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Provisions (I) of the Supreme People's Court on Several Issues concerning the Application of Law in the Trial of Administrative Cases Involving Patent Granting and Confirmation(2020.9.12)

Judicial Interpretation [2020] No. 8
Provisions (I) of the Supreme People's Court on Several Issues concerning the Application of Law in the Trial of Administrative Cases Involving Patent Granting and Confirmation

 (Adopted at the 1810th Session of the Judicial Committee of the Supreme People's Court on August 24, 2020, and coming into force on September 12, 2020)


For the purposes of correctly trying administrative cases involving patent granting and confirmation, these Provisions are developed in accordance with the Patent Law of the People's Republic of China, the Administrative Procedure Law of the People's Republic of China and other relevant laws and in light of judicial practice.


Article 1 For the purposes of these Provisions, “administrative case involving patent granting” means a case in which a patent applicant files a lawsuit with a people's court due to dissatisfaction with the examination decision on a request for patent reexamination made by the patent administration department under the State Council.


For the purposes of these Provisions, “administrative case involving patent confirmation” means a case in which a patentee or a petitioner requesting the declaration of invalidation of a patent files a lawsuit with a people's court due to dissatisfaction with the examination decision on the request for declaration of patent invalidation made by the patent administration department under the State Council.


For the purposes of these Provisions, “alleged decision” means an examination decision made by the patent administration department under the State Council on a request for patent reexamination or a request for declaration of patent invalidation.


Article 2 A people's court shall define the terms used in the claims based on the ordinary meaning understood by those skilled in the relevant technical field after reading the claims, specification and appended drawings. If the terms used in the claims are clearly defined or explained in the specification and appended drawings, such definitions shall be adopted.


The terms that cannot be defined according to the provisions of the preceding paragraph may be defined based on technical dictionaries, technical manuals, reference books, textbooks, and national or industry technical standards, among others, generally used by those skilled in the relevant technical field.


Article 3 A people's court may, when defining terms in the claims in an administrative case involving patent confirmation, refer to the patentee's relevant statements that have been adopted by an effective judgment of a civil case involving patent infringement.   


Article 4 Where there is any evident error or ambiguity in the grammar, characters, numbers, punctuation, graphics or symbols, etc, in the claims, specification or appended drawings, but those skilled in the relevant technical field may have a sole understanding through reading the claims, specification and appended drawings, the people's court shall make a determination based on such sole understanding.


Article 5 Where a party has evidence proving that a patent applicant or a patentee forges or fabricates any relevant technical content such as specific implementation methods, technical effects and data and graphs in the specification and appended drawings against the principle of good faith, and claims accordingly that the relevant claims fail to comply with relevant provisions of the Patent Law, the people's court shall support such a claim.


Article 6 Where the failure to fully disclose specific technical content in the specification results in any of the following circumstances on the filing date of a patent, the people's court shall determine that the specification and claims relating to the specific technical content fail to comply with paragraph 3, Article 26 of the Patent Law:


(1) The technical solution defined in the claims cannot be implemented;  
    (2) The implementation of the technical  solution defined in the claims cannot solve the technical problems to be solved by the invention or utility model;  
    (3) Excessive work is required for confirming that the technical solution defined in the claims can solve the technical problems to be solved by the invention or utility model.
Where a party claims merely based on the specific technical content not fully disclosed as provided for in the preceding paragraph that the claims relating to such specific technical content comply with the provision of paragraph 4, Article 26 of the Patent Law that “the claims shall be based on the specification,” the people's court shall not support the claim.


Article 7 Where, based on the specification and appended drawings, a person skilled in the relevant technical field is of the opinion that the claims fall under any of the following circumstances, the people's court shall determine that the claims fail to comply with the provisions of paragraph 4, Article 26 of the Patent Law on clearly defining the scope of patent protection:
(1) The type of subject matter of the invention is unclear;  
    (2) The meaning of technical features in the claims cannot be reasonably determined;  
    (3) There are evident contradictions between technical features and such contradictions cannot be reasonably explained.


Article 8 Where, after reading the specification and appended drawings, those skilled in the relevant technical field cannot obtain or reasonably generalize the technical solution defined in the claims on the filing date, the people's court shall determine that the claims fail to comply with the provision of paragraph 4, Article 26 of the Patent Law that “the claims shall be based on the specification.”


Article 9 “The technical features defined by functions or effects” means technical features such as structure, components, steps, and conditions, or interrelation between technical features, which are defined only by functions or effects in the invention-creation, except that those skilled in the relevant technical field can directly and clearly determine the specific implementation methods for realizing the functions or effects through reading the claims.

Where the claims, specification and appended drawings disclose no specific implementation methods for realizing the functions or effects of the technical features defined by functions or effects as set forth in the preceding paragraph, the people's court shall determine that the specification and claims with such technical features fail to comply with paragraph 3, Article 26 of the Patent Law.


