Interpretation (II) by the Supreme People's Court on Some Issues concerning the Application of Law to the Trial of Patent Infringement Disputes

May 6, 2016

Adopted at the 1676th meeting of the Judicial Committee of the Supreme People's Court on January 25, 2016 and shall enter into force as of April 1, 2016.

In order to facilitate correct trial of patent infringement disputes, The present interpretation is formulated, 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 Procedural Law of the People's Republic of China and so on, and in combination with practical judicial experience.

Article 1. 
Where there are two or more claims in the claims, the patentee shall specify the claim(s) based on which the accused infringer is sued for infringing the claims of patent right of the patentee in the indictment. Where the indictment contains no such specification or the specification is not clear, the People’s Court shall order the patentee specify the same. Where the patentee fails to make specification despite the court’s order, the Court may dismiss the lawsuit.

Article 2.
Where the claim(s) asserted by the patentee in a patent infringement lawsuit is / are declared invalid by the Patent Reexamination Board, the People’s Court trying the patent infringement disputes may dismiss the lawsuit filed by the patentee based on the invalid claim(s). 

Where there is evidence to show the decision declaring invalidation of the above-mentioned claims has been revoked by an effective administrative judgment, the patentee can file a separate lawsuit.

In case of separate lawsuit filed by the patentee, limitation of action shall be counted from the date on which the administrative judgment mentioned in paragraph 2 of this Article is served.

Article 3.
Where the specification cannot be used to interpret the claims due to obvious violation of paragraph 3 and/or 4, Article 26 of the Patent Law, and the situation does not fall within the circumstances specified in Article 4 in the present Interpretation, patent right therefore is requested to declare invalid, the People’s Court trying the patent infringement disputes shall in general suspend the court proceeding; if, patent right is not requested to declare invalid within a reasonable period of time, the People’s Court may determine the extent of protection of the patent right according to the contents of the claims.

Article 4.
If the grammar, wording, punctuations, graphics, symbols, etc., in the claims, specification and drawings can be ambiguous, but those skilled in the art can draw only understanding through reading the claims, specification and drawings, the People’s Court shall make determination based on such only understanding.

Article 5.
When the People’s Court is determining the extent of protection of a patent right, the technical features described in the preamble portion and characterizing portion of the independent claims, as well as in the reference portion and characterizing portion of dependent claims shall all have definitive effect.

Article 6.
The People’s Court may resort to other patent(s) of divisional applications relationship with the implicated patent, as well as the prosecution history thereof and effective decisions or judgments in the prosecution and invalidation process to interpret the claims of the implicated patent.

Prosecution history includes the written materials submitted by patent applicant or patentee during the patent examination, reexamination and/or invalidation procedures; Office Action, records of interview, records of oral proceeding, effective patent reexamination decisions and invalidation decisions, etc., issued by the patent administration department under the State Council and its Patent Reexamination Board.

Article 7.
Where the accused infringing technical solution has other technical features in addition to all the technical features of the close-ended claims of a composition, the People’s Court shall determine that the accused infringing technical solution does not fall within the extent of protection of the patent right, unless the additional technical features are unavoidable impurities at normal quantity. 

The close-ended claims of a composition mentioned in the preceding paragraph generally do not include the claims of Chinese medicine composition.

Article 8.
A functional feature refers to a technical feature which defines the structure, composition, steps, condition or the relations thereof through their functions performed or effects achieved in an invention, unless those skilled in the art can directly and clearly determine the detailed embodiments for performing such functions or effects simply by only reading the claims. 

If, when compared with the technical feature that is indispensable to perform the aforementioned function or effect as described in the specification or drawings, the corresponding technical feature of an accused infringing technical solution can, with essentially the same means, perform the same function and achieve the same effects, and can be envisaged by those skilled in the art without creative work at the time when the accused infringement act takes place, the People’s Court shall determine the such corresponding technical feature is identical or equivalent with the functional feature.

Article 9.
Where an accused infringing technical solution cannot be applied to the use environment defined by the use environment feature of the patent claims, 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.
Where the manufacturing process for an accused infringing product is neither identical with nor equivalent to the technical feature in the patent claims that use manufacturing process to define the product, the People's Court shall determine that the accused infringing solution does not fall within the extent of protection of the patent right.

Article 11. 
where the sequence of the technical steps is not specifically described in a process claim, but those skilled in the art can, after reading the claims, specification and drawings, directly and clearly conclude that the technical steps shall be implemented according to certain sequence, the People’s Court shall determine such sequence has definitive effect to the extent of protection of the patent right.  

Article 12. 
Where a claim is used terms such as “at least” and “not more than” to define a numerical feature, and those skilled in the art believes, after reading the claims, specification and drawings, that the technical solution of the patent has emphasized definitive effect of such terms to the technical feature, if the patentee claims different numerical features to be of equivalent features, the People’s Court shall not allow.

