Interpretation of the Supreme People’s Court on Several Issues Concerning the Application of Law in the Trial of Patent Infringement Dispute Cases
Judicial Interpretation [2009] No. 21
(Adopted at the 1480th meeting of the Judicial Committee of the Supreme People's Court on December 21, 2009, and coming into force on January 1, 2010)
In order to correctly adjudicate patent infringement dispute cases, this interpretation is enacted in accordance with the Patent Law of the People’s Republic of China and Civil Procedure Law of the People’s Republic of China and in light of judicial practice.
Rule 1 The people’s court shall determine the scope of protection of a patent pursuant to Article 59(1) of the Patent Law, based on a claim asserted by a rights holder. Where the rights holder changes the asserted claim before the end of the court debate in the first instance, the people’s court shall approve.
Where the rights holder assets that the scope of protection of a patent should be determined based on a dependent claim, the people’s court shall determine the scope of protection of the patent based on the additional technical feature(s) defined in the dependent claim and the technical feature(s) defined in the claim referred to by the dependent claim.
Rule 2 The people’s court shall, based on the recitation of a claim and in combination with the understanding of a person skilled in the art on the claim after reading the description and drawing(s), determine the content of the claim as provided in Article 59(1) of the Patent Law,
Rule 3 The people’s court can interpret a claim by using the description, drawings, related claims in the claim set, and the documents in the patent examination file history. Where the description has a specified definition of a term in a claim, the interpretation of such term is subject to the specified definition.
Where the meaning of a claim still cannot be clarified by the above method, the people’s court can interpret the claim in combination with the common knowledge documents, such as reference books, textbooks, etc. and the general understanding of a person skilled in the art.
Rule 4 As for a technical feature defined by function or effect in a claim, the people’s court shall consider the embodiment(s) where such function or effect is recited in the description and drawing(s) and the equivalent embodiment(s) thereof to determine the content of such technical feature.
Rule 5. As for a technical scheme recorded only in the description or drawing(s) but not defined in a claim, where the rights holder intends to include such technical scheme into the scope of patent protection in a patent infringement case, the people’s court shall not support.
Rule 6 As for a technical scheme that has been abandoned by the patent applicant or patentee through amending claims and description or responding to the office actions in the patent granting or invalidation procedure, where the rights holder intends to include such technical scheme into the scope of patent protection in a patent infringement case, the people’s court shall not support.
Rule 7 In determining whether an accused infringing technical scheme falls into the scope of protection of a patent, the people’s court shall examine all technical features defined in the claim asserted by the rights holder.
Where an accused infringing technical scheme contains technical features that are identical to or equivalent to all technical features recited in a patented claim, the people’s court shall determine that the accused infringing technical scheme falls within the scope of patent protection; where the accused infringing technical scheme, in comparison with all technical features defined in the claim, lacks one or more technical features of the claim, or has one or more technical features that are not identical or equivalent, the people’s court shall determine that the accused infringing technical scheme does not fall within the scope of patent protection.
Rule 8 Where an accused infringing design that is identical or similar to a patented design is used on a product in the same or similar category as that of the product incorporating the patented design, the people’s court shall determine that the accused infringing design falls into the scope of protection of the patented design as provided in Article 59(2) of the Patent Law.
Rule 9 The people’s court shall, based on the use of the product incorporating the patented design, determine whether an accused infringing product is in the same or similar category as that of the product incorporating the patented design. When determining the use of the product, the people’s court can consider various factors, such as the brief specification of the patented design, the International Classification for Industrial Design, the functions of the product, and the sales and actual usage of the product.
Rule 10 The people’s court shall, based on the knowledge level and cognitive ability of an average consumer of the product incorporating a patented design, determine whether an accused infringing design is identical or similar to the patented design.
Rule 11 When determining whether an accused infringing design is identical or similar to a patented design, the people’s court shall, based on the design features of the patented design and the accused infringing design, consider the overall visual effects thereof for comprehensive determination; the people’s court shall not consider the design features mainly defined by technical functions or the features having no impact on the overall visual effect, such as the material or internal structure of the product.
The following features are considered to have a greater impact on the overall visual effect of a design:
(1) the part of a product that is easier to be directly observed in normal use of the product, as compared to other parts;
(2) the design features of a patented design that are distinguished from the design features of a prior design, as compared to other design features of the patented design;
Where an accused infringing design anda patented design have no difference in the overall visual effect, the people’s court shall determine that the two are identical; where the two have no substantial difference, the people’s court shall determine that the two are similar.
