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On 21 December 2009, the Supreme Court in the PRC (China) announced the Judicial Interpretation Concerning Handling of Patent Infringement Cases, which took effect as of 1 January 2010. From the viewpoint of patent protection, this Judicial Interpretation is of significant meanings. This Judicial Interpretation is the first one that has been even announced by the Supreme Court since 1985 (the year to implement the Patent Law), which relates to substantive issues of patent infringement cases.
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As of 1885, People's Courts in China has accumulated experience for more than 20 years in handling patent litigation cases. In 2001, the Supreme Court released guidelines regarding handling patent infringement cases in an attempt to standardize the criterion adopted in handling infringement cases. The above-mentioned guidelines also played an important role with respect to China's entry into WTO. However, the Judicial Interpretation(s) is silent on substantive issues in patent infringement cases. In March 2003, the Supreme Court initiated investigations and researches regarding "criterion for patent infringement assessment" and later proposed a draft Judicial Interpretation (totally 70 provisions). This effort led to responses from the public; however, the 2003 draft Judicial Interpretation was not continued.
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On 5 June 2008, the State Counsel announced Outline of State Intellectual Property Strategies, and decided to implement the same, under which timely promulgation of Judicial Interpretations and judicial policies, establishment of intellectual property litigation systems have become the important missions of the state. On 27 December 2009, the People's Congress passed the amendment of the Patent Law and the amended Patent Law took effect on 1 October 2009. Partial content of the 2003 draft Judicial Interpretation has also been introduced into the newly amended Patent Law.
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To ensure the implementation of Outline of State Intellectual Property Strategies and the proper handling of patent infringement disputes, as of January 2009, the Supreme Court re-started its drafting of the concerned patent judicial interpretation and, on 21 December 2009, promulgated the Judicial Interpretation Concerning Handling of Patent Infringement Cases which covers 20 Articles. The content of the Interpretation is as follows:
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People's Court shall, based on the claim(s) asserted by a rightful party, determine the scope of patent right in accordance with Paragraph 1, Article 59 of the Patent Law. Where the above-mentioned party alters the asserted claim(s) before the end of the debate at the first instance of court proceeding, such alternation shall be accepted by the People's Court. Where a rightful party asserts patent protection based on dependent claim(s), the People's Court shall determine the patent scope based on the additional technical features covered in the said dependent claim(s) as well as the technical features of the independent claim(s) on which the depend claim(s) depend.
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When determining the scope of claim(s) as stated in Paragraph 1, Article 59 of the Patent Law, People's Court shall refer to the content of the claim(s) as well as the comprehension of the said claim(s) by technical persons with ordinary skills in the art on the basis of their reading of the specification and drawings.
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When determining the scope of a patent claim, a People's Court may rely on the specification, drawings, the relevant claim(s) and the patent file history; where the specification contain a specific definition of any term, phrase or language used in the said claim, such specifically defined term, phrase or language shall govern. If, the meaning of the term, phrase or language used in the claim cannot be ascertained based on the manner stated above, interpretation of claim can be made with reference to reference books, text books and other public literatures, as well as the meaning normally comprehended by technical persons with ordinary skills in the art.
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Where a technical feature of a claim is expressed by specific function or effect, the People's Court shall determine the content of the said technical feature by considering the concrete implementation method(s) with respect to the said function(s) or effect(s) as disclosed in the specification and drawings, as well as the equivalent implementation method(s).
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Where a technical solution that is disclosed in the specification or drawings, but is not disclosed in claim(s), the People's Court shall not accept an assertion by a rightful party of a patent infringement case that the scope of the asserted patent right covers the above-mentioned technical solution.
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Where a patent applicant or a patentee has given up a technical solution through an amendment of the claim(s) and/or specification of the patent concerned or through filing any response during the patent prosecution procedure or a patent invalidation procedure, the People's Court shall not accept an assertion by a rightful party in an infringement case that the patent claim should cover the technical solution(s) already abandoned.
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When determining whether or not an accused technical solution falls within the scope of a patent right, the People's Court shall examine the entire technical feature disclosed in the claim(s). Where the accused technical solution contains features that are the same as or equivalent to all the features disclosed in the claim(s), the People's Court shall deem that the accused technical solution falls in the protection scope of the patent right. Where, as compared with the technical features disclosed in the claim(s), an accused technical solution does not cover one or more technical features as claimed, or the accused solution contains one or more feature that is not same as or not equivalent to the corresponding one as claimed, the People's Court shall deem that the accused technical solution does not fall within the patent scope.
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Where a design same as or similar to a design under patent protection is applied to an article that is same as or similar to the article involved in the design patent, the People's Court shall deem that the accused design has fallen into the scope of the design patent.
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When determining whether the articles under design patent protection concerned are the same articles or similar articles, the People's Court shall refer to the usage of the article of the design patent. When determining the usage of the said article, the People's Court shall refer to the brief description of the design patent, international design classification, function of the article, factors related to the sale and actual use of the article, etc.
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When judging whether two or more designs are the same or similar to each other, the People's Court shall take into consideration the degree of knowledge and recognition by the general consumers of the article under design protection.
