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Laws & Topics

Interpretation by the Supreme People’s Court on Some Issues Concerning the Application of Laws in the Trial of Patent Infringement Dispute Cases (II) (Judicial Interpretation (2016) No. 1)

2016-04-18

For Reference Only

 (Adopted at the 1676th Session of the Judicial Committee of the Supreme People’s Court on January 25, 2016, Effective as of April 1, 2016)

In order to facilitate correct trial of patent infringement disputes, the present interpretation is made in accordance with the Patent Law of the People’s Republic of China, the Tort Law of the People’s Republic of China, the Civil Procedure Law of the People’s Republic of China and so on, and in combination with judicial practice.

Article 1

Where there are two or more claims, the right owner shall specify in the complaint the claim(s) based on which he or it prosecutes the accused infringer for infringing his or its patent right. Where this is not described, or described unclearly in the complaint, the People’s Court shall require the patentee to make clarification; if after elucidation, the patentee makes no clarification, the People’s Court may rule rejecting the lawsuit.

Article 2

Where the claim(s) asserted by the right owner in a patent infringement litigation are declared invalid by the Patent Reexamination Board, the People’s Court trying patent infringement disputes may reject the lawsuit filed by the right owner based on the invalidated claim(s).

If there is evidence to prove that the decision declaring the above claim(s) invalid is revoked by effective administrative judgment, the right owner may bring a separate lawsuit.

If the patentee brings a separate lawsuit, the limitation of action shall be counted from the date of service of the administrative judgment in paragraph 2 of the present article.

Article 3

Where it is impossible to use the specification for interpreting the claims due to apparent violation of Paragraphs 3 and 4, Article 26 of the Patent Law, and it does not belong to circumstances as provided in Article 4 of the present interpretation, if the patent right is thereby requested for invalidation, the People’s Court trying patent infringement disputes shall generally rule stay of action; if the patent right is not requested for invalidation within a reasonable time limit, the People’s Court may determine the extent of protection of the patent right based on the content defined in the claims.

Article 4

Where grammar, character, punctuation, figure, symbol and the like in the claims, specification and drawings are ambiguous, but those skilled in the art can obtain the only understanding by reading the claims, specification and drawings, the People’s Court shall determine them based on the only understanding.

Article 5

In the People’s Court’s determination of the extent of protection of a patent right, the technical features defined in the preamble and characterizing portions of the independent claims and those defined in the reference and defining portions of the dependent claims all function as limitations.

Article 6

The People’s Court may apply other patents that have divisional application relationship with the patent in dispute, as well as their prosecution history and effective judgment documents concerning patent prosecution and validation, to interpret the claims of the patent in dispute.

The prosecution history includes written materials submitted by the patent applicant or the patentee in the process of patent examination, reexamination and invalidation procedures; office actions, meeting records, oral hearing records, effective examination decision on a request for patent reexamination and examination decision on a request for declaring invalidation of the patent, issued by the patent administration department under the State Council and the Patent Reexamination Board.

Article 7

Where the accused infringing technical solution has other technical features in addition to comprising all the technical features of a composition claim in closed format, the People’s Court shall determine that the accused infringing technical solution doesn’t fall within the extent of protection of the patent right, unless the additional technical feature(s) belong to inevitable impurities in a conventional amount.

The composition claim in closed format in the preceding paragraph generally does not include claim of traditional Chinese medicine compositions.

Article 8

Functional feature is such a technical feature that is defined by the function or effect achieved in the invention-creation for structure, component, step, condition or the relationship between them, with the exception of the feature of which the specific implementation for the above function or effect can be determined directly and unambiguously by those skilled in the art from reading just the claim.

Where compared with the technical feature defined in the specification and drawings which is indispensable for achieving the asserted function or effect in the preceding paragraph, the corresponding technical feature in the accused infringing technical solution uses substantially the same means to implement the same function and achieves the same effect, and can be conceived by those skilled in the art without inventive endeavor at the time of occurrence of the accused infringing action, the People’s Court shall determine that the corresponding technical feature is identical with or equivalent to the functional feature.

Article 9

Where the accused infringing technical solution cannot be applied to the environment defined by environmental features in a claim, the People’s Court shall determine that the accused infringing technical solution does not fall within the extent of protection of the patent right.

Article 10

With regard to technical features in a claim defining a product with its preparation method, where the preparation method of the accused infringing product is neither identical with nor equivalent to said preparation method, the People’s Court shall determine that the accused infringing technical solution does not fall within the extent of protection of the patent right.

Article 11

Where a method claim does not explicitly specify the sequence of technical steps, but those skilled in the art, after reading the claims, specification and drawings, are directly and clearly aware that the technical steps shall be performed in a particular order, the People’s Court shall determine that the sequence for the steps functions as limitation for the extent of protection of the patent right.

