Supreme People's Court's Judicial Interpretation on Several Issues Concerning the Application of Law in the Trial of Patent Infringement Dispute Cases (2010.1.1)

The Judicial Committee of the Supreme People's Court, on December 21, 2009, passed the Several Issues Concerning the Application of Law in the Trial of Patent Infringement Dispute Cases at its 1,480th meeting. The judicial interpretation takes effects on January 1, 2010.

In assisting with an essential reading, we list the highlights of the Judicial Interoperation as below.

1. Determination of protection scope for invention, utility model patents

(1) Right holder’s proposition

The court shall determine the protection scope of the patent rights pursuant to Article 59(1) of the Patent Law, based on a claim alleged by a patentee.

The court shall approve where the patentee changes the alleged claim before the end of the court debate of the first instance.

Where the patentee alleges to determine the protection scope of the patent rights based on a dependent claim, the court shall determine the protection scope of the patent rights based on the additional technical feature(s) defined in the dependent claim and the technical feature(s) defined in the claim referred by the dependent claim.

 (2) Determination of the contents of the claims

When determining the protection scope of a claim as provided in Article 59(1) of the Patent Law, the court shall consider the recitation of the claim with combining the understanding of a person skilled in the art on the claim after reading description and drawing(s).

The court can interpret a claim through description, drawings, the related claims, and the documents in the file history. Where the description has specified definition to any term in a claim, the interpretation of such term is subject to the specified definition. Where the meaning of the claim still cannot be determined by the above method, the court can interpret the claim by combing the known documents, such as reference books, textbooks, etc. and the understanding of the person skilled in the art.

(3) Determination of functional contents

As for a technical feature defined by function or effect in a claim, when determining the content of such technical feature, the court shall consider the embodiment(s) where such function or effect is recited in the description and drawing(s) and the equivalent embodiment thereof.

(4) Scheme which is not recorded in the claims should not be protected

As for a technical scheme recorded only in the description or drawing(s) but not defined in any claim, where the patentee intends to include such technical scheme into the protection scope of the patent rights in a patent infringement case, the court shall not support.

(5) Estoppel

As for a technical scheme that has been abandoned by amending claims and description or responding to the office actions in the prosecution or invalidation procedure, where an applicant or patentee intends to include such technical scheme into the protection scope of the patent rights in a patent infringement case, the court shall not support.

2. Determination on whether the scheme at issue falls into the protection scope for invention and utility model patents 

When determining whether an accused technical scheme falls into the protection scope of the patented claim, the court shall consider all technical features defined in the patented claim.

Where an accused infringement technical scheme contains technical features that are identical to or equivalent to all technical features recorded in the patented claim, the court shall determine that the accused technical scheme falls within the protection scope of the patented claim; where, comparing the technical features of the accused technical scheme to all technical features defined in the patented claim, the accused technical scheme lacks one or more technical features of the patented claim, or one or more technical features defined in the patented claim and any of the technical features of the accused technical scheme are not identical or equivalent, the court shall determine that the accused technical scheme does not fall within the protection scope of the patented claim. 

3. Determination of infringement of design patents 

(1) Determination on whether the design at issue falls into the protection scope

Where an accused design is identical or similar to a patented design and is used on a product in the same or similar category as that of the product incorporating the patented design, the court shall determine that the accused design falls into the protection scope of the patented design. 

(2) Determination of identicalness or similarity of the classes of the products

When determining whether an accused product is in the same or similar category as that of the product incorporating the patented design, the court shall consider the use of the product incorporating the patented design. When determining the use of the product, the court can consider the factors, such as the brief explanation of the patented design, the International Classification for Industrial Design, the functions of the product, and the sales and actual usage of the product.

(3) Determination of identicalness or similarity of the designs

When determining whether an accused design is identical or similar to a patented design, the court shall base on the knowledge and cognitive capability of a normal consumer of the product incorporating the patented design.

When determining whether an accused design is identical or similar to a patented design, the court shall consider the overall visual effect based on the design features of the patented design and the accused design; the court shall not consider the design features mainly defined by the technical functions or the features having no effect on the overall visual effect, such as the material features or internal features of the product.