Article 10 Where a drug patent applicant submits supplementary experimental data after the date of filing and claims that such data are used to prove that the patent application complies with paragraph 3 of Article 22, paragraph 3 of Article 26 of the Patent Law, and other relevant provisions, the people's court shall conduct examination thereon.


Article 11 Where the parties have a dispute over the authenticity of the experimental data, the party submitting the experimental data shall adduce evidence to prove the source and the formation process of the experimental data. The People's Court may notify the person in charge of the experiment to appear in court to explain the experimental raw materials, steps, conditions, environment or parameters, as well as the personnel and institutions that completed the experiment, etc.


Article 12 In determining the technical field of the technical solution defined in the claims, the people's court should comprehensively take into account the full content of the claims such as the subject matter, the recordation about the technical field and the background technology in the specification, as well as the functions and uses achieved by the technical solution, etc.


Article 13  Where the specification and appended drawings do not clearly record the technical effect that the distinguishing technical features can achieve in the technical solution defined in a claim, the people's court may, by combining the common knowledge of the technical field to which the claim belongs, and according to the relationship between the distinguishing technical features and other technical features in the claim, and the role of the distinguishing technical features played in the technical solution defined in the claim, etc., determine the technical problem actually solved by the claim that can be determined by those skilled in the technical field.Where the alleged decision fails to identify or wrongly identifies the technical problem actually solved by the claim, it does not affect the people's court's determination of the inventiveness of the claim in accordance with the law.

Article 14  The people's court shall consider the design space of the design patent product of the filing date when determining the knowledge level and cognitive ability of the general consumers of the design patent product. Where the design space is relatively large, the people's court may determine that it is not easy for ordinary consumers to notice small differences between different designs; where the design space is relatively small, the people's court may determine that it is easier for ordinary consumers to notice small differences between different designs.


For the determination of the design space mentioned in the preceding paragraph, the people's court may comprehensively consider the following factors:
(1) the function and use of the product;  
    (2) the overall status of prior designs;  
    (3) customary design;  
    (4) the mandatory provisions of laws and administrative regulations;  
    (5) national and industry technical standards;  
(6) other factors which need to be considered.


Article 15 If the pictures or photos of a design are contradictory, missing or ambiguous, which causes that ordinary consumers cannot determine the design to be protected based on the pictures, photos and brief descriptions, the People's Court shall determine that it does not comply with the provision "clearly show the design of the product for which patent protection is sought" as set forth in Paragraph 2 of Article 27 of the Patent Law.


Article 16 When determining whether a design complies with the provisions of Article 23 of the Patent Law, the people's court shall comprehensively judge the overall visual effect of the design.
Design features which are necessary or for which there are only limited selections in order to achieve specific technical functions shall have no significant impact on the overall observation and comprehensive judgment of the visual effect of a design patent.


Article 17 Where when a design is compared with a prior design of the same or similar category of product, the overall visual effect is the same or is substantially the same with only partial minor differences, etc., the people's court shall determine that it constitutes "a prior design" as stipulated in Paragraph 1 of Article 23 of the Patent Law.


Except for the circumstances specified in the preceding paragraph, where the difference between the design and a prior design of the same or similar category of product does not have a significant impact on the overall visual effect, the people's court shall determine that it is not "significantly different" as stipulated in Paragraph 2 of Article 23 of the Patent Law.
The people's court shall determine whether the product category is the same or similar according to the use of the design product. The determination of the use of the product may refer to the brief description of the design, the design product classification table, the function of the product, and the sales and actual use of the product, etc.


Article 18  Where when a design patent is compared with another design patent applied for on the same day on the same category of product, the overall visual effect is the same or is substantially the same with only partial minor differences, etc., the people's court shall determine that it does not comply with the provisions of Article 9 of the Patent Law that "For any identical invention-creation, only one patent right shall be granted".


Article 19  Where when a design is compared with another design that was filed before the filing date and announced after the filing date and belongs to the same or similar category of product, if the overall visual effect is the same or is substantially the same with only partial minor differences, etc., the people's court shall determine that it constitutes "the identical design" as stipulated in Paragraph 1 of Article 23 of the Patent Law.


Article 20  Where based on the design inspiration given by prior designs as a whole, a design, which has the same visual effect or has substantially the same visual effect with only partial minor differences compared with a design patent, etc. and does not have a unique visual effect, is obtained in a manner easily thought of by an ordinary consumer, such as converting, combining or replacing design features, the people's court shall determine that the design patent is not "significantly different" as stipulated in the second paragraph of Article 23 of the Patent Law, compared with the combination of prior design features.

