Interpretation (II) of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Disputes over Patent Infringement (2021.1.1)
(Adopted at the 1676th meeting of the Judicial Committee of the Supreme People’s Court on January 25, 2016; and
Amended in accordance with the Decision of the Supreme People's Court on Amending Eighteen Intellectual Property-Related Judicial Interpretations Including the Interpretation (II) of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Disputes over Patent Infringement issued on 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.)
For the purpose of adjudicating appropriately disputes over patent infringement, this Interpretation is 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 and other relevant legal provisions, in combination with judicial practice.
Rule 1 Where there are two or more claims in the claims, the rights holder shall state in the complaint the claims based on which the accused infringer is accused of infringing upon its patent. Where there is no such statement in the compliant or the statement is not clear in the complaint, the people’s courts shall require the rights holder to make clarification. If the rights holder refuses to do so after being notified, the people’s courts may rule to dismiss the lawsuit.
Rule 2 Where the claim asserted by the rights holder in a patent infringement lawsuit is declared invalid by the patent administration department under the State Council, the court adjudicating the patent infringement dispute may rule to dismiss the lawsuit instituted by the rights holder based on the invalidated claim.
Where there is evidence proving that the decision to declare the above claim invalid is revoked by an effective administrative judgment, the rights holder may file a lawsuit separately.
Where the patentee files a lawsuit separately, the time limit of action shall be counted from the date of service of the administrative judgment stated in Paragraph 2 of this Rule.
Rule 3 Where a patent is requested to be declared invalid on the grounds that its obvious violation against Paragraph 3 or Paragraph 4 of Article 26 of the Patent Law makes the Description unable to be used to interpret the claims and does not belong to circumstances prescribed under Rule 4 of this Interpretation, the people’s courts adjudicating patent infringement lawsuits generally shall rule to suspend the lawsuit; where no request for declaring the patent invalid is filed within a reasonable period, the people’s courts may determine the scope of protection of the patent based on the recordation of the claims.
Rule 4 Where there is ambiguity in the grammar, wording, punctuation, graphics, symbols, etc. in the claims, description and drawings, but a person of ordinary skill in the art may derive a sole understanding by reading the claims, description, and drawings, the people’s courts shall make determination according to the sole understanding.
Rule 5 When the people’s courts determine the scope of protection of a patent, the technical features recorded in the preamble portion and characterizing portion of an independent claim and the reference portion and characterizing portion of dependent claims all serve as limitations.
Rule 6 The people’s courts may interpret the claims of a patent at issue based on other patents that have a divisional-application relationship with the patent at issue, patent examination files thereof, and effective judgments related to the grant and the validity confirmation of the relevant patents.
The patent examination files comprise the written materials filed by the patent applicant or patentee, and office actions, meeting records, oral hearing records, and effective decisions on reexamination requests and decisions on invalidation requests issued by the patent administrative department under the State Council in the course of patent examination, reexamination and invalidation.
Rule 7 Where an accused infringing technical solution comprises basically all technical features of a close-ended composition claim as well as additionally other technical features, the people’s courts shall determine that the accused infringing technical solution does not fall within the scope of the patent protection, except where the additional technical features are of unavoidable impurities that are present in conventional amounts.
The close-ended composition claim as mentioned in the preceding paragraph generally does not include claims of traditional Chinese medicine compositions.
Rule 8 A functional feature refers to a technical feature that is defined by the function(s) or effect(s) achieved by structure(s), component(s), step(s), condition(s) or the relationship therebetween in the invention-creation, except where a specific embodiment for achieving the above function(s) or effect(s) can be directly and explicitly determined by a person of ordinary skill in the art by merely reading the claims.
Where, compared with the technical feature that is indispensable achieving the functions or effects mentioned in the preceding paragraph as recorded in the description and drawings, the corresponding technical feature of the accused infringing technical solution adopts substantially the same means to perform the same functions and achieve the same effects, and a person of ordinary skill in the art could have conjured up without engaging in creative effort at the time the accused infringing act occurs, the people’s courts shall determine that said corresponding technical feature is identical or equivalent to the functional feature.
Rule 9 Where an accused infringing technical solution cannot be applied to the use environment defined by the use environment features in a claim, the people’s courts shall determine that the accused infringing technical solution does not fall within the scope of the patent protection.
Rule 10 Regarding a technical feature which defines a product based on its preparation method in a claim, where the preparation method of the accused infringing product is neither identical nor equivalent to it, the people’s courts shall determine that the accused infringing technical solution does not fall within the scope of the patent. protection
Rule 11 Where the sequence of technical steps is not explicitly recorded in a method claim, but a person of ordinary skill in the art directly and definitely holds that these technical steps shall be carried out in accordance with a particular sequence after reading the claim, description and drawings, the people’s courts shall determine that the sequence of steps has a limiting effect on the scope of the patent protection.
Rule 12 Where a claim uses words like "at least", "not more than" to define a numerical feature, and a person of ordinary skill in the art holds that the technical solution of the patent especially emphasizes the limiting effect of said words on a technical feature after reading the claims, description and drawings, while the rights holder asserts that a numerical feature not identical to it is an equivalent feature, the people’s courts shall not support said assertion.