Article 12

Where a claim uses an expression such as “at least”, “no more than”, or the like to define a feature of numerical value, and those skilled in the art, after reading the claims, specification and drawings, are aware that the patented technical solution particularly emphasizes the limiting effect of that expression on the technical feature, if the patentee asserts that a different numerical feature is equivalent to the above technical feature, the People’s Court shall deny.

Article 13

Where the right owner proves that a narrowing amendment or argument made by the patent applicant or patentee to the claims, specification and drawings in the procedure of patent prosecution and validation is explicitly rejected, the People’s Court shall determine that the amendment or argument does not cause the abandonment of technical solution.

Article 14

The People’s Court, in determining the knowledge level and cognitive ability of the ordinary consumers for a design, generally shall consider the design space of the same or similar type of products to which the patented design belong at the time of the occurrence of the accused infringement action. Where the design space is large, the People’s Court may determine that it is typically less easy for the ordinary consumers to notice minor differences between different designs; where the design space is small, the People’s Court may determine that it is typically easier for the ordinary consumers to notice the minor differences between different designs.

Article 15

With regard to a design patent of a whole set of products, where an accused infringing design is identical with or similar to one of the designs, the People’s Court shall determine that the accused infringing design falls within the extent of protection of the patent right.

Article 16

With regard to a design patent of a combination product with only one option of assembly, where an accused infringing design is identical with or similar to the  design of the combination product in its composite state, the People’s Court shall determine that the accused infringing design falls within the extent of protection of the patent right.

With regard to a design patent of combination product without the need to assemble its components or with more than one option of assembly, where an accused infringing design is identical with or similar to the design of all the individual components, the People’s Court shall determine that the accused infringing design falls within the extent of protection of the patent right; where the accused infringing design lacks the design of a certain individual component, or is neither identical with nor similar to the design of the individual components, the People’s Court shall determine that the accused infringing design does not fall within the extent of protection of the patent right.

Article 17

With regard to a design patent of a product with variable states, if an accused infringing design is identical with or similar to each design under various using states shown by a figure for varying states, the People’s Court shall determine that the accused infringing design falls within the extent of protection of the patent right; if the accused infringing design lacks design under one of the using states or is not identical with or similar to it, the People’s Court shall determine that the accused infringing design does not fall within the extent of protection of the patent right.

Article 18

Where a right owner sues an entity or individual that exploited the invention during the period from the publication date of the invention patent application to the date of announcement of the grant for paying an appropriate fee according to Article 13 of the Patent Law, the People’s Court may determine properly by reference to the amount of the exploitation fee of that patent under a contractual license.

Where extent of protection claimed by the applicant when the invention patent application was published is different from that when the invention patent is announced for grant, if the accused technical solution falls within both of the above extents, the People’s Court shall determine that the defendant exploits the invention within the period mentioned in the previous paragraph; if the accused technical solution only falls within one of the extents, the People’s Court shall determine that the defendant does not exploit the invention within the period mentioned in the previous paragraph.

Where after an invention patent is announced for grant, an entity or individual, for production or business purposes and without authorization of the patentee, uses, offers to sell, or sells the product that was manufactured, sold, or imported by another party within the period mentioned in the first paragraph of this Article, and said another party has paid, or promised in writing to pay, the appropriate fee prescribed in Article 13 of the Patent Law, the People’s Court shall deny the assertion of the right owner that the above action of using, offering to sell, or selling causes infringement of the patent right.

Article 19

Where a sales contract for product is formed lawfully, the People’s Court shall determine that “sell” provided in Article 11 of the Patent Law is established.

Article 20

Where process or treatment is made to a follow-up product, which was obtained by further processing or treating a product directly obtained by a patented process, the People’s Court shall determine the action does not belong to “using the product directly obtained by the patented process” prescribed in Article 11 of the Patent Law.

Article 21

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 a 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 22

Where an accused infringer raises prior art defense or prior design defense, the People’s Court shall define prior art or prior design according to the Patent Law effective on the application date of the patent.

Article 23

Where an accused infringing technical solution or design falls within the extent of protection of an involved previous patent right, the accused infringer defends that no patent infringement is established with a reason that his or its technical solution or design was granted a patent right, the People’s Court shall not support.

Article 24

Where a recommendatory national, industrial or local standard expresses the information of involved essential patents, if an accused infringer makes defensive argument that there is no infringement of patent right because authorization of the patentee is not required for exploiting the standard, the People’s Court generally shall not support.

