Interpretation of the Supreme People's Court on Certain Issues Concerning the Application of Law in the Trial of Controversies over the Infringement of Patent Right (Draft) (2009-06-18)

Translated by: G·IPRs (Michael Ni, Katherine,  Shanghai Runhe Law Firm, Version: R1.0, June 29, 2009 )

For the purpose of correctly trying controversies over the infringement of patent right, this Interpretation is formulated in accordance with the Patent Law of the People’s Republic of China, Civil Procedure Law of the People’s Republic of China and other relevant legal provisions, and in combination with trial practices.

Article 1 The patentee who requests to protect the patent right for an invention or utility model shall clarify the made claims. The people’s court shall, pursuant to Article 59.1 of the Patent Law, determine the scope of protection of the patent right in accordance with the claims made by the patentee. It shall be approved by the people’s court where the patentee modifies the made claims before the close of the court debate during the first instance.

Where the claims made by the patentee are declared invalid before the judgment of the first instance is pronounced and the patent right is kept valid on the basis of other claims, it shall be approved by the people’s court in the event that the patentee requests to determine the scope of protection of the patent right in accordance with the said other claims. Where the said cause of invalidation occurs after the pronouncement of the judgment of the first instance and before that of the second instance and the patentee requests to determine the scope of protection of the patent right in accordance with the claims which are failed to be made in the first instance, the people’s court of the second instance may, in accordance with the principle of voluntariness of the parties concerned, conduct mediation over such new claims. If failed, it shall notify the patentee to file a separate action; regarding the claims the patentee has already made, where the people’s court of the first instance fails to make a ruling or decision, the people’s court of the second instance may, in accordance with the principle of voluntariness of the parties concerned, conduct mediation. If failed, it shall remand the case for a new trial except that the claims which are failed to be ruled or decided do not affect the determination of the nature of infringement.

In the event that the patentee requests to determine the scope of protection of the patent right in accordance with dependant claims, the people’s court shall determine the scope of protection of the patent right according to both additional technical features of such dependent claims and technical features of the claims referred to.

Article 2 The people’s court shall determine the scope of protection of the patent right for an invention or utility model in accordance with the contents of the claims understood by a normal person skilled in the art after reading the description and the drawings. Where the contents of the claims understood by an average person skilled in the art are different from the literal meaning of the claims, the scope of protection of the patent right shall be determined by the contents of the claims understood by such average person skilled.

The scope of protection of the patent right shall conform to the purpose of invention of the patent and not include the technical solution for overcoming the defects and deficiencies in the prior art by the patent.

Article 3 The people’s court may take the specification and the drawings, other claims in the claims and patent examination files to interpret relevant contents of the claims. Where the diction of the claims is specially defined in the specification, such special definitions shall be taken as the meaning of the diction of the claims. In case the meaning of the diction of the claims cannot be defined by the above-mentioned methods, it may be interpreted in combination of reference books, text books, etc. and other public literatures and the common meaning of the understanding of an average person skilled in the art.

Article 4 "The scope of protection of the patent right for an invention or utility model" stipulated in Article 59 of the Patent Law includes the scope defined by technical features recorded in the claims. Where the patentee claims that the scope of protection of the patent right shall include the scope defined by the equivalent technical feature, the people’s court shall define the scope of protection of the patent right by such equivalent technical feature.

An equivalent technical feature referred to in the preceding paragraph is the feature that, as compared with the feature described in the claims, performs substantially the same function in substantially the same way, produces substantially the same effect, and can be associated by an average person skilled in the art with the feature described without any creative work when the infringement occurs.

Article 5 Where the claims express the technical feature by function or effect, the people’s court shall, pursuant to the specific and the equivalent mode of the technical feature for carrying out the invention or utility model described in the specification and the drawings, to define the contents of such technical feature.

Article 6 Regarding the technical solution which is only described in the specification or the drawings and failed to be recorded in the claims, the people’s court shall not support in the event that such technical solution is claimed by the patentee to be included in the scope of protection of the patent right in a patent infringement lawsuit.

Article 7 In the procedure of grant of the patent right or invalidation, where the applicant or the patentee on his own initiative or at the request of the examiner makes amendments on or observations to the claims having the nature of restriction or reduction and the patentee claims in the patent infringement lawsuit that the scope of protection of the patent right shall include the abandoned technical solution, the people's court shall not support such request.

Article 8 Any technical feature described in the claims claimed by the patentee shall not be omitted when the people’s court determines whether the technical solution which is alleged for infringement falls into the scope of protection of the patent right.

Where the technical solution which is alleged for infringement includes features identical or equivalent to all the technical features described in the claims, the people’s court shall determine that such technical solution falls into the scope of protection of the patent right; where compared with all the technical features described in the claims, the technical solution which is alleged for infringement is lacking in one or more technical features described in the claims, or one or more of its technical features are neither identical nor equivalent to those described in the claims, the people’s court shall determine that the technical solution which is alleged infringement does not fall into the scope of protection of the patent right.

