“The Interpretation on Several Issues Concerning the Application of Laws in Trial of Patent Infringement Dispute Cases” (hereinafter the “Judicial Interpretation” was issued by the Supreme People’s Court in China on December 28th, 2009. Such Judicial Interpretation aims at dealing with patent infringement dispute cases properly, protecting the legitimate rights and interests of parties concerned according to the laws and inspiring independent innovation and breakthrough in science and technology. This Judicial Interpretation came to effect on January 1st, 2010.
This Judicial Interpretation covers the main issues concerning the application of laws in the patent infringement cases currently tried in China, including identifying the principles in determiningthe claim scope of the patent right for inventions and utility models, identifying the principles in determining the infringement on design patents , the application of the prior art defense and prior use defense, and the essentials for taking non-infringement lawsuits.
Supreme People's Court in China started the drafting of the judicial interpretation of the Patent Law started as early as January, 2009. Out of the drafting, an ad hoc group, which includes some members from the personnel of the High People’s Court, has been established under the leadership of the Intellectual Property Division of the Supreme People’s Court, to launch dedicated researches on unusual issues and new types of problems the trials shall face. The first draft was completed in March, 2009, and on June, 18th, comments were sought from both the public and relevant central government departments, as well as various High Courts. After comments were gathered from different sides and a number of discussions and revisions were made, the Interpretation was submitted for deliberation at the Judicial Committee of the Supreme People’s Court and finally passed.
A person-in-charge from the Intellectual Property Division of the Supreme People's Court stated that the following guiding principles are incorporated in this Judicial Interpretation: 1. Principle of Interpretation According to Law: To interpret strictly according to the Patent Law and the Civil Procedure Law on the basis of the function orientation of judicial interpretation. 2. Principle of Interest Balance: On one hand, to use the national strategic requirements as guidelines in order to put innovation achievements and innovative interests under proper protection, promote independent innovative capabilities in enterprises and provide incentives for scientific and technological innovations and economic development; on the other hand, to strictly normalize the judicial interpretation of patent claims, precisely confirm the protection scope of patent rights, fully respect the publication of patent claims and prevent inappropriate expansion of protection scope of patent rights, prevent reduction of innovation space as well as damage to innovation capability and public interests. 3. Principle of Clear Aim and Operability: To implement the basic and universal legal applications in patent-related trial practices, sum up experiences with the trials in the past years, leave the issues on which no general consensus is reached unstated and provide proper and unified adjudication bases for judicial practices.
The Interpretation on Several Issues Concerning the Application of Laws in Trial of Patent Infringement Dispute Cases of the Supreme People’s Court
(Adopted at the 1480th Meeting of Judicial Committee of the Supreme People's Court on December 21st, 2009) Judicial Interpretation 2009] NO.21
The Interpretation on Several Issues Concerning the Application of Laws in Trial of Patent Infringement Dispute Cases, which was adopted at the 1480th Meeting of Judicial Committee of the Supreme People's Court on December 21st, 2009 is hereby promulgated and shall take effect as of January 1st, 2010.
In light of the trial practices, this interpretation is formulated for the purpose of trying patent dispute cases to the extent permitted by laws such as the Patent Law of the People's Republic of China and the Civil Procedure Law of the People's Republic of China.
Article 1. Based on the right holder’s claim, the People's Courts should confirm the protection scope of the patent right in accordance with Paragraph 1 of Article 59 of the Patent Law. The People’s Court should allow a right owner to change the claim before closing of court argument in the trial of first instance.-
To a right owner who contends to confirm the protection scope of the patent right on the ground of the dependent claim, the People’s Court should confirm the protection scope of the patent right based on the additional technical features stated in the dependent claim and the technical features stated in its cited claim.
Article 2. The People’s Court should confirm the contents of the claim stipulated in Paragraph 1 of Article 59 of the Patent Law, based on the statement in the claim and the understanding from a person having ordinary skills in the art about the claim after reading the specification and its drawings.