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When determining whether two or more designs are same as or similar to each other, the design features of the patented design, the overall visual effect of the concerned designs shall be judged based on judgment based on the features of the patented design and those of the design used by an alleged infringer. Design feature(s) concluded due to the technical function(s), as well as the materials used in the article concerned which does not have any effect on the overall visual effect shall not be considered. Under any of the following conditions, it shall be deemed that the overall visual effect of a design is of more significance:
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Where, as compared with other portions, a specific portion of the design is much easier to be observed when the article containing the design is under normal use condition; and
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Where, as compared with other feature(s) of the design patent, the specific feature(s) of the design patent is distinctive from the features of existing designs.
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If there is no difference with respect to the overall visual effect between a patented design and an alleged infringing design, the People's Court shall deem that such two designs are the same. If there is no substantive difference between the two designs as stated above, such two designs shall be deemed similar to each other. The so-called "general public" mentioned in the preceding Paragraph refers to those who have understanding of general knowledge and who are able to distinguish the differences between/among the shape, patterns and/or colors used in different designs but normally do not pay attention to very minor differences between/among the shape, patterns and/or colors.
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Where a person uses an article protected by an invention patent or a utility model patent as a part or component to manufacture another product, the People's Court shall deem such act as "act of using" as prescribed in Articles 11 of the Patent Law. Where a person sells such the product as stated above, the People's Court shall deem such act as "act of selling" as prescribed in Articles 11 of the Patent Law. Where a person uses an article protected by a design patent as a part or component to manufacture another product and sell the said product, the People's Court shall deem such act as "act of selling as prescribed in Articles 11 of the Patent Law. However, the above shall not apply if the article infringing on the design patent merely contains technical function. With respect to each of the situations stated in the preceding two paragraphs, the Peoples' Court shall deem the act concerned as joint infringement if the accused infringers have co-worked with each other.
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An original article manufactured by a patented method shall be deemed by the People's Court as "an article manufactured by a direct use of a patented method" as prescribed in Article 11 of the Patent Law. Where a person further processes or disposes the original article as stated above, which lead to a subsequent product, the People's Court shall deem such act as "using the article directly obtained by a patented method" as prescribed in Article 11 of the Patent Law.
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Where the entire features of the technology accused for patent infringement are same as or substantially same as the corresponding features of an existing technology, the People's Court shall deem that the technology used by the alleged infringer belongs to the "exiting technology" as prescribed in Article 62 of the Patent Law. Where an accused design is same as or substantially same as an existing design, the People's Court shall deem that the design used by the alleged infringer belongs to the "exiting design" as prescribed in Article 62 of the Patent Law.
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Where an alleged infringer raise prior user right defense based on technology or design which is obtained illegally, the People's Court shall not accept such defense. In any of the following events, the People's Court shall deem that "the manufacture has been done or the necessary preparation has been done" as prescribed in Subparagraph 2, Article 69 of the Patent Law:
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where the major technical drawings or workmanship files needed for practicing an invention or a creation have been completed; and
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where the major equipments or tools needed for practicing am invention or a creation have been produced or purchased;
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The so-called "original scale" as prescribed in Item 2, Article 69 of the Patent Law refers to the manufacture scale already existing, as well as the scale achievable based on the existing manufacturing equipments or based on the original production plan prior to patent filing. Where, after patent filing, a party claiming prior user right assigns to another party or allows another party to use the technology or design which has been practiced or to use the technology or design of which the necessary manufacture preparation has been completed, and where an accused infringer argues that the such assigned or allowed practice belongs to the original scope of practice, the People's Court shall not accept such assertion. However, the above shall not apply provided that the concerned technology and design has been transferred or inherited together with the original business enterprise.
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When determining the "profit earned by an infringer due to infringement" in accordance with Paragraph 1, Article 65 of the Patent Law, such profit shall be limited to that earned by the infringer because of the patent infringement itself. Where profit is earned by the infringer due to other rights, such profit shall be properly excluded. Where an article accused of infringing an invention patent or a utility model patent is a part/component of another article, the People's Court shall decide a properly damage award based on factors such as the value of such part/component itself, the function of such part/component in realizing the profit of the final article etc. Where an article accused of infringing a design patent is a packing article, the People's Court shall decide a proper damage award based on factors such as the value of such packaging article itself, the function of such packaging article in creating the value of the product packed thereby, etc.
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Where an article or a technical solution regarding the manufacture of an article has become know to the general public anywhere in the world prior to the filing date of a patent case concerned, the People's Court shall deem that such article does not belong to that stated in Paragraph 1, Article 61 of the Patent Law.
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After a rightful party issues to another person a warning notice concerning patent infringement, if the warned party or an interested party send a written request to the rightful party asking his/her to enforce the patent right, but the rightful party neither withdraw the warning notice nor file a suit within one month as of the date of receiving the request, The People's Court shall accept a suit filed by the party receiving the warning notice or the interested party to confirm non-existence of patent infringement.
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For an act of patent infringement that occurs prior to 1 October 2009, the Patent Law prior to amendment shall govern. For an act of patent infringement that occurs after 1 October 2009, the amended Patent Law shall govern. For an act of patent infringement that occurs prior to 1 October 2009 and continues to exist on or after October 2009, if the alleged infringer is liable for damage compensation under either the Patent law prior to amendment or the amended Patent Law, the People's Court shall determine the damage award based on the amended Patent Law.
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Where there is discrepancy between the provisions of the Judicial Interpretations previously issued and the provisions of this Judicial Interpretation, this Judicial Interpretation shall govern.
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