Release time: 2016-12-21
Interpretations of the Supreme People's Court Concerning Certain Issues on Application of Law for Trial of Cases on Disputes over Patent Infringement (II)
Fa Shi [2016] No. 1
Adopted by the 1676th Session of the Judicial Committee of the Supreme People's Court on 25 January 2016 and implemented with effect from 1 April 2016
21 March 2016
Interpretations of the Supreme People's Court Concerning Certain Issues on Application of Law for Trial of Cases on Disputes over Patent Infringement (II)
These Interpretations are formulated pursuant to the provisions of the Patent Law of the People's Republic of China, the Tort Law of the People's Republic of China, the Civil Procedure Law of the People's Republic of China and related laws, taking into account actual trial practice, for the purpose of proper trial of patent infringement dispute case.
Article 1 Where there are two or more claim items in the claim, the rights holder shall state in the complaint the claim item on which the lawsuit against the infringor with respect to the patent infringement is based. Where it is not stated or not clearly stated in the complaint, the People's Court shall require the rights holder to specify. Upon interpretation, where the rights holder still does not specify, the People's Court may rule that the complaint be thrown out.
Article 2 Where the claim asserted by a rights holder in a patent infringement dispute lawsuit is declared void by the Patent Reexamination Board, the People's Court trying the patent infringement dispute case may order rejecting the rights holder's lawsuit which is grounded on this invalid claim.
Where there is evidence to prove that the decision declaring the aforesaid claim void has been revoked by a valid administrative ruling, the rights holder may file a separate lawsuit.
Where the patentee files a separate lawsuit, the limitation period shall commence from the date of service of the administrative ruling referred to in the second paragraph of this Article.
Article 3 Where a request is made to declare a patent void due to an evident violation of the provisions of the third paragraph and fourth paragraph of Article 26 of the Patent Law rendering the manual to be inapplicable for interpretation of the request, and such scenario does not fall under the circumstances stipulated in Article 4 of these Interpretations, the People's Court trying the patent infringement dispute case shall generally order for a stay of proceedings; where there is no request to declare the patent void during the reasonable period, the People's Court may determine the scope of protection for the patent in accordance with the claim.
Article 4 Where there is ambiguity over the grammar, wording, punctuation, graphics, symbols etc in a claim, manual and attached diagram, but normal technicians in the regime can arrive at the only understanding after reading the claim, manual and attached diagram, the People's Court shall make a ruling based on the said only understanding.
Article 5 For determination of the scope of protection of a patent by a People's Court, the preamble part and features part of an independent claim, as well as the technical features recorded in the citation part and the definition part of the subordinate claim, shall have a definitive role.
Article 6 A People's Court may interpret the patent claim in a case, by applying other patent(s) in divisional patent applications related to the patent in the case, as well as the patent examination files thereof and patent authorisation and determination rulings which have come into effect.
Patent examination files shall include written materials submitted by the patent applicant or the patentee in patent examination, review or nullification procedures, notice of examination opinion formulated by the patent administrative authorities of the State Council and its patent reexamination board, minutes of meetings, oral hearing records, examination decision for patent re-examination request which has taken effect, examination decision on the application to declare the patent void etc.
Article 7 Where an allegedly infringing technical scheme has added other technical features on top of all the technical features of a closed combination claim, the People's Court shall rule that the alleged infringing technical scheme does not fall into the scope of protection of the patent, except where the added technical features belong to inevitable conventional quantity impurities.
Closed claims referred to in the preceding paragraph shall generally exclude Chinese medicine combination claim.
Article 8 Functional features shall mean technical features defined through the function or role of structure, components, steps, conditions and their relationship etc in the invention, except for specific implementation method to attain the aforesaid functions or effects, which can be directly and specifically determined by normal technicians in the regime from reading the claim
When compared to technical features recorded in the manual and attached diagram which are indispensable for materialising the functions or effects referred to in the preceding paragraph, if the corresponding technical features of the alleged infringing technical scheme achieve identical functions and identical effects using basically identical means, and can be associated by normal technicians in the regime at the time of occurrence of the alleged infringement without creative work, the People's Court shall rule that the said corresponding technical features are identical or equivalent to the functional features.
Article 9 Where the alleged infringing technical scheme is not applicable for the use environment defined by the use environment features in the claim, the People's Court shall rule that the alleged infringing technical scheme does not fall under the scope of protection of the patent.
Article 10 Where the patent claim defines a technical feature by the method of production and preparation, if the method of production and preparation of the alleged infringing product is neither identical nor equivalent, the People's Court shall rule that the alleged infringing technical scheme does not fall under the scope of protection of the patent.
Article 11 Where the claim for a method does not specify the sequence of the technical steps, but normal technicians in the regime can directly and specifically conclude that such technical steps should be implemented in a specific sequence after reading the claim, manual and attached diagram, the People's Court shall rule that the said sequence has a defining function in the scope of protection of the patent.
