Translated by: G·IPRs (Michael Ni, Katherine, Shanghai Runhe Law Firm, Version: R1.0, January 15, 2010 )

(Judicial Interpretation No. 21 [2009] )

(Adopted at the 1480th Meeting of the Judicial Committee of the Supreme People’s Court on December 21, 2009)

Announcement of the Supreme People’s Court of the People’s Republic of China

The Interpretation of the Supreme People's Court on Certain Issues Concerning the Application of Law in the Trial of Patent Infringement Cases, which was adopted at the 1480th Meeting of the Judicial Committee of the Supreme People’s Court on December 21, 2009, is hereby promulgated and shall come into force as of January 1, 2010.

　　For the purpose of properly trying patent infringement cases, this Interpretation is formulated in accordance with 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, and in combination with trial practices.

 　　Article 1 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 asserted by the right holder. It shall be approved by the people’s court where the right holder modifies the claims asserted by him before the close of the court debate during the first instance.

 　　In the event that the right holder 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 additional technical features of such dependent claims and technical features of the claims referred to.

 　　Article 2 The people’s court shall determine the contents of claims provided by Article 59.1 of the Patent Law in accordance with the description of the claims understood by a normal technician skilled in the art after reading the specification and the drawings.

 　　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 claims. Where the diction of the claims is specially defined in the specification, such special definitions shall prevail.

 　　In case the meaning of the claims cannot be clarified by the above-mentioned methods, it may be interpreted in combination of reference books, text books, etc. and other public literatures and the common understanding of a normal technician skilled in the art.

 　　Article 4 Where the technical features of the claims are described by function or effect, the people’s court shall determine the contents of such technical features in combination of the specific implementation method and its equivalent implementation method of such function or effect described by the specifications and drawings.

 　　Article 5 With respect to the technical solution which is only described in the specifications or drawings rather than recorded in the claims and where such technical solution is included in the scope of protection of the patent right by the right holders in a patent infringement case, the people's court shall not support it.

 　　Article 6 Where the patent applicant or the patentee includes a technical solution, which is abandoned by him in the procedure of patent granting or invalidation through amendments of claims or specifications or through a statement, in the scope of protection of the patent right in a patent infringement case, the people's court shall not support it.

 　　Article 7 All technical features described in the claims asserted by the right holder shall be examined when the people’s court determines whether the alleged infringing technical solution falls into the scope of protection of the patent right.

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

 　　Article 8 Where the design identical or similar to the patented design is applied to the products belonging to the same or approximate classes with the products incorporating the design patent, the people’s court shall determine that the alleged infringing design falls into the scope of protection of the patent right for design stipulated in Article 59.2 of the Patent Law.

 　　Article 9 The people’s court shall determine whether the types of products are the same or approximate in accordance with the use of design products. When determining the use of products, the people’s court may refer to the brief description of the design, the International Classification for Design, the functions of the products, the sale and and actual use of the products and other factors.

 　　Article 10 When the people’s court determines whether the designs are identical or similar, it shall be based on the knowledge and cognitive capability of a common consumer as to the product incorporating the design patent.

 　　Article 11 When determining whether the designs are identical or similar, the people’s court shall draw an integrative conclusion according to the design features of the patented design and the alleged infringing design and the overall visual effect of the design; and as to the design features which are mainly determined by the technical functions and the material, internal structure and other features of the product which have no effect on the overall visual effect, the people’s court shall not consider them.

 　　In the following circumstances, the overall visual effect of the design is generally more affected:

 　　(a) the part of a product which can be directly and easily seen in the normal use of the product in relation to other parts; or

 　　(b) the design features of the patented design which are distinct from those of the existing design in relation to other design features of the patented design.

 　　Where there is no difference in the overall visual effect between the alleged infringing design and the patented design, the people’s court shall determine that the two designs are identical; and where there is no material difference in the overall visual effect, the people’s court shall determine that the two designs are similar.

