Provisions of Supreme People's Court on Issues Concerning the Application of Law in the Trial of Cases Involving Patent Disputes
(Adopted at the 1,180th meeting of the Judicial Committee of the Supreme People's Court on June 19, 2001;
Amended for the first time at the 1,570th meeting of the Judicial Committee of the Supreme People's Court on February 25, 2013;
Amended for the second time at the 1,641st meeting of the Judicial Committee of the Supreme People's Court on January 19, 2015;
Amended for the third time at the 1823th meeting of the Judicial Committee of the Supreme People’s Court on December 23, 2020, and coming into force on January 1, 2021)
To correctly try cases involving patent disputes, the following provisions are hereby formulated in accordance with the Civil Code of the People's Republic of China, the Patent Law of the People's Republic of China, the Civil Procedure Law of the People's Republic of China, the Administrative Procedure Law of the People's Republic of China, and other laws:
Rule 1 A people's court shall accept the following cases involving patent disputes:
(1) A case filed for a dispute over the right to apply for a patent;
(2) A case filed for a dispute over patent ownership;
(3) A case filed for a dispute over a patent-related contract;
(4) A case filed for a dispute over patent infringement;
(5) A case filed for a dispute over counterfeiting another person's patent;
(6) A case filed for a dispute over fees for exploitation during provisional protection of a patent for invention;
(7) A case filed for a dispute over reward or remuneration to the inventor or designer of a service invention-creation;
(8) A case filed for a dispute over pre-litigation act preservation before a lawsuit is instituted;
(9) A case filed for a dispute over pre-litigation property preservation;
(10) A case filed for a dispute over damage liability arising from an application for act preservation;
(11) A case filed for a dispute over damage liability arising from an application for property preservation;
(12) A case filed for a dispute over the right to claim inventorship or designership of an invention-creation;
(13) A case filed for a dispute over a patent declaratory judgment action;
(14) A case filed for a dispute over refund of fees after a patent is declared invalid;
(15) A case filed for a dispute over liability for damages arising from malicious filing of a patent lawsuit;
(16) A case filed for a dispute over fees for exploitation of a standard-essential patent;
(17) A case filed against a reexamination decision of the patent administrative department under the State Council to uphold the rejection of a patent application;
(18) A case filed against a decision of the patent administrative department under the State Council on a request for declaring invalidation of a patent;
(19) A case filed against a decision of the patent administrative department under the State Council to implement compulsory licensing;
(20) A case filed against a ruling of the patent administrative department of the State Council on royalties from the implementation of compulsory licensing;
(21) A case filed against an administrative reconsideration decision of the patent administrative department under the State Council;
(22) A case filed against any other administrative decision made by the patent administrative department under the State Council;
(23) A case filed against an administrative decision of a patent administrative authority;
(24) A case filed for a dispute over confirmation on whether an accused technology falls within the protection scope of a patent;
(25) A case involving any other patent dispute.
Rule 2 An action instituted for patent infringement shall be under the jurisdiction of the people's court at the place of infringement or at the place of domicile of the defendant.
The place of an infringement shall include the place where any of the following acts is committed: the act of manufacturing, using, offering to sell, selling or importing the products accused of infringing upon an invention or utility model patent; the act of using a patented process, and the act of using, offering to sell, selling or importing the products that are directly obtained from that patented process; the act of manufacturing, offering to sell, selling, or importing the products infringing a design patent; the act of counterfeiting a patent of others. And the place where the result of any of the aforesaid infringements occurred is also included.
Rule 3 Where the plaintiff only sues the manufacturer of the infringing products but not the seller thereof, and the place where the infringing products are manufactured is not the place where they are sold, the people's court at the place where such products are manufactured shall exercise jurisdiction. Where the manufacturer and the seller are sued as co-defendants, the people's court at the place where such products are sold shall exercise jurisdiction.
Where the seller is a branch of the manufacturer, and the plaintiff institutes an action at the place of sale against the manufacturer for the manufacturing and sale of the infringing products, the people's court at the place where such products are sold shall exercise jurisdiction.
Rule 4 The plaintiff who institutes a patent infringement lawsuit involving a utility model patent with a filing date before October 1, 2009 may provide a search report made by the patent administrative department of the State Council. The plaintiff who institutes a patent infringement action involving a utility model or design patent with a filing date on or after October 1, 2009 may provide the patent evaluation report made by the patent administrative department of the State Council. As required for the trial of a case, the people's court may require the plaintiff to submit a search report or a patent evaluation report. Where the plaintiff fails to submit the report without any justifiable cause, the people's court may render a ruling to suspend the action or rule to order the plaintiff to assume potential adverse consequences.
Where the defendant in a case involving a dispute over infringement upon a utility model or design patent requests suspension of the action, the defendant shall file a request for declaring invalidation of the plaintiff's patent during the period of submitting a statement of defense.
Rule 5 Where, in a case involving a dispute over infringement upon a utility model or design patent, the defendant files a request for declaring invalidation of the patent during the period of submitting a statement of defense, the people's court trying the case shall suspend the action. However, under any of the following circumstances, the people's court may rule not to suspend the action:
(1) The search report or patent evaluation report provided by the plaintiff does not contain any cause that leads to the invalidation of the utility model or design patent;
(2) Evidence provided by the defendant is sufficient to prove that the technology used by the defendant had already been publically known;
(3) The defendant's evidence or grounds for a request for declaring invalidation of the patent is apparently insufficient;
(4) The people's court otherwise deems that the action shall not be suspended.
Rule 6 Where, in a case involving a dispute over infringement upon a utility model or design patent, the defendant files a request for declaring invalidation of the patent after the period of submitting a statement of defense ends, the people's court trying the case shall not suspend the action, unless it deems the suspension necessary after review.