Article 12 Where the claim adopts words such as "at least" and "not exceeding" to define numerical features, and normal technicians in the regime conclude, after reading the claim, manual and attached drawing, that the patent scheme emphasises such words have a defining role in the technical features, the People's Court shall not support the rights holder's assertion that the numerical features which are not identical fall under equivalent features.
Article 13 Where the rights holder proves that the narrowing amendment or representation for the claim, manual and attached drawing by the patent applicant or the patentee in the patent authorisation and determination procedures have been explicitly rejected, the People's Court shall rule that the said amendment or representation does not result in abandonment of the technical scheme.
Article 14 When ruling on the knowledge and cognitive ability of general consumers for the external design, the People's Court shall generally consider the design space of the products identical or similar to the authorised patent design at the time of the alleged infringement. Where the design space is relatively large, the People's Court may rule that it is generally not easy for general consumers to notice the relatively insignificant differences between different designs; where the design space is relatively small, the People's Court may rule that it is generally easy for general consumers to notice the relatively insignificant differences between different designs.
Article 15 In the case of external design patent for a set of products, where the alleged infringing design is identical or similar to one of the external designs, the People's Court shall rule that the alleged infringing design falls under the scope of protection of the patent.
Article 16 In the case of external design patent of component products with unique assembly relationship, where the alleged infringing design is identical or similar to the external design under the assembly state, the People's Court shall rule that the alleged infringing design falls under the scope of protection of the patent.
In the case of external design patent of component products where there is no assembly relationship between the components or where the assembly relationship is not unique, where the alleged infringing design is identical or similar to the external design of all the single components, the People's Court shall rule that the alleged infringing design falls under the scope of protection of the patent; where the alleged infringing design lacks the external design of a single component or is neither identical or similar thereto, the People's Court shall rule that the alleged infringing design does not fall under the scope of protection of the patent.
Article 17 In the case of external design patent of a product with changing status, where the alleged infringing design is identical or similar to the external design under various status of use illustrated in the changing status diagram, the People's Court shall rule that the alleged infringing design falls under the scope of protection of the patent; where the alleged infringing design lacks the external design of any status of use or is neither identical or similar thereto, the People's Court shall rule that the alleged infringing design does not fall under the scope of protection of the patent.
Article 18 Where the rights holder requests, pursuant to Article 13 of the Patent Law, that the organisation or individual, who implements the said invention during the period from gazette date of the invention patent application to the announcement date of authorisation, should pay the relevant fees, the People's Court may refer to the relevant patent licensing fee to make a reasonable determination.
Where the scope of protection claimed by the applicant at the gazette date of the invention patent application is inconsistent with the scope of protection of patent at the time of announcement of authorisation of the invention patent, if the alleged technical scheme falls under both aforesaid scopes, the People's Court shall rule that the respondent has implemented the said invention during the period referred to in the preceding paragraph; where the alleged technical scheme falls under one of the scopes only, the People's Court shall rule that the respondent has not implemented the said invention during the period referred to in the preceding paragraph.
Following announcement of authorisation of invention patent, without approval by the patentee, in the case of use, offer for sale, sale of products manufactured, sold or imported by others during the period referred to in the first paragraph of this Article for manufacturing and business purpose and that such persons have paid, or make a written undertaking for payment of, the corresponding fees stipulated in Article 13 of the Patent Law, the People's Court shall not support the rights holder's assertion that the aforesaid use, offer for sale, or sale has infringed the patent.
Article 19 Where a product sale and purchase contract is concluded pursuant to the law, the People's Court shall rule that this falls under sale stipulated in Article 11 of the Patent Law.
Article 20 In the case of reprocessing of follow-up products derived from further processing of products obtained directly from the patent method, the People's Court shall rule that such products do not fall under "use of products obtained directly from the said patent method" stipulated in Article 11 of the Patent Law.
Article 21 Where a person, who is aware that the relevant products are materials, equipment, parts, intermediate etc used specifically for implementation of the patent, provides such products to others for implementation of patent infringement for manufacturing and business purpose without approval by the patentee, if the rights holder asserts that the provider's action falls under assisting others in implementation of tortious act as stipulated in Article 9 of the Tort Law, the People's Court shall support.
Where a person, who is aware that the relevant product or method is patented, actively induces others to implement patent infringement for manufacturing and business purposes without approval of the patentee, the People's Court shall support the rights holder's assertion that the inducer's act falls under instigating others to implement patent infringement as stipulated in Article 9 of the Tort Law.
Article 22 Where the respondent infringor asserts defence with an existing technique or an existing design, the People's Court shall define existing technique or existing design based on the Patent Law prevailing at the date of patent application.
Article 23 Where the alleged infringing technical scheme or external design falls under the scope of protection of the earlier patent in the case, if the respondent infringor asserts no infringement of the patent in the case on the basis that his technical scheme or design is patented, the People's Court shall not support.
Article 24 Where the recommendative national, industry or local standards explicitly states the requisite patent information, if the respondent infringor asserts no infringement of the said patent on the basis that implementation of the said standards does not require approval of the patentee, the People's Court shall generally not support.