Rule 13 Where a rights holder proves that the restrictive amendments to or statements on the claims, description and drawings by the patent applicant or the patentee in the procedures of the granting and validity confirmation of the patent are definitely denied, the people’s courts shall determine that such amendments or statements do not cause the abandonment of the technical solution.
Rule 14 When determining the knowledge level and cognitive ability of the general consumers about a design, the people’s courts generally shall take into consideration the design space of the products of a category identical or similar to that of the patented design at the time the accused infringing act occurs. Where the design space is relatively large, the people’s courts may determine that it is generally not easy for the general consumers to notice minor differences between different designs; where the design space is relatively small, the people’s courts may determine that it is generally easy for the general consumers to notice minor differences between different designs.
Rule 15 Regarding a patent of designs of a set of products, where the accused infringing design is identical or similar to one of the designs, the people’s courts shall determine that the accused infringing design falls within the scope of the patent protection.
Rule 16 Regarding a design patent of an assembled product with only one option of assembly, where the accused infringing design is identical or similar to the design in the state of combination, the people’s courts shall determine that the accused infringing design falls within the scope of the patent protection.
Regarding a design patent of an assembled product in which there is no assembly relationship among the components thereof or the assembly relationship among the components is not unique, where the accused infringing design is identical or similar to the designs of all of the individual components, the people’s courts shall determine that the accused infringing design falls within the scope of the patent protection; where the accused infringing design lacks the design of one of the individual components, or is neither identical nor similar thereto, the courts shall find that the accused infringing design does not fall within the scope of the patent protection.
Rule 17 Regarding a design patent of a product having variable states, where the accused infringing design is identical or similar to the designs in every usage state shown in the views of varied states, the people’s courts shall determine that the accused infringing design falls within the scope of the patent protection; where the accused infringing design lacks the design in any one of the usage states, or is neither identical nor similar thereto, the people’s courts shall determine that the accused infringing design does not fall within the scope of the patent protection.
Rule 18 Where a rights holder claims, pursuant to Article 13 of the Patent Law, appropriate fees from an entity or an individual implementing the invention during the period from the publication date of the invention patent application to the announcement date of patent grant, the people’s courts may determine the fees reasonably by reference to relevant patent licensing fees.
Where the scope of protection claimed by the applicant at the time of the publication of an invention patent application is different from the scope of the patent protection at the time of the grant announcement of the invention patent, if the accused technical solution falls within both of aforesaid scopes, the people’s courts shall determine that the defendant exploited the invention during the period stated in the preceding paragraph; if the accused technical solution only falls within one of said foregoing scopes, the people’s courts shall determine that the defendant did not exploit the invention during the period stated in the preceding paragraph.
Where, after the grant announcement of a patent, a party, without the authorization of the patentee and for production and business purposes, uses, offers to sell or sells products already manufactured, sold or imported by another party during the period mentioned in Paragraph 1 of this Rule , and the another party has already paid or promised in written form to pay appropriate fees as provided in Article 13 of the Patent Law, the people’s courts shall not support the rights holder’s claim that the aforesaid using, offering to sell and selling acts infringe upon the patent.
Rule 19 Where a product sales contract is established according to law, the people’s courts shall determine that it constitutes selling prescribed in Article 11 of the Patent Law.
Rule 20 Where a subsequent product, obtained from further processing or treatment of a product that is directly obtained from a patented process, is re-processed or re-treated, the people’s courts shall determine that the re-processing or re-treatment does not constitute "using a product that is directly derived from the patented process" as prescribed in Article 11 of the Patent Law.
Rule 21 Where a party, clearly knowing that certain product is a raw material, equipment, component or intermediate specially used for implementing a patent, provides, without the authorization of the patentee and for production and business purposes, such product to another party who commits an act of patent infringement, if the rights holder claims that the provider’s act constitutes assisting others in committing infringement [contributory infringement] as prescribed in Article 1169 of the Civil Code, the people’s courts shall support such claim.
Where a party, clearly knowing that a product or a process has been granted a patent, actively induces, without the authorization of the patentee and for production and business purposes, another party to commit an act of patent infringement, if the rights holder claims that the inducer’s act constitutes inducing others to commit infringement as prescribed in Article 1169 of the Civil Code, the people’s courts shall support such claim.
Rule 22 Regarding the prior art defense or prior design defense asserted by the accused infringer, the people’s courts shall define the prior art or prior designs based on the Patent Law that was in effect at the time of the filing date of the patent.
Rule 23 Where the accused infringing technical solution or design falls within the scope of protection of a preceding patent, and the accused infringer makes a non-infringement defense of the patent on the grounds that his or its technical solution or design is granted a patent, the people’s courts shall not support such defense.
Rule 24 Where recommended national, industrial or local standards explicitly indicate information on an essential patent that is relevant to such standards, if the accused infringer makes a non-infringement defense of the patent on the grounds that no authorization from the patentee is required for implementing such standards, the people’s courts generally shall not support such defense.