Article 13.
Where a patentee can prove that restricting or narrowing amendment to claims,specification and drawings or observations made by the patent applicant or the patentee during the prosecution and invalidation process have been specifically denied, the People’s Court shall determine that such amendment or observations have not led to abandonment of the technical solutions.

Article 14.
In determining the knowledge level and cognitive ability of ordinary consumers of a design, the People’s Court shall generally consider the design space of identical or similar type to the patented design at the time when the infringement act takes place. In case of a larger design space, the People’s Court may determine that ordinary consumers are not apt to notice the minor difference between different designs; in case of a smaller design space, the People’s Court may determine that ordinary consumers are more likely to notice the minor difference between different designs.

Article 15.
With respect to a design patent of a set of products, where the accused infringing design is identical with or similar to the design of one of the products, the People’s Court shall determine the accused infringing design falls within the extent of protection of the patent right.

Article 16.
For a design patent of an assembled product whose components have exclusive assembly relationship, where an accused infringing design is identical with or similar to the design in the assembled state, the People’s Court shall determine that the accused infringing design falls within the extent of protection of the patent right. 

For a design patent of an assembled product whose components have no assembly relationship or no exclusive assembly relationship, where the accused infringing design is identical with or similar to the design of all the individual components of the assembled product, 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 is in lack of certain individual component of patent design, or is neither identical with nor similar to the patent design, 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.
For a design patent of a product in the variable states, where the accused infringing design is identical with or similar to the design under all states of use as shown in the diagram of variable states, 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 is in lack of a design of certain state of use, or is neither identical with nor similar to a design of certain state of use, 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 patentee takes a legal action to require an entity or an individual to pay an appropriate fee for exploiting its invention during the period from the publication date of the application for a patent for invention to the date of the announcement of the grant of the patent right in accordance with Article 13 of the Patent Law, the People’s Court shall determine the reasonable amount by reference to the corresponding patent license fee. 

Where the extent of protection sought by the applicant upon publication of application for a patent for invention is inconsistent with the extent of protection upon announcement of grant of patent right for invention, if the accused technical solution falls within both of the aforementioned two extents of protection, the People's Court shall determine that the defendant has exploited the invention at issue during the period mentioned in the preceding paragraph; if the accused technical solution falls under only one of the two extents of protection, the People's Court shall determine that the defendant has not exploited the invention during the period mentioned in the preceding paragraph. 

After the announcement of grant of the patent right for an invention, where without the authorization of the pantentee, use, offer to sell, or sell products that have been manufactured, sold or imported by another party during the period stated in Paragraph 1 of this Article and such another party has paid or promised in writing to pay appropriate fees prescribed in Article 13 of the Patent Law,for production or business purpose,if the patentee asserts in a patent infringement lawsuit that the action of the use, offer to sell, or sell infringes the patent right, the People's Court shall not allow.

Article 19.
Where a product sales contract is established according to law, the People’s Court shall determine that it constitutes “sales” provided in Article 11 of the Patent Law.

Article 20.
Where a subsequent product, that is derived from further processing or treatment of a product directly obtained by the patented process, is re-processed or re-treated, the People’s Court shall determine that it does not constitute “a product directly obtained by the patented process” as provided in Article 11 of the Patent Law.

Article 21. 
Where, with clear knowledge that certain products are materials, equipment, parts or intermediaries specifically used to exploit a patent, and without the authorization of the patentee, a party provides such products, for production or business purpose, to another party to carry out patent infringement activities, the People’s Court shall allow the patentee’s claim that the provider’s conduct constitutes providing assistance for infringement as provided in Article 9 of the Tort Law. 

Where, with clear knowledge that certain products and methods have been granted patent, and without the authorization of the patentee, a party actively induces another party to carry out patent infringement activity, for production or business purpose, the People’s Court shall allow the patentee’s claim that the provider’s conduct constitutes inducing infringement as provided in Article 9 of the Tort Law.

Article 22. 
With respect to the accused infringer’s defense based on the prior art or the prior design, the People’s Court shall define the prior art or the prior design according to the Patent Law that was in effect on the date of filing for application for a patent.

Article 23.
Where the accused infringing technical solution or design falls within the extent of protection of the prior implicated patent right, and the accused infringer asserts non-infringement defense based on fact that its technical solution or design has been granted patent right, the People’s Court shall not allow.

Article 24.
Where the recommended state, industry or regional standards clearly indicate the necessary patent information, and the accused infringer asserts non-infringement defense claiming it is unnecessary to obtain license from the patentee for the purpose of implementing those standards, the People’s Court shall not allow. 