Where the recommendative national, industry or local standards explicitly states the requisite patent information, if at the time when the patentee and the respondent infringor negotiate the licensing criteria for the said patent, the patentee intentionally violates the fair, reasonable and non-discriminatory licensing obligation undertaken in formulation of the standards, resulting in the failure to conclude the patent licensing contract, and the respondent infringor has no evident error in the negotiation, the People's Court shall generally not support the claim of the rights holder to stop the implementation of the standards.
Licensing criteria referred to in the second paragraph of this Article shall be negotiated and determined by the patentee and the respondent infringor. Where the patentee and the respondent infringor are unable to arrive at a consensus after negotiation, they may request a People's Court to determine. In the determination of the aforesaid licensing criteria, the People's Court shall, based on the principles of fairness, reasonableness and non-discrimination, take into account the factors such as the innovative extent of the patent and its function in the standards, the technical regime for which the standards fall under, the nature of the standards, the scope of implementation of the standards, the relevant licensing criteria etc.
Where the laws and administrative regulations provide otherwise for patents in the implementation standards, such provisions shall prevail.
Article 25 For use, offer for sale or sale of patent infringing products for manufacturing and business purposes by a person who is not aware that the manufacturing or sale is not approved by the patentee, if the person can show prove that the products are sourced legitimately, the People's Court shall support the right holder's petition for cessation of the aforesaid use, offer for sale, sale, except where the users of the alleged infringing products show proof that they have paid the reasonable consideration for the said products.
"Not aware" referred to in the first paragraph of this Article shall mean actually not aware and should not be aware.
"Legitimate source" referred to in the first paragraph of this Article shall mean obtaining products through normal business methods such as legitimate sales channels and the usual sale and purchase contract. For legitimate source, the user, offeror or seller shall provide the relevant evidence which complies with transaction practice.
Article 26 Where the respondent constitutes patent infringement and the rights holder petitions for an order that the respondent stop the infringement, the People's Court shall support, however the People's Court may, based on the consideration for national interests and public interest, opt not to rule that the respondent stop the infringement, and instead order the respondent to pay the corresponding reasonable expenses.
Article 27 Where it is difficult to determine the actual losses incurred by a rights holder due to the infringement, the People's Court shall, pursuant to the provisions of the first paragraph of Article 65 of the Patent Law, require the rights holder to show proof of the gains derived by the infringor from the infringement; where the rights holder has provided preliminary evidence of gains derived by the infringor, if the relevant accounts books and materials relating to the patent infringement are held by the infringor, the People's Court may order the infringor to provide the said accounts books and materials; where the infringor refuses to provide without a proper reason or provides false accounts books and materials, the People's Court may ascertain the gains derived by the infringor from the infringement based on the assertion of the rights holder and the evidence provided.
Article 28 Where the rights holder and the infringer have agreed on the compensation amount or compensation formula for the patent infringement pursuant to the law, and assert in the patent infringement lawsuit that determination of the compensation amount be based on the said agreement, the People's Court shall support.
Article 29 Following the making of a patent nullification decision, where a party concerned applies for retrial based on the decision pursuant to the law, and petitions to revoke a yet-to-be-enforced ruling or mediation decision on patent infringement made by a People's Court prior to patent nullification, the People's Court may rule on stay of retrial proceedings and stay of enforcement of the original judgment or mediation decision.
Where a patentee provides adequate and valid guarantee to a People's Court to request for continued enforcement of the judgment or mediation decision referred to in the preceding paragraph, the People's Court shall continue to enforce; where the infringor provides adequate and valid counter-guarantee to the People's Court to request for stay of enforcement, the People's Court shall grant the stay. Where the judgment of the People's Court which has come into effect does not revoke the patent nullification decision, the patentee shall compensate the losses incurred by the counterparty due to continued enforcement; where the patent nullification decision is revoked by a judgment of a People's Court which has come into effect and the patent is still valid, the People's Court may directly enforce the aforesaid counter guarantee property based on the aforesaid judgment or mediation decision referred to in the preceding paragraph.
Article 30 Where a lawsuit is not filed with a People's Court within the statutory period against a decision which declares a patent invalid, or where after litigation a valid ruling does not revoke the said decision, if the party concerned applies for retrial pursuant to the law based on the said decision and petitions to revoke a yet-to-be-enforced ruling or mediation decision on patent infringement made by a People's Court prior to patent nullification, the People's Court shall retry the case. Where a party concerned, based on the said decision, petitions pursuant to the law to terminate enforcement of a yet-to-be-enforced judgment or mediation decision on patent infringement made by a People's Court prior to patent nullification, the People's Court shall rule on termination of enforcement.
Article 31 These Interpretations shall be implemented with effect from 1 April 2016. Where there is any discrepancy between these Interpretations and the relevant judicial interpretations promulgated by the Supreme People's Court previously, these Interpretations shall prevail.