Rule 7 Where, in a case involving a dispute over infringement upon an invention patent or over infringement upon a utility model or design patent which has remain valid upon review by the patent administrative department under the State Council, the defendant files a request for declaring invalidation of the patent during the period of submitting a statement of defense, the people's court trying the case may rule not to suspend the action.
Rule 8 Where a people's court decides to suspend an action, and the patentee or an interested party requests the court to order the defendant to cease the relevant acts or requests the adoption of any other measures to prevent further damage from the infringement and provides security, the people's court may issue a relevant ruling when ruling to suspend the action if it finds that the relevant legal provisions are complied with.
Rule 9 To implement property preservation for a patent, the people's court shall issue a Notice of Assistance in Enforcement to the patent administrative department under the State Council, stating the matters which require assistance in enforcement and the period of property preservation for the patent, with the written ruling of the people's court attached thereto.
Each period of property preservation for a patent shall not exceed six months, starting from the day when the patent administrative department under the State Council receives the Notice of Assistance in Enforcement. If further preservation measure for the patent is still necessary, the people's court shall serve another Notice of Assistance in Enforcement for further preservation on the patent administrative department under the State Council before the period of property preservation ends. If such a notice is not served before the period of property preservation ends, property preservation for the patent shall be deemed to have been automatically removed.
The people's court may take property preservation measures for a pledged patent, and the pledgee's preemptive right to repayment shall not be affected by any preservation measure. An exclusive licensing contract between the patentee and the licensee shall not affect property preservation implemented by the people's court for the patent.
Where property preservation has been implemented by the people's court for a patent, no duplicate preservation shall be allowed.
Rule 10 Where an entity and the inventor or designer have entered into a contract for an invention completed before July 1, 2001, by utilization of material and technical resources of the entity, if the contract provides for the right to apply for a patent and the ownership of the patent, such provisions shall prevail.
Rule 11 Where a patent infringement case involves any conflict of rights, the people's court trying the case shall protect the legitimate rights and interests of the party who enjoys a prior right in accordance with the law.
Rule 12 The “legitimate rights obtained before the date of filing by any other person” as mentioned in paragraph 3 of Article 23 of the Patent Law include but are not limited to legitimate rights and interests enjoyed in works, trademarks, geographical indications, names, enterprise names, portraits, as well as in commodity names, packaging or decorations which have certain fame, and the like..
Rule 13 “The scope of protection of a patent for invention or utility model shall be determined by the terms of the claims. The descriptions and the appended drawings may be used to interpret the content of the claims” as mentioned in paragraph 1 of Article 59 [currently 64] of the Patent Law means that the scope of protection of the patent shall be determined by the scope determined by all technical features indicated in the claims, and shall also include the scope determined by the features that are equivalent to those technical features.
An equivalent feature mean a feature that uses substantially the same means, performs substantially the same function, and achieves substantially the same effects as the technical features indicated in the claims, and that a person of ordinary skill in the art could have conjured up without engaging in creative effort at the time the alleged infringement occurs.
Rule 14 The actual loss of the rights holder due to the infringement as prescribed in Article 65 [currently 71] of the Patent Law may be calculated by multiplying the total sales volume reduction of the patentee's patented products due to the infringement by the reasonable profit of each patented product. Where it is difficult to determine the total sales volume reduction of the rights holder, the product of multiplying the total number of the infringing products sold on the market by the reasonable profit earned for each patented product may be deemed as the actual loss of the rights holder due to the infringement.
The profits earned by the infringer from the infringement as prescribed in Article 65 [currently 71] of the Patent Law may be calculated according to the product of multiplying the total sales volume of that infringing product sold on the market by the reasonable profit of each infringing product. Generally, the profits earned by the infringer from the infringement are calculated according to the business profits of the infringer; as to the infringer whose sole business is infringement, the profits earned may be calculated according to the sales profits.
Rule 15 Where it is difficult to determine the loss of the rights holder or the profits earned by the infringer, and there is a licensing fee (or royalty) for reference, the people's court may reasonably determine the amount of compensation by referring to the multiples of that licensing fee (or royalty), according to the type of the patent, the nature and circumstances of the infringement, and the nature, scope, and period of that patent license and other factors; if there is no licensing fee (or royalty) for reference or the licensing fee (or royalty) is evidently unreasonable, the people's court may, according to paragraph 2 of Article 65 [currently 71] of the Patent Law, determine the amount of compensation according to the patent type, the nature and circumstances of the infringement and other factors [Statutory Damages].
Rule 16 Where the rights holder claims the reasonable expenses paid for ceasing the infringement, the people's court may calculate them separately in addition to the amount of compensation determined in accordance with Article 65 [currently 71] of the Patent Law.
Rule 17 The statute of limitations for instituting an action for patent infringement shall be three years, calculated from the date when the patentee or an interested party knows or should have known that his/its right has been harmed and who the obligor is. Where the rights holder institutes an action after the aforesaid three-year period, if the alleged infringement continues when the action is instituted and the patent is within its valid term, the people's court shall order the defendant to cease the infringement, and the damages for the infringement shall be calculated as per the three years preceding the date on which the rights holder institutes the action in the people's court.
Rule 18 The offering to sell as mentioned in Articles 11 and 69 [currently 75] of the Patent Law refers to the expression of intention to sell commodities by advertising, displaying in shop windows or exhibiting at trade fairs.
Rule 19 For a case involving patent infringement accepted by the court, even when a patent administrative authority has made a determination of infringement or non-infringement for the patent infringement, the people's court shall, nonetheless, comprehensively examine a party's claims.
Rule 20 If relevant judicial interpretations previously issued are inconsistent with these Provisions, these Provisions shall prevail.
