Author: Harlem LU

Article 21 of SPC’S Judicial Interpretation on Trial of Patent Infringement Disputes where a provider provides, for production or business purposes and without authorization of the patentee, a product to another party to commit a patent infringement action, with the knowledge that the product is material, device, component, intermediate and so on specialized for exploiting the patent, the People’s Court shall support the right owner if he or it assets that the action of the provider belongs to assisting another party to commit a tort provided in Article 9 of the Tort Law.

Where an inducer actively induces, for production or business purposes and without authorization of the patentee, another party to commit a patent infringement action, with the knowledge that the relevant product or method has been granted a patent right, the People’s Court shall support the right owner if he or it assets that the action of the inducer belongs to abetting another party to commit a tort provided in Article 9 of the Tort Law.

Article 9 of SPC’S Judicial Interpretation on Trial of Patent Infringement Disputes where the alleged infringing technical solution cannot be applied to the environment defined by environmental features in a claim, the People’s Court shall determine that the alleged infringing technical solution does not fall within the scope of protection of the patent right.

According to Article 21, which defines the indirect patent infringement including contributory infringement and inducement of infringement, an indirect infringement is established if only a related direct infringement is found. In practice, it is not rare that a party who is assisted or induced to exploit a patent is not liable for patent infringement according to the Patent Law, such as an end consumer. In this case, even though such party exploits a patent without authorization, it is not a patent infringement as defined by the Patent Law. Furthermore, the one who assists or induces such party to exploit the patent, has taken actions in a way as defined in contributory infringement or inducement of infringement, is however not liable for patent infringement without an establishment of direct infringement according to Article 21.

Such stipulations are demanding more efforts on patent drafting. Specifically, it is suggested evaluating the risk of indirect infringement when drafting a patent application, especially the claims. If there is a material, device, component, or intermediate product specialized for the end product/method, it is considerable to draft a set of claims related to such a material, device, part, or intermediate product. In

some cases, the definition of such a material, device, component, or intermediate product itself may not sufficiently reflect the inventiveness of the invention creation or constitute a complete and clear technical solution. Therefore, a feasible solution is to reflect the end product or method in such claims by defining the end product or method as an environmental feature to which
the material, device, component or intermediate product is applied. For example, the claims can be drafted as “a part, used for an end product/method”.

In this case, the environmental feature shall be regarded as a feature that is necessary to comprise the patented technical solution and contributes to define the protection scope of the patent. Article 9 provides related stipulations. In addition, according to Shimano V. Richeng (2012 Min Ti Zi No.1) retrial by the Supreme Court, “by using an environmental feature it normally means that the claimed subject matter is able to be used in such an environment, it is not necessarily required that the claimed subject matter has to be specialized to be used in such an environment. However, if it is clearand reasonable for those skilled in the art, based on the claims, description and prosecution history of the patent, that the claimed subject matter has to be specialized to be used in the defined environment, it shall be construed so”.

Therefore, one may avoid the unfavorable consequence caused by the stipulation that a direct infringer has to be found in order to enforce a patent against an indirect infringer, by claiming a material, device, component or intermediate product when drafting the patent application, while defining the end product/method as an environmental feature. In this case, an indirect infringer to the end product/method could somehow become the direct infringer to the intermediate material, device, part or intermediate product. In this case, the right owner, as the plaintiff, is normally required to prove that the alleged infringing product is not necessarily specialized for but applicable to the specific environment.