The following features are considered to have more effects on the overall visual effect of a design:

(1) The parts of the product that are directly observed easily, comparing to other parts when in normal use;

(2) The design features of the patented design which are different from the design features of a prior design, comparing to other design features of the patented design;

Where the accused design and the patented design have no difference on the overall visual effect, the court shall determine that the two are identical; where the two have no substantial difference, the court shall determine that the two are similar.

4. Infringement acts

(1) A product infringing patent used as a component for manufacturing another product

Where a product infringing a patented invention or utility model is used as a component for manufacturing another product, the court shall determine that such using is the activity of using as provided in Article 11 of the Patent Law; where such another product is sold, the court shall determine that such selling is the activity of selling as provided in Article 11 of the Patent Law.

(2) Determination of selling

Where a product infringing the patented invention or utility model is used as a component for manufacturing another product and such another product is sold, the court shall determine that such selling is the activity of selling as provided in Article 11 of the Patent Law, unless the product infringing the patented design has only technical functions in such another product.

(3) Contributory infringement

As for the two circumstances provided above, the court shall determine the contributory infringement where the accused infringers have collaboration between them.

(4) Determination of a product directly obtained by the patented process

The court shall determine that an original product obtained by the patented method is the product directly obtained by the patented process as provided in Article 11 of the Patent Law.

The court shall determine that activity of further processing or handling said original product to obtain the subsequent product belongs to the activity of using the product directly obtained by the patented process as provided in Article 11 of the Patent Law.

Using, offer to selling, selling or importing the product of the two circumstances provided above is infringement.

5. Defence to infringement

(1) Prior art/design should be determined based on all technical features

Where all technical features of an technical scheme accused to fall within the protection scope of a patented claim are identical to or have no substantial difference from the corresponding technical features of a prior technical scheme, the court shall determine that the accused technical scheme belongs to prior art as provided in Article 62 of the Patent Law.

Where an accused design is identical to or has no substantial difference from a prior design, the court shall determine that the accused design belongs to a prior design as provided in Article 62 of the Patent Law.

(2) Prior use

(2.1) Prior use of the technology or design obtained illegally shall not stand.

Where an accused infringer claims the right of prior use for the technology or design obtained illegally, the court shall not support.

(2.2) Requirements for claiming the right for prior use

The court shall affirm the following circumstances belong to "having already made necessary preparations for its making or using" as provided in Article 69(2) of the Patent Law:

(1) Where a user has completed the main technical drawings or process documents necessary for implementing the invention-creation before the filing date of the patent application; or 

(2) Where a user has manufactured or bought the main device(s) or raw material(s) necessary for implementing the invention-creation before the filing date of the patent application, 

The original scope as provided in Article 69(2) of the Patent Law includes the original manufacture scope and the manufacture scope that may be approached by using the device(s) or preparation that the user has already had before the filing date of the patent application. 

Where the right holder of prior use assigns the technology or design that has already been implemented or for which the right holder has already made necessary preparations to others or authorized others to implement such technology or design after the filing date of the patent application, and the accused infringer claims such implementation is the continuous implementation in the original scope, the court shall not support, unless such technology or design is assigned or inherited together with the original enterprise.

6. Determination of damage and calculation of compensation 

Where determining the profits an infringer has earned because of the infringement as provided in Article 65 of the Patent Law, the court shall limit such profits to the profits the infringer has earned because of infringing an patent right; other profits earned through other rights shall be deducted.

Where a product infringing a patented invention or utility model is a component of another product, the court shall determine the amount of compensation according to the factors, such as the value of the component itself and its role in achieving the profits of the actual finished product.

Where a product infringing a patented design is a package, the court shall determine the amount of compensation according to the factors, such as the value of the package itself and its role in achieving the profits of the packed product.

7. Determination of new products 

Where a product or a technical scheme for making such product is known to the public in China or aboard before the filing date of the patented application, the court shall determine that such product does not belong to the new product as provided in Article 61 of the Patent Law.

That is, the party being accused for infringement does not bear the burden of proving its product is manufactured by a method that is different from the patented one. In such a situation, the burden of proof is on the plaintiff. 

8. Warning of patent infringement and non-infringement lawsuit

After a 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 request Declaratory Judgment of non-infringement before the court. 

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