What you need to know before sending a warning letter to China | Linda Liu & Partners
[co-author: Sai Chen]
If you think someone is infringing your patent right in China, you may be angry and unable to refrain from sending them a warning letter (C&D letter) asking them to stop the infringement.
Sending a warning letter is indeed an option to stop the violation. However, you should be well prepared before sending the warning letter or you might get unfavorable results due to haste.
To avoid legal risks, it is advisable to make the following preparations before sending a warning letter.
1. To confirm whether there is a high probability of infringement
Although a warning letter does not require the same level of proof as a lawsuit, we must be careful about asserting an infraction. If the right holder is unsure whether the suspected product falls within the scope of patent protection, sending a warning letter alleging infringement simply because the suspected infringing product is a competing product may not be considered a legitimate application of rights, but an abuse of rights, which will constitute unfair competition.
In particular, if the warning letters are sent to distributors or customers of the product, the duty of care will be higher than if they are sent to the manufacturer. Not only must the rights holder perform an analysis and have a reasonable reliance on the infringement before sending the warning, but they must also fully disclose the facts, evidence and information relevant to claiming the infringement in the letter. of warning.
Therefore, without detailed analysis of the infringement and evidence of a strong possibility of infringement, there will be considerable legal risk for sending the warning letter.
In order to confirm the infringement, it is recommended to purchase the actual object of the allegedly infringing product and conduct an analysis, comparing it in detail with the patent claims. Of course, if in the case where only the design patent is involved, or the structure of the patent is relatively simple and clear, it is also acceptable to confirm the infringement based on the pictures and description of the advertising media of the products. suspected of counterfeiting.
2. It is advisable to keep the necessary evidence of infringement before issuing a warning.
As you know, the warning letter is not mandatory. In practice, in almost half of the cases, the warning letter is ignored and cannot achieve the objective of stopping the infringement. In this case, it is necessary to take stronger measures, such as requesting an administrative action before an administrative office or filing a lawsuit, to resolve the infringement disputes. And evidence is key to launching those stronger actions.
In addition, after receiving the warning letter, if the recipient believes that it is not an infringement, he can ask the sender to withdraw the warning letter or invite the sender to take legal action. . If the sender does not file a complaint or withdraw the warning letter, the recipient has the right to file a complaint to confirm non-infringement. In such a non-infringement dispute, the sender also has an obligation to prove the alleged infringement.
Thus, to prevent the defendant from being more alert and making it more difficult to collect evidence, it is generally recommended to keep the necessary evidence of the offense before sending a warning letter.
Purchasing the suspected counterfeit product under the witness of a Chinese notary is the most common and effective way to preserve evidence. In most cases, a product purchased from a notary should suffice, and the notary will seal it after the lawyer has taken it apart and taken pictures of it. If further analysis and identification are needed, more products should be purchased and sealed respectively.
Other evidence preservation methods include authenticating or timestamping the web pages displaying or selling the infringing goods, authenticating the behavior of alleged infringers while participating in the exhibition, and displaying the alleged infringing goods. , etc
Since the place of infringing actions is closely related to the jurisdiction, from the perspective of forum shopping, you can choose the desired place to perform a notarized purchase or notarization in exhibition if there are several options.
In addition, if the budget allows, it is prudent to carry out a thorough investigation in advance of the production, sales, future trends and intellectual property rights of the alleged infringer.
Of course, many rights holders choose to send warning letters because it’s quick and inexpensive. For some cases that are not scheduled to go to trial, the rights holder may not want to spend too much time and money on preserving evidence. In view of this, it is also necessary that the first step, that is to say the finding of the infringement, be carried out correctly, in order to avoid the legal risk of being considered as an abuse of rights and to bring the responsibility