Where recommended national, industrial or local standards explicitly indicate information on an essential patent that is relevant to such standards, and the patentee is intentionally in breach of its licensing obligations on "fair, reasonable and non-discriminatory" terms as promised in the process of formulating the standards when the patentee and the accused infringer negotiate about the patent licensing conditions, thereby resulting in failure to reach a patent licensing contract, and the accused infringer has no obvious faults in the negotiations, the people’s courts generally shall not support the rights holder’s claim for an injunction to stop the act of implementing the standards.
Licensing conditions as stated in Paragraph 2 of this Rule shall be determined through negotiation between the patentee and the accused infringer. If no agreement is reached after sufficient negotiation, the parties may request the people’s courts to determine such conditions. The people’s courts in determining such licensing conditions shall take into comprehensive consideration on the factors such as the degree of innovation and the role of the patent in the standards, the technical field which the technical standards belong to, the nature of the standards, the implementation scope of the standards and relevant licensing conditions according to the principle of "fair, reasonable and non-discriminatory".
Where any law and administrative regulation provides otherwise on the implementation of patents involved in the implementation of standards, such provisions shall prevail.
Rule 25 Where a party, for production and business purposes, uses, offers to sell or sells a patent-infringing product without knowing that such product is produced and sold without authorization of the patentee, and proves by evidence the lawful source of the product, the people’s courts shall support the rights holder’s claim for an injunction ordering the party to stop aforesaid using, offering to sell or selling the patent-infringing product, unless the user of the accused infringing product proves by evidence that a reasonable consideration for such product has been paid.
"Without knowing" in Paragraph 1 of this Rule means actually not knowing and having no reason to know.
"Lawful source" in Paragraph 1 of this Rule means the product is obtained through a normal commercial manner such as legitimate sales channel and an ordinary sales contract. Regarding the lawful source, the person who uses, offers to sell or sells the product shall adduce relevant evidence proving that his or its act complies with the trading customs.
Rule 26 Where the defendant constitutes infringement on a patent, the people’s courts shall support the rights holder’s request for a ruling ordering the defendant to stop the infringing act. However, in consideration of the national or public interests, the people’s courts may not order the defendant to stop the accused acts, but order the defendant to pay reasonable fees.
Rule 27 Where it is difficult to determine the actual losses suffered by the rights holder from infringement, the people’s courts shall, according to Paragraph 1 of Article 65 of the Patent Law, require the rights holder to adduce evidence to prove the profits gained by the infringer from infringement; if the rights holder has adduced preliminary evidence to prove the profits gained by the infringer, while account books or materials relating to patent infringing acts are mainly controlled by the infringer, the people’s courts may order the infringer to provide the account books or materials; if the infringer refuses to provide the account books or materials without justifiable reasons, or provides false ones, the people’s courts may determine the profits gained by the infringer from infringement according to the claims of and evidence provided by the rights holder.
Rule 28 Where the rights holder and the infringer agree, according to law, on the amount of damages or the calculation method of the damages for patent infringement, and claim, during a patent infringement lawsuit, that the amount of damages shall be determined in accordance with such agreement, the people’s courts shall support such claim.
Rule 29 Where, after the issuance of a decision of declaring a patent invalid, a party applies, based on the decision and according to law, for a retrial, and requests revocation of a patent infringement judgment or a mediation statement which has been issued by a people’s court before the declaration of invalidation of the patent but has not been executed, the people’s courts may rule to stay the hearing for the retrial and to stay the execution of the previous judgment or mediation statement.
Where the patentee provides sufficient and effective guarantee to a people’s court and requests continuous execution of the judgment or mediation statement mentioned in the preceding paragraph, the people’s court shall continue the execution; where the infringer provides sufficient and effective counter guarantee to the people’s court and requests staying the execution, the people’s court shall approve the request of the infringer. Where the effective judgment of the people’s court does not revoke the decision of declaring the patent invalid, the patentee shall compensate for the loss caused by the continued execution to the infringer; where the decision of declaring the patent invalid is revoked by an effective judgment of the court and the patent is still valid, the people’s courts may execute the counter guarantee property directly in accordance with the judgment or mediation statement mentioned in the preceding paragraph.
Rule 30 Where no administrative lawsuit is instituted before the people’s courts against the decision of declaring a patent invalid within the statutory period or an effective judgment for the administrative lawsuit does not revoke the decision, if a party applies, based on the invalidation decision and according to law, for a retrial, and requests revocation of a patent infringement judgment or a mediation statement which has been issued by a people’s court before the declaration of invalidation of the patent but has not been executed, the people’s courts shall review the case for the retrial. If a party applies, based on the invalidation decision and according to law, for terminating the execution of a patent infringement judgment or a mediation statement which has been issued by a people’s courts before the declaration of invalidation of the patent but has not yet been executed, the people’s courts shall rule to terminate the execution.
Rule 31 This Interpretation shall enter into force on April 1, 2016. Where relevant judicial Interpretations promulgated previously by the Supreme People’s Court are inconsistent with this Interpretation, this Interpretation shall prevail.