Where a recommendatory national, industrial or local standard expresses the information of involved essential patents, if the patentee, in negotiation with an accused infringer for licensing terms  for exploitation of the patent, willfully violates the licensing obligation of fair, reasonable, and non-discriminatory principles promised in the formulation of the standard resulting in failure to reach a licensing contract of patent exploitation, and the accused infringer makes no obvious fault during the negotiation, the People’s Court generally shall not support the patentee’s assertion to stop the action of exploiting the standard.

Licensing terms for exploitation of the patent as mentioned in the second paragraph of this Article shall be determined through negotiation by the patentee and the accused infringer. Where an agreement still cannot be reached after sufficient negotiation, the People’s Court may be requested for determination. The People’s Court shall make overall consideration about factors such as innovation degree of the patent and its function in the standard, technical field the standard belongs to, nature of the standard, scope in which the standard is exploited, relevant licensing terms and so on, according to the fair, reasonable, and non-discriminatory principles, to determine the above licensing terms for exploitation.

Where exploitation of patents in the standard are otherwise provided in laws and administrative regulations, the provisions shall apply.

Article 25

Where products infringing a patent right are used, offered to sell, or sold for production or business purposes without knowing said products were manufactured and sold without the authorization of the patentee, and evidences are provided showing a legitimate channel of the products, the People’s court shall support the right owner’s request to stop the above actions of using, offering to sell, or selling, with an exception that a user of the accused infringing products provide evidences to prove that the user has paid a proper consideration for the product.

 “Without knowing” mentioned in the first paragraph of this Article shall mean actually not knowing and should not have known.

“Legitimate channel” mentioned in the first paragraph of this Article shall mean obtaining the products via a normal commercial manner like a legal sales channel, a normal sales contract and so on. Regarding legitimate channel, user, people offering to sell or seller shall provide relevant evidence that is in accordance with trading customs.

Article 26

Where defendant constitutes a patent right infringement, the People’s Court shall support the patentee if he or it requests to rule stopping the action of infringement; however, based on a consideration for national interest, public interest, the People’s Court may rule that the defendant is not to stop the accused action, but to pay corresponding appropriate fee instead.

Article 27

Where it is hard to determine a right owner’s actual loss caused by infringement, the People’s Court shall request the right owner to provide evidence regarding benefit that the infringer has obtained from the infringement according to Article 65, Paragraph 1 of the Patent Law; under a situation that the right owner has provided preliminary evidence of benefit obtained by the infringer, while the account book or material relevant to the patent infringing action are mainly owned by the infringer, the People’s Court may order the infringer to provide the account book, material; where the infringer refuses to provide the account book, material without justified reasons, or provides fake account book, material, the Peoples’ Court may determine the benefit obtained by the infringer due to the infringement with reference to assertion and evidence provided by the right owner.

Article 28

Where a right owner lawfully agrees with an infringer on the amount of damages or a calculation method for the damages, the People’s Court shall support the right owner if he or it asserts to determine the amount of damages according to the agreement in patent infringement lawsuit.

Article 29

After a decision declaring a patent right invalid is made, if a party applies for retrial based on the decision lawfully, requesting to withdraw a judgment or mediation on patent infringement which a People’s Court has made prior to the declaration of patent invalidation but has not enforced, the People’s Court may rule suspending the retrial, and suspending the enforcement of the original judgement and mediation.

Where the patentee provides sufficient and valid guarantee to the People’s Court and requests to continue the enforcement of the judgement and mediation mentioned in the previous paragraph, the Peoples’ Court shall continue the enforcement; where the infringer provides sufficient and valid counter guarantee to the People’s Court and requests to suspend the enforcement, the People’s Court shall approve. Where an effective judgment of the People’s Court does not withdraw the decision declaring the patent right invalid, the patentee shall compensate the other party for the loss caused by continuing the enforcement; where the decision declaring the patent right invalid is withdrawn by  an effective judgment of a People’s Court and the patent right is still valid, the People’s Court may execute the above counter guarantee asset directly according to the judgment, mediation mentioned in the previous paragraph.

Article 30

Where no prosecution is instituted to the People’s Court against a decision declaring a patent invalid within statutory period or the decision is not withdrawn by an effective judgment after the prosecution, if a party applies for retrial based on the decision lawfully, requesting to withdraw the judgment or mediation on patent infringement that a People’s Court has made prior to the patent being declared invalid but has not enforced, the People’s Court shall retry the case. Where a party, according to the above decision, applies to conclude the enforcement of the judgment or mediation on patent infringement which the People’s Court has made prior to the patent being declared invalid but has not enforced, the People’s Court shall rule concluding the enforcement.

Article 31

The interpretation shall come into effect as of April 01, 2016. Where contents in relevant judicial interpretations issued by the Supreme People’s Court previously are not consistent with those in the present interpretation, the present interpretation shall prevail.