Article 9 The people’s court shall determine “the scope of protection of the patent right for design” stipulated in Article 59.2 of the Patent Law in accordance with the design identical or similar to the patented design of the products belonging to the same or approximate classes with the product incorporating the design.

Where the products are of the same or approximate classes but the design which is alleged infringement is neither identical nor similar to the patented design, or the design which is alleged infringement is identical or similar to the patented design but not of the same or approximate classes, the people’s court shall determine that the designs which is alleged infringement does not fall into the scope of protection of the patent right for design.

Article 10 The products of the same class referred to in Article 9 of this Interpretation shall mean the products that have the same use; the products of approximate classes refer to the products that have that similar use.

The people’s court may determine the use of the product by making reference to the product title, purpose of use described in the International Classification for Design and the brief explanation and taking into consideration the sales and actual use of the product and other factors.

Article 11 When the people’s court judges whether the designs are identical or similar, it shall be based on the knowledge and cognitive capability of the relevant public of the product incorporating the design.

The relevant public referred to in the preceding paragraph shall mean a person who has a common knowledge of the patented design and certain capability of distinguishing the differences in shape, pattern and color between designs, but without notice to the minor differences in shape, pattern or color of designs.

Article 12 When judging whether the designs are identical or similar, the people’s court shall comprehensively consider all the design features within the scope of protection of the patent right for design according to the overall visual effect of the designs. Provided, however, the unique feature of design which may be adopted to perform product technical functions and the features that the materials and internal structure, etc. do not influence the overall visual effect shall not be taken into consideration.

Where it is sufficient to create, among the relevant public, confusion regarding the overall visual effects of the design which is alleged for infringement and the patented design, the people’s court shall determine that the design which is alleged for infringement and the patented design are similar. Where the design which is alleged for infringement does not include the main points of the patented design, it shall be determined that the design which is alleged for infringement and the patented design will not create, among the relevant public, confusion regarding the overall visual effect.

The main points of design referred to in the preceding paragraph shall mean the design features of the patented design, compared with existing designs, which may create notable visual influences on the relevant public. The people’s court may make reference to the brief explanation of design to determine the main points of design.

Article 13 In the event that the products are assembled, the people’s court shall determine it as "make" prescribed in Article 11 and Article 69 of the Patent Law, except that they are generally sold as products in set or combination products and assembled by the seller or the users.

Where the products incorporating the design of specific package are recycled and used for packaging the products of the same or approximate classes, the people’s court shall determine it as "make" prescribed in Article 11 and Article 69 of the Patent Law.

Article 14 Where the product infringes upon the patent right for an invention or utility model and is used for being a component of another product, the production of such another product shall be determined as “use” prescribed in Article 11 and Article 69 of the Patent Law; where such another product is sold, it shall be determined by the people’s court as "sell" prescribed in Article 11 and Article 69 of the Patent Law.

Where the product infringes upon the patent right for design and is used for being a component of another product, the production and sale of such another product shall be determined by the people’s court as "sell" prescribed in Article 11 and Article 69 of the Patent Law.

Regarding the circumstances prescribed in the preceding two paragraphs, where the accused infringers cooperate with each other through dividing the work, it shall be determined by the people’s court as "make" prescribed in Article 11 and Article 69 of the Patent Law; where the infringer fails to provide the legal source of the product which is alleged for infringement or the legal source provided is untrue, it shall be determined by the people’s court as "make" prescribed in Article 11 and Article 69 of the Patent Law.

Article 15 Where the original product acquired from the patented process, it shall be determined by the people’s court as "the product directly acquired from the patented process" prescribed in Article 11 and Article 69 of the Patent Law.

Where the follow-up product is acquired from further processing or disposing of the original product, it shall be determined by the people’s court as "the product directly acquired from the patented process" prescribed in Article 11 of the Patent Law..

Article 16 Where the infringer is aware that the relevant product is the raw material, intermediate product, component, or equipment, etc. which is only used for carrying out the specific invention or utility model and he still provides the third party with such product to conduct the infringement upon the patent right, the people’s court shall support the claim in the event that the patentee requests the infringer and the third party to bear joint and several civil liability; where the conducts of such third party is not for production or business purposes, it shall be supported by the people’s court in case the patentee claims that the infringer shall bear civil liability.

Article 17 Where the accused infringer of a lawsuit of infringement upon the patent right for an invention or utility model takes the prior art as a defense and all the technical features which fall into the scope of protection of the patent right of the technical solution which is alleged infringement are identical or equivalent to corresponding technical features of the existing technical solution, it shall be determined by the people’s court as "the accused infringer has evidence to prove that the technology or design it or he exploits is a prior art or design" prescribed in Article 62 of the Patent Law.

Where the accused infringer makes a plea of non-infringement by a conflicting application of the patent which is made public, the preceding paragraph may be referred to by the people’s court.

