199.

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