Under any of the following circumstances, the people's court may determine that the design inspiration mentioned in the preceding paragraph exists:
(1) combining or replacing the design features of different parts of the same category of product;  
    (2) a prior design discloses the transpose of the design features of a specific category of product to the design patent product;  
    (3) a prior design discloses the combination of the design features of different specific categories of products;  
    (4) using the pattern in a prior design on the design patent product directly or only after making minor changes thereto;  
    (5) transposing the characteristics of a single natural object to the design patent product;  
    (6) a design is obtained by simply adopting the basic geometric shape or making only minor changes thereto;  
    (7) using all or part of the design of buildings, works, signs, etc. known to ordinary consumers.


Article 21 When determining the unique visual effect mentioned in Article 20 of these regulations, the people's court may comprehensively consider the following factors:

(1) the design space of the design patent product;  
    (2) the relevance of product categories;  
    (3) the number and degree of difficulty of design features that are transposed, combined, or replaced;  
    (4) other factors which need to be considered.


Article 22  The "lawful rights" mentioned in Article 23, Paragraph 3 of the Patent Law include lawful rights or interests in respect of works, trademarks, geographical indications, names, corporate names, portraits, and goods’ names, packaging, and decoration, etc. that have certain influence.


Article 23  Where the parties claim that the following circumstances in the examination procedures for patent reexamination and invalidation requests belong to the "violation of legal procedures" stipulated in Article 70(3) of the Administrative Procedure Law, the claim shall be supported by the people's court:
(1) omitting the reasons and evidence put forward by the parties, and having a substantive impact on the rights of the parties;  
    (2) failing to notify in accordance with the law the patent applicant, patentee, invalidation petitioner, etc. who should participate in the examination procedure, which has a substantial impact on their rights;  
    (3) failing to inform the parties about the composition of the collegial panel, and the members of the collegial panel have legal reasons for recusal but have not recused;
(4) failing to give the party against whom the alleged decision is unfavorable an opportunity to state its opinion on the reasons, evidence and ascertained facts on which the alleged decision is based;   
    (5) actively introducing common knowledge or customary designs not claimed by the parties, without hearing the parties' opinions, and having a substantial impact on the rights of the parties;  
    (6) other violations of legal procedures that may have a substantial impact on the rights of the parties.


Article 24: Where an alleged decision falls under any of the following circumstances, the people's court may, in accordance with the provisions of Article 70 of the Administrative Procedure Law, revoke the judgment in part:
(1) the alleged decision is wrong in the determination of part of the claims, and the rest is correct;  
    (2) the alleged decision is wrong in the determination of part of the design in "a patent application for a design" stipulated in the second paragraph of Article 31 of the Patent Law, and the rest is correct;  
    (3) other circumstances in which the judgment may be partially revoked.


Article 25  Where an alleged decision has commented on all the invalidation reasons and evidence claimed by a party and declared a claim invalid, where the people's court considers that none of the reasons for the alleged decision to find the claim invalid is tenable, the decision shall be revoked or partially revoked, and the defendant may be ordered to make a new examination decision on the claim as appropriate.


Article 26  Where an examination decision is made directly based on an effective judgement and does not introduce new facts or reasons, and a party files a lawsuit against the decision, the people's court shall rule not to accept it according to law; if the case has been accepted, the lawsuit shall be dismissed in accordance with the law.


Article 27  Where an alleged decision finds out facts or applies laws in an indeed inappropriate way, but the conclusion on the determination of patent granting and confirmation is correct, the people's court may decide to reject the plaintiff's claim on the basis of correcting the relevant facts and the application of laws.


Article 28 Where a party claims that the relevant technical content is common knowledge or that the relevant design features are conventional designs, the people's court may require the party to provide evidence or make an explanation.


Article 29 Where a patent applicant or patentee provides new evidence in an administrative case of patent granting and confirmation to prove that the patent application should not be rejected or the patent right should be maintained, the people's court shall generally examine it.


Article 30  The people's court shall generally not examine new evidence provided by the petitioner for invalidation in an administrative case of patent confirmation, with the exception of the following evidence:
(1) proof of common knowledge or customary designs already asserted in the examination procedure of the request for invalidation of the patent;  
    (2) proof of the level of knowledge and cognitive ability of those skilled in the relevant technical field or general consumers;  
    (3) proof of the design space of a patent design product or the overall condition of prior designs;  
    (4) evidence for reinforcing the probative value of evidence that has been admitted in the examination procedure of the request for invalidation of the patent;  
    (5) evidence for rebutting the evidence provided by other parties in the litigation.


Article 31  The people's court may require the parties to provide new evidence as stipulated in the provisions of Article 29 and Article 30 of these Provisions.If the evidence provided by the parties to the people's court is required by law to be provided during the patent reexamination or invalidation request examination procedure but was not provided without justifiable reasons, the people's court shall generally not accept it.


Article 32    These Provisions shall come into force on September 12, 2020.
After the implementation, these Provisions shall apply to the first-instance and second-instance cases being tried by the people's courts; for cases for which effective judgments have been made before the implementation of these Provisions, these Provisions shall not apply to their retrials.

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