Article 3. The People’s Court may interpret the claim using the specification, drawings, relevant claim in the claims and patent prosecution history. Special definitions in terms of the terminology used in the claim of the specification should be defined in accordance with such special definition.
In case the meaning of the claim is still not clearly understood after the abovementioned methods are applied, documents of public knowledge like reference books and text books as well as the common understanding of a person having ordinary skills in the art may be consulted to proceed with the interpretation.
Article 4. For the technical features presented in the claim in the form of function or effect, the People's Court should confirm the contents of the technical features on the basis of the specific embodiment and its equivalent embodiment of the function or effect described in the specification and drawings.
Article 5. To a right owner who brings into the protection scope of the patent right the technical solution which is specified in specification or the drawings, but not stated in the claim in patent dispute cases, the People's Court shall not consider.
Article 6. To a right owner who brings into protection scope of the patent right the technical solution which has been abandoned previously by the patent applicant and patentee during the patent grant or invalidation procedure by means of amendments of the claim and specification or by statements, the People's Court shall not consider.
Article 7. The People's Court, in ruling on whether the accused infringing technical solution falls within the protection scope of the patent right, shall examine all the technical features stated in the patent claim.
Where the accused infringing technical solution contains identical or equivalent technical features as all the technical features stated in the claim, the People's Court shall conclude it falls within the protective scope of the patent right; Where the technical features of the accused infringing technical solution, as compare against all the technical features stated in the claim are compared, misses one or more technical features as described in the claim, or contains one or more technical features neither identical nor equivalent, the People's Court shall conclude its being outside the protection scope of the paten right.
Article 8. As for products with designs that are identical or similar to those of patented designs, where a design that adopts identical or similar design to the authorized design, the People’s Court shall conclude the accused infringing design falling within the protection scope of the patent right as stipulated in Paragraph 2 of Article 59 of the Patent Law.
Article 9. The People's Court shall identify whether the product type is identical or similar according to the purpose of the design product. Such factors as brief description of the designs, the International Classification for Industrial Designs, functions of the product as well as the statuses of the sales and actual use of the product shall be consulted to identify the product purpose.
Article 10. The determination of the People’s Court on whether designs are identical or similar or ordinary consumers of the design patent product.
Article 11. Comprehensive judgments shall be made by the People’s Court to consider the presence of identicalness or similarity between designs, in terms of the technical features of the authorized designs and that of the accused infringing designs, based on the design’s overall visual effect. Consideration shall not be given to those design features that are determined by technical functions and those of no influence to the product’s overall visual effect such as product material and internal structure.
Usually, a more significant influence on the overall visual effect of the industrial designs will be exerted as under the following circumstances:
(1) A part of a product that can easily be observed during normal use, as compared to other parts;
(2) A design feature of an authorized design that is distinguished from those of existing designs, as compared other design features of the authorized design.
Where there is no difference between the accused infringing designs and the authorized designs in the overall visual effect, the People’s Court shall concluded them as identical; where there is no substantial difference in the overall visual effect, the People’s Court shall conclude them as similar.
Article 12. Where a product that is in infringement of the patent right for invention or utility model is used as a component or part in the manufacture of another product, the People's Court shall conclude it as the behavior of use stipulated in Article 11 of the Patent Law; and where said another product is marketed, the People’s Court shall consider it as the sales behavior stipulated in Article 11 of the Patent Law.
Where a product that is in infringement of a design patentis used as a component or part in the manufacture of another product which is to be sold, the People’s Court shall conclude it as the sales behavior stipulated in Article 11 of the Patent Law with the exception that the product that is in infringement of a design patent possesses only technical functions in said another product.
In the cases described in the preceding two provisions, if any cooperation exists between the accused infringing parties, the People’s Court shall conclude them as contributory infringement.