Article 18 Where the accused infringer of a lawsuit of infringement upon the patent right for design takes the existing design as a defense and the design which is alleged infringement is identical or similar to the design of one existing product, the people’s court shall determine it as "the accused infringer has evidence to prove that the design it or he exploits is an existing design" prescribed in Article 62 of the Patent Law.

Where the accused infringer makes a plea of non-infringement by a conflicting application of the patent which is made public, the preceding paragraph may be referred to by the people’s court.

Article 19 Where the accused infringer raises the right of prior use as a defense by illegally acquired technology or design, it shall not be supported by the people’s court.

It shall be determined by the people’s court as "having made necessary preparations for making or using" prescribed in Article 69(2) of the Patent Law under either of the following circumstances:

(1) main technical drawings or technique documents for carrying out an inventions and creations have been finished;

(2) main equipments or moulds for carrying out an inventions and creations have been made or purchased.

The "original scope" referred to in Article 69(2) of the Patent Law includes the existing scale of production before the date of filing an application for patent or the achievable scale of production based on the existing production equipment or the existing preparation of production.

Where the owner of the right of prior use transfers or licenses others to exploit the technology or design which has been carried out or has been made necessary preparation for exploiting after the date of filing an application for patent and claims that the act of exploitation is the continuous exploitation within the original scope, it shall not be supported by the people’s court except that such technology or design is transferred or succeeded along with the original company.

Article 20 Where the patent is incorporated into the standard published by national, industrial or local standard making organization upon the consent of the patentee and the patent has not been disclosed by the standard, the people’s court may determine that the patentee licenses others to exploit the patent when they exploit such standard except that the patent must be exploited in the form of standard according to law. Where the patentee requests the person who exploits the standard to pay royalties, the people’s court shall determine a reasonable amount of royalties after comprehensively deliberating the innovative degree of the patent and its function in the standard, the technical field which the standard belongs to, the nature of the standard, the scope of carrying out the standard and other factors except that the patentee promises to waive royalties.

Where the standard discloses the patent and its condition for license of exploitation and others fail to exploit such patent according to the disclosed condition, it shall be supported by the people’s court in case the party concerned claims that the patent should be exploited according to the disclosed condition for license of exploitation. Where the disclosed condition for license of exploitation is obviously unreasonable, the people’s court may make proper adjustment at the request of the party concerned. Where condition for license of exploitation is undisclosed or the disclosed condition for license of exploitation is unclear, the parties concerned may seek for a settlement through consultation. If failed, they may apply to the people’s court for determination.

In the event that the patent in the standard of exploitation is otherwise provided in laws and administrative regulations, such provisions shall prevail.

Article 21 When the people’s court determines the "the gains which the infringer has acquired from the infringement" according to Article 65.1 of the Patent Law, it shall be restricted to the profits of the infringer acquired from the infringement upon the patent right itself. Where the gains of the infringer are resulted from other factors collectively, the gains resulted from such other factors shall be excluded from the gains obtained from the infringement.

Where the product which infringes upon the patent right for an invention or utility model is a component of another product, the people’s court shall determine a reasonable amount of compensation according to the value of the component itself, its function in achieving the profit of the finished product and other factors. Where the component is a key part to achieve the technical function or effect of the finished product and the value of the finished product is mainly embodied by such component, the people’s court may calculate the amount of compensation in accordance with the profits of the finished product.

Where the product infringing upon the patent right for design is a package, the people’s court shall determine a reasonable amount of compensation according to the value of the package itself, its function in making the profit of the product which is packaged and other factors. Where the design of the package is the main factor that attracts average consumers to buy such product and the package is inseparable from the product when it is sold, the people’s court may calculate the amount of compensation according to the profits of the product which is packaged.

Article 22 When trying a dispute case concerning royalties during the temporary protection period of an invention prescribed in Article 13 of the Patent Law, the people’s court may make reference to legal provisions about patent infringement.

When the people’s court judges whether the accused infringer exploits the invention during the temporary protection period, the narrower scope of protection of the patent right shall prevail in the event that the scopes of protection of the patent right at the date of the publication of the application for patent and at the date of the announcement of granting the patent right are inconsistent.

Article 23 Where the patentee issues a warning to others for infringing the patent right and he or it neither withdraws the warning nor files a lawsuit within one month upon the written reminder notice is received in which the person warned or the interested party urges in writing the patentee to perform the right of action, the people’s court shall accept the case in the event that the person warned or the interested party apply to the people’s court to determine his act does not infringe upon the patent right.

Article 24 Where the product or the technical solution of the product is unknown to the public in the country or abroad before the date of filing an application for patent, such product shall be determined by the people’s court as a "new product" prescribed in Article 61.1 of the Patent Law.

Article 25 Where the act which is alleged for infringement upon the patent right occurs before October 1, 2009, the Patent Law before revision shall be applied; in the event that such act occurs after October 1, 2009, the revised Patent Law shall be applied.