Rule 12 Where a product infringing a invention or utility model patent is used as a component for manufacturing another product, the people’s court shall determine that such using is the act of using as provided in Article 11 of the Patent Law; where such another product is sold, the people’s court shall determine that such selling is the act of selling as provided in Article 11 of the Patent Law.
Where a product infringing a design patent is used as a component for manufacturing another product and such another product is sold, the people’s court shall determine that such act is the act of selling as provided in Article 11 of the Patent Law, unless the product infringing the design patent serves only technical functions in such another product.
As for the circumstances mentioned in the preceding two paragraphs, where there exists division of labor and cooperation among the accused infringers, the people’s court shall determine it as joint infringement.
Rule 13 The people’s court shall determine that an original product obtained by using a patented process is a product directly obtained by the patented process as provided in Article 11 of the Patent Law.
The people’s court shall determine that act of further processing or treating said original product to obtain a subsequent product belongs to the act of using a product directly obtained by the patented process as provided in Article 11 of the Patent Law.
Rule 14 Where all technical features accused of falling within the scope of protection of a patented are identical to or have no substantial difference from the corresponding technical features of a prior technical scheme, the people’s court shall determine that the technology implemented by the accused infringer belongs to prior art as provided in Article 62 of the Patent Law.
Where an accused infringing design is identical to or has no substantial difference from a prior design, the people’s court shall determine that the design implemented by the accused infringer belongs to a prior design as provided in Article 62 of the Patent Law.
Rule 15 Where an accused infringer claims a defense of prior use rights for the technology or design obtained illegally, the people’s court shall not support.
Under any of the following circumstances, the people’s court shall determine that necessary preparations for manufacturing or using have been made as provided in Article 69(2) of the Patent Law:
(1) where the main technical drawings or process documents necessary for implementing the invention-creation have been completed; or
(2) where the main device(s) or raw material(s) necessary for implementing the invention-creation have been manufactured or bought.
The original scope as provided in Article 69(2) of the Patent Law includes the original production scale already existing, or the production scale that can be achieved by using the device(s) or production preparation already existing before the filing date of the patent application.
Where the holder of prior use rights transfers or licenses, after the filing date of the patent application, the technology or design that the holder has already implemented or for which the holder has already made necessary preparations for implementation, to others for implementation, and the accused infringer claims such implementation is the continuous implementation within the original scope, the people’s court shall not support, unless such technology or design is transferred or inherited together with the original enterprise.
Rule 16 Where determining the profits earned by an infringer due to infringement in accordance with the provisions of Article 65(1) of the Patent Law, the people’s court shall limit such profits to the profits earned by the infringer due to the act of infringing upon a patent; profits earned through other rights shall be reasonably deducted.
Where a product infringing an invention or a utility model patent is a component of another product, the people’s court shall reasonably determine the amount of compensation according to the value of the component itself, its role in achieving the profits of the finished product, and other factors.
Where a product infringing a design patent is a package, the people’s court shall reasonably determine the amount of compensation according to the value of the package itself, its role in achieving the profits of the packed product, and other factors.
Rule 17 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 a patent application, the people’s court shall determine that such product does not belong to a new product as provided in Article 61(1) of the Patent Law.
Rule 18 After a rights holder sends a warning of patent infringement to others, where the warned party or any interested party sends a written notice urging the rights holder to execute its right to sue, if the rights holder does not withdraw the warning or institute a lawsuit within one month from the date when the rights holder receives the notice or two months from the date when the notice is sent, and the warned party or any interested party files a lawsuit with the people’s court requesting a Declaratory Judgment of non-infringement, the people’s court shall accept the case.
Rule 19 Where an accused infringement occurred before October 1, 2009, the people’s court shall apply the pre-amendment Patent Law; where an accused infringement occurred after October 1, 2009, the people’s court shall apply the amended Patent Law.
Where an accused infringement occurred before October 1, 2009 and continued after October 1, 2009, and the accused infringer shall bear liability for compensation pursuant to the provisions of both the pre-amendment and amended Patent Laws, the people’s court shall apply the amended Patent Law to determine the amount of compensation.
Rule 20 Where any previous judicial interpretation released by the Supreme People's Court is not in consistent with this interpretation, this interpretation shall prevail.