Article 13. The People’s Court shall conclude the original product produced by the patented process as a product directly produced by patented process stipulated in Article 11 of the Patent Law.
As for the behavior where a follow-up product is produced out of the abovementioned original product through a further processing and treatment, the People’s Court shall conclude it as a product directly produced by the patented process stipulated in Article 11 of the Patent Law.
Article 14. Where there is an identicalness or an absence of substantial difference between all the accused technical features fallen within the protection scope of the patent right and a corresponding technical feature in an existing technical solution, the People’s Court shall conclude the technology implemented by the accused infringing party belonging to the existing technology as stipulated in Article 62 of the Patent Law.
Where there is an identicalness or an absence of substantial difference between the accused infringing design and an existing design, the People’s Court shall conclude the design implemented by the accused infringing party belonging to the existing design as stipulated in Article 62 of the Patent Law.
Article 15. Where a prior use defense based on an illegally obtained technology or design is asserted by the accused infringing party, the People’s Court shall not consider.
In any of the following cases, the People’s Court shall conclude it as having made essential preparations for manufacture and use as stipulated in Article 69, Item (2) of the Patent Law:
(1) The primary technical drawings or workmanship papers that are indispensable to the implementation of invention-creation have been completed.
(2) The major equipments or raw materials that are indispensable to the implementation of invention-creation have been made or purchased.
The initial scope stipulated in Article 69, Item (2) of the Patent Law includes the scale of production that has been reached before the date of the patent application and the scale of production that might have been reached with the existing production equipments or according to the pre-production preparations.
Where the prior user, after the date of the patent application, transfers or permits other parties to implement the technology or design that has been implemented or for which necessary implementation preparations have been made, and the accused infringing party claims that such implementation behavior is a continuation of the implementation within the initial scope, the People’s Court shall not consider, with the exception that the technology and design is being transferred or inherited together with the original enterprise
Article 16. In assessing the profits that the infringing party has earned through infringement as stipulated in Paragraph 1 of Article 65 of the Patent Law, the People’s Court shall be limited to the profits earned by the infringing party through the infringement of patent right; the profits that are generated from other rights shall be reasonably deducted.
Where a product that is in infringement of the patent right for invention or utility model is a component or part of another product, the People's Court shall reasonably assess the amount of compensation based on such factors as the value of the component or part itself and its role in realizing the profits of the finished product.
Where the product that is in infringement of the patent right for designs is packaging, the People’s Court shall reasonably assess the amount of compensation based on such factors as the value of the packaging itself and its role in realizing the profits of the packaged product.
Article 17. Where the product or the technical solution for its manufacture was known to the public domestically or abroad before the date of the patent application, the People's Court shall conclude that the product falls outside of the scope of the definition for new product as stipulated in Paragraph 1 of Article 61 of the Patent Law.
Article. 18 Where a right owner sends out warnings of infringement of patent rights to others and a warned or interested party has urged the right owner to exercise his right of action by a written demand, and the warned or interested party brings a lawsuit before the People’s Court requesting for the confirmation that the behavior of whom is not in infringement of the patent right , the People’s Court shall hear the case in the event that no action has been made by the right owner to withdrawa the warning or to file a legal action within 1 month after the right owner’s receipt of a written demand or 2 months after the date a written demand has been sent out.
Article 19. Where the accused infringement of the patent right took place before October 1st, 2009, the People’s Court shall apply the Patent Law before the amendment; where it took place after October 1st, 2009, the People’s Court shall apply the Patent Law after the amendment.
Where the accused infringement of the patent right took place before October 1st, 2009, and continued until after October 1st, 2009, in which the infringing party should be held liable for compensation according to both the patent laws before and after the amendment, the People’s Court shall apply the Patent Law after the amendment in the assessment of the amount of compensation.
Article 20 In case of a conflict between the previous relevant interpretations issued by the Supreme People’s Court and this interpretation, this interpretation shall prevail.
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