Recent Judicial Interpretation for Patent Infringement (effective as of January 1, 2010)

Recent Judicial Interpretation for Patent Infringement

The Supreme People's Court (SPC), on December 28, 2009, released a Judicial Interpretation of The Supreme People's Court on Application of Law in Adjudicating Patent Infringement Cases which became effective on January 1, 2010. We list highlights as below for your reference.

Determination on protection scope of a patent claim

The new judicial interpretation clarifies how to determine the protection scope of a claim. It provides that when determining the court should consider the understanding of a person skilled in the art on the claim after reading specification and drawings, and interpret claims through specification, drawings, the related claims, and the documents in the file history. If necessary the court may interpret claims by combining known documents such as tool books and textbooks and the common understanding of a person skilled in the art. Regarding a function or effect technical feature, the court shall consider the embodiments containing such function or effect in the description to determine the content of such a technical feature. The new guidelines provide more detailed rules for determination.

Determination on protection scope of a patent claim

Principle of Estoppel is adopted by the new judicial interpretation. If any technical scheme that is abandoned by amending claims and specification and responding office actions in the prosecution or invalidation procedure, is included in the protection scope of the patentee's claim in a patent infringement lawsuit, the court shall not support. The Supreme People's Court explains that regarding this rule, the limited amendments or observation will be considered objectively no matter what motion for the amendment or observation would be or whether there is causal relation to the grant or whether the examiner would adopt. This rule is much stricter than before, so the patent applicant should pay attention to amendments on the scope of the claims.

All Elements Rule

All elements rule is adopted in the new judicial interpretation, which provides that if the accused infringement technical scheme contains technical features that are identical to or equivalent to all technical features recorded in the patented claim, then the court should determine that the accused technical scheme falls within the scope of the claimed patent. Therefore all technical features in a claim, no matter whether they are indispensable or not, shall be considered during the determination, and the previous principle of superfluous definition adopted in Opinions of the Beijing Higher People's Court on Certain Issues in Judgment of Patent Infringement in 2001 is formally reversed by the Supreme Court. Therefore, a patent applicant should include only indispensable technical features in a claim to seek good protection.

Prior Art Defense

A prior art defense is included to correspond to Article 62 of the Third Revision of Patent Law which became effective on October 1, 2009. If all technical features of the accused technical scheme falling within the scope of the claimed patent are identical to corresponding technical features of a prior technical scheme or have no substantively difference from the corresponding technical features of a prior technical scheme, the court shall determine that the accused technical scheme is a prior art as provided in Article 62.

Prior Use Defense

Regarding the prior use defense, the new judicial interpretation provides that if before the filing date of the patent, a user (1) has completed the main technical drawings or process document necessary for implementing the invention-creation, or (2) has manufactured or bought the main device(s) or raw material(s) necessary for implementing the invention-creation, the court shall affirm "having already made necessary preparations for its making or using" as provided in Article 69(2), which means that no infringement should be determined if the prior use is being kept within the original scope. And the original scope provided in Article 69(2) includes the original manufacture scope and the manufacture scope that may approach by using the device(s) or preparation that the user have already had before the filing date of the patent application.

Warning and Declaratory Judgment of non-infringement

The new judicial interpretation adds a new requirement for making action to request Declaratory Judgment of non-infringement.

The new judicial interpretation provides that, after the right holder sends a warning of patent infringement to others, the warned or any interested party shall send a written notice to the right holder for executing its litigious right, and if the right holder does not withdraw the warning or not constitute a lawsuit within one month from the date when the right holder receives the notice or two months from the date when the notice is sent, the warned or any interested party may make action to request Declaratory Judgment of non-infringement before the court.

In the view of the warned, sending a written notice is a must-be step for request the Declaratory Judgment. In the view of a patentee, you must get ready for a lawsuit before sending a warning letter, since the warned may urge you to do so and then request the Declaratory Judgment. When receiving a written notice, the patentee must be aware the warned's intention to file the request and the related consequence such as the possible jurisdiction.

In conclusion, The Supreme People's Court set much clear rules for courts to adjudicate patent Infringement cases since January 1, 2010.