 　　Article 12 Where the product infringing the patent right for an invention or utility model is used as a component to produce another product, the people’s court shall determine it as the act of use prescribed in Article 11 of the Patent Law; and where such another product is sold, the people’s court shall determine it as the act of selling prescribed in Article 11 of the Patent Law.

 　　Where the product infringing the patented design is used as a component to produce and sell another product, the people's court shall determine it as the act of selling stipulated in Article 11 of the Patent Law, except otherwise the product infringing the design patent only has technical functions in such another product.

 　　With respect to the circumstances prescribed in the preceding two paragraphs, if the alleged infringers cooperate with each other with the division of work, the people’s court shall determine it as a joint infringement.

 　　Article 13 Where the original product acquired by using a patented method, the people’s court shall determine it as the product directly acquired according to the patented method prescribed by Article 11 of the Patent Law.

 　　With respect to the act of acquiring a subsequent product by further processing or treatment of the above original product, the people's court shall determine it as the use of the product directly acquired in the patented method provided by Article 11 of the Patent Law.

 　　Article 14 Where all the technical features which are alleged to fall into the scope of protection of the patent right are identical or with no material difference to the corresponding technical features of an existing technical solution, the people's court shall determine the technology implemented by the alleged infringer as an existing technology provided by Article 62 of the Patent Law.

 　　Where the alleged infringing design is identical or with no material difference to an existing design, the people’s court shall determine the design implemented by the alleged infringer as an existing design prescribed in Article 62 of the Patent Law.

 　　Article 15 Where the alleged infringer invokes a defense of the right of prior use of the illegally acquired technology or design, the people’s court shall not support it.

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

 　　(1) main technical drawings or process documents essential for carrying out an invention creation have been finished; or

 　　(2) main equipments or raw materials essential for carrying out an invention creation have been manufactured or purchased.

 　　The original scope stipulated in Article 69(2) of the Patent Law shall include the existing scale of production before the date of filing an application for patent and the achievable scale of production by using the existing production equipment or according to the existing preparation of production.

 　　Where the owner of the right of prior use transfers to another person the technology or design which he has implemented or for the implementation of which he has made necessary preparation or licenses another person to implement the same after the date of filing an application for patent, if the alleged infringer claims that such an act of implementation is an act of the continued implementation within the original scope, the people’s court shall not support it except that such technology or design is transferred or succeeded along with the original enterprise.

 　　Article 16 When the people’s court determines the benefits which the infringer has acquired from the infringement according to Article 65.1 of the Patent Law, such benefits shall be restricted to those acquired by the infringer from the infringement upon the patent right; and the benefits arising from other rights shall be reasonably deducted.

 　　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 profits from the finished product and other factors.

 　　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 achieving the profits of the packaged product and other factors.

 　　Article 17 Where the product or the technical solution for manufacturing the product is known to the public in the country or abroad before the date of filing an application for patent, the people’s court shall determine that such a product is not a new product prescribed in Article 61.1 of the Patent Law.

 　　Article 18 Where the right holder makes a warning of patent infringement to another person and the person warned or the person of interest reminds in writing the right holder to exercise his right to sue, the right holder neither withdraws the warning nor launches a lawsuit within one month upon the receipt of the written reminder or within two months upon the issuance of the written reminder, and the person warned or the person of interest files a lawsuit to the people's court to request a confirmation of his act as non-infringing, the people's court shall accept the case.

 　　Article 19 Where the alleged patent infringement occurred before October 1, 2009, the people's court shall apply the Patent Law before amendment; or where it occurs after October 1, 2009, the people's court shall apply the amended Patent Law.

 　　Where the alleged patent infringement occurred before October 1, 2009 and lasts to the day after October 1, 2009, and the infringer shall bear the liability of compensation under both the Patent Law before amendment and the amended Patent Law, the people's court shall apply the amended Patent Law to determine the amount of compensation.

 　　Article 20 For any discrepancy between relevant judicial interpretations previously issued by this Court and this Interpretation, this Interpretation shall prevail.