Where the recommended state, industry or regional standards clearly indicate the necessary patent information, and the patentee, during negotiation with the accused infringer on patent exploitation and licensing conditions, violates on purpose its licensing obligations of being fair, reasonable and non-discriminative as committed in formulating the standards, resulting in failure to conclude the patent exploitation and licensing contract, the People’s Court shall not allow the patentee’s request for ordering cessation of the exploitation of the standards, provided the accused infringer has no obvious fault during the negotiation. 

The patent exploitation and licensing conditions mentioned in paragraph 2 of this Article shall be determined by the patentee and the accused infringer through negotiation. If an agreement cannot be reached after sufficient negotiation, the parties may request the People’s Court to determine the same. In determining the above exploitation and licensing conditions, the People’s Court shall follow the principles of fairness, reasonableness and non-discrimination, and consider factors such as the degree of innovation of the patent, its functions in the standards, the technical fields to which the standards belong, the nature and implementation scope of the standards, as well as the corresponding licensing conditions comprehensively. 

Where there are otherwise prescriptions by laws or administrative regulations concerning patents in implementing standards, such prescriptions shall prevail.

Article 25.
Where a party uses, offers for sale or sells patent infringing products for production or business purpose, without knowing that such products are manufactured and sold without the authorization of the patentee, and is able to prove with evidence the legitimate sources of such products, the People’s Court shall allow the patentee’s request for ordering cessation of the above mentioned use, offer for sale and sale, behaviors of using, offering for sale and selling the infringed products to stop, unless the user of the accused infringing products can prove with evidence that it has paid reasonable prices for the products. 

“Without knowing” in paragraph 1 of this Article shall mean not to know and ought not to know. 

“legitimate source” in paragraph 1 of this Article shall mean acquiring products via normal business activities such as through lawful sales channels and with usual sales contracts. To prove legitimate source, the user, the party offering for sale or the seller shall provide relevant evidence that complies with trading custom.

Article 26.
Where the defendant is found to commit patent infringement, the People’s Court shall allow the patentee’s request for ordering cessation of the infringement activity. However, the People’s Court may, instead of ordering the defendant cease the infringing activity, order the defendant pay reasonable fees based on the consideration of the interests of the state and / or public interests.

Article 27. 
Where it is difficult to determine the patentee’s actual loss suffered due to the infringement, the People’s Court shall require the patentee to provide evidence of the profit gained by the infringer through the infringement according to Paragraph 1 Article 65 of the Patent Law; where the patentee has provided initial evidences of the profit gained by the infringer but the account books and materials related to the patent infringement acts are primarily controlled by the infringer, the People’s Court may order the infringer provide such account books and materials; where the infringer refuses to provide without justification or provides falsified account books and materials, the People’s Court may determine the amount of profits gained by the infringer based on the claims of and evidence provided by the patentee.

Article 28.
Where the patentee and the infringer have agreement on the amount of compensation or the calculation method of the compensaton in accordance with law, and request the indemnity be determined according to such agreement in the patent infringement lawsuit, the People’s Court shall allow.

Article 29. 
Where the party concerned applies for retrial after a decision declaring invalidation of a patent is made, and requests revocation of the judgment or mediation statement that was rendered by the People’s Court prior to the invalidation declaration of the patent and has not been enforced, the People’s Court may rule to suspend the reexamination and suspend the enforcement of the original judgment or the mediation statement. 

Where the patentee has provided sufficient and valid guarantee to the People’s Court to request continued enforcement of the judgment or mediation statement as mentioned in the preceding paragraph, the People’s Court shall continue to enforce; where the infringer has provided sufficient and valid counter-guarantee to request suspension of the enforcement, the People’s Court shall approve. Where the decision on declaring invalidation of the patent is not revoked by the effective ruling / judgment of the People’s Court, the patentee shall compensate the other party’s loss caused by the continuous enforcement; If the decision on declaring invalidation of the patent is revoked by the effective ruling / judgment of the People’s Court, and the patent right remains valid, the People’s Court may directly enforce the counter-guarantee based on the judgment or mediation statement mentioned in the preceding paragraph.

Article 30. 
Where a lawsuit is not filed with the People’s Court against the decision declaring invalidation of the patent within the statutory time limit, or the decision is not revoked by an effective ruling / judgment after a lawsuit is filed, the People’s Court shall make a retrial if the party concerned applies for retrial and requests revocation of the judgment or mediation statement that was rendered by the People’s Court prior to the invalidation declaration of the patent and has not been enforced. If, based on such decision, the party concerned applies for terminating the enforcement of the judgment or mediation statement that was rendered by the People’s Court prior to the invalidation declaration of the patent and has not been enforced, the People’s Court shall rule to terminate the same.

Article 31. 
This Interpretation shall enter into force on April 1, 2016. In case of any discrepancy with relevant interpretations previously promulgated by the Supreme People’s Court, this Interpretation shall prevail.

 

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