Analyses (II) of the Supreme Individuals Court on A number of Issues Concerning the Application of Law in the Trial of Cases Including Patent Violation Disputes
Adopted at the 1676th Session of the Trial Committee of the Supreme People’s Court on January 25, 2016 and efficient as of April 1, 2016.
With a view to ensuring the right trial of cases including patent infringement conflicts, these Interpretations are created pursuant to the provisions of the Patent Law of individuals Republic of China, the Tort Liability Law of individuals Republic of China, and the Civil Procedure Law of the People’s Republic of China and other pertinent laws and due to judicial practices.
Post 1 where a written claim of rights contains 2 or more rights, the best holder worried will specify in the grievance the rights based upon which the alleged infringer is being sued for patent infringement. Where such rights are not specified or not clearly stated in the problem, the qualified people’s court shall require the best holder to define the rights worried; and, where the right holder still cannot do so after pertinent scenarios have been discussed thereto, the skilled people’s court might rule to dismiss the claim.
Article 2 where the right declared by an ideal holder in a patent infringement claim is proclaimed void by the Patent Re-examination Board, the people’s court attempting the case involving the patent violation disputes may render a ruling to dismiss the suit filed by the ideal holder on the basis of the invalid claim of right.
The ideal holder might file a claim independently if there is evidence proving that the choice to state the above claim of right void is revoked by a binding management judgment.
If the patentee submits a claim separately, the duration for constraint of action shall be determined from the date of service of the administrative judgment mentioned in Paragraph 2 of this Article.
Post 3 Where, as a result of evident infraction of Paragraph 3 or Paragraph 4 of Article 26 the Patent Law, written descriptions cannot be used to explain the claims of rights, which does not fall within the circumstances specified in Article 4 hereof and based on which demand is made for proclaiming the patent void, the skilled individuals court trying the case including the patent right disagreement will in basic guideline to suspend the claim; if no demand is applied for proclaiming the patent void within a reasonable period of time, individuals court might figure out the scope of patent protection according to the composed claim of rights.
Short article 4 Where regular technical workers in the appropriate field can plainly get to just one distinct understanding by checking out composed claims of rights, written descriptions and attached drawings in spite of ambiguity in terms of grammar, wording, punctuations, graphics, symbols, etc. in the written claims of rights, written descriptions and the connected drawings, the qualified individuals court shall make determination according to such special understanding.
Short article 5 when an individual’s court figures out the scope of patent protection, the technical features as described in the preamble and the identifying part of the independent claims, and in the reference area and the restrictions of the reliant claims shall all be specifying.
Article 6 The skilled individuals court might use another patent which belongs to the patent involved in the case in respect of divisional application, and its patent examination files and binding judgments/rulings on patent licensing affirmation to translate the rights declared for the patent involved in the case.
Patent assessment files shall consist of the written materials submitted by patent candidates or patentees throughout the process of patent evaluation, re-examination and declaration of invalidity, in addition to the notifications on assessment opinions, satisfying minutes, oral hearing records, binding composed examination decisions on patent re-examination requests, composed evaluation choices on the requests for declaring patents invalid, etc. provided by the patent management department of the State Council and its Patent Re-examination Board.
Short article 7 As relates to an exhausted claim of rights for a combination, if a supposed infringing technical solution contains added technical functions on the basis of all the technical functions in the claim of rights, the competent individuals court shall figure out that the alleged infringing technical solution does not fall under the scope of patent protection, unless the added technical features are unavoidable impurities in regular amounts.
A tired claim of rights for a combination referred to the preceding paragraph will usually not consist of the claim of rights for traditional Chinese medicine composition.
Short article 8 Functional features are technical features that just serve to specify structures, compositions, actions, conditions or the relations thereof according to their functions or impacts in the relevant innovation, unless regular technical workers in this field are able to directly and clearly determine the particular exploitation approaches for accomplishing such functions or results by reading the claim of rights alone.
Where, as compared to the technical functions that are taped in the composed descriptions and the connected drawings and are vital for accomplishing the aforesaid functions or impacts, the matching technical functions of a supposed infringing technical option adopt significantly the same means to accomplish significantly the exact same functions and results, and can be contemplated without imaginative work by normal technical personnel in the appropriate field at the time of the event of the supposed violation, the competent individuals court will determine that such corresponding technical features are identical or equivalent to the practical functions.
Article 9 where an alleged infringing technical solution cannot be used to the use environment specified by the use environment includes included in the claim of rights, the competent individual’s court shall identify that the declared infringing technical option does not fall under the scope of patent security.
Short article 10 where the prep work approaches for a supposed infringing product are neither similar nor comparable to the technical functions in the claim of rights that use prep work techniques to define the pertinent product, the qualified individual’s court shall determine that the appropriate alleged infringing technical solution does not fall under the scope of patent security.
Short article 11 Where the sequence of technical steps is not specified in the claim of rights for a trademarked technique however normal technical personnel in the appropriate field are straight and plainly of the viewpoint that such technical steps will be made use of according to certain sequence after reading the written claims of rights, the composed descriptions and the connected drawings, the qualified people’s court will choose that such series of actions has the role of defining the protection scope of the patent right.
Short article 12 Where phrases such as “at least” or “not more than” are embraced in a claim of rights to specify mathematical features, and ordinary technical workers in the appropriate field believe that the trademarked technical solution worried locations unique emphasis on the role of such phrase to define technical features after checking out the claim of rights, written descriptions and attached illustrations, the competent people’s court shall not uphold the claim by the best holder that technical features different from such mathematical functions are comparable functions.
Short article 13 Where the right holder shows that the narrowed revision or statement made by the patent candidate or the patentee in respect of the claims of rights, written descriptions and connected drawings in the patent licensing affirmation procedure is negated, the skilled individual’s court shall figure out that such modification or statement has not resulted in the waiver of the technical solution.
Short article 14 When determining ordinary customers’ level of understanding and cognitive ability as regards a design, an individual’s court will think about the design space of the type of the items to which the appropriate trademarked design equals or similar at the time of the occurrence of the alleged infringement. Where the design space is fairly large, individual’s court might identify that ordinary customers are normally unlikely to discover the minor differences in between different designs; where the design space is fairly little, individual’s court might figure out that ordinary consumers are typically most likely to notice the small differences in between various designs.
Short article 15 where a supposed infringing design is identical or much like one of the trademarked designs of a complete set of items, the competent people’s court shall determine that the supposed infringing design falls under the scope of patent protection.
Article 16 as concerns the design patent of an element product with a special assembly pattern, if an alleged infringing design is identical or just like the total design of the component product after assembly, the qualified people’s court will determine that the alleged infringing design falls under the scope of patent protection.
As relates to the design patent of a component product whose different parts have no assembly pattern at all or do not have a distinct assembly pattern, if a supposed infringing design equals or just like the designs of all the specific parts of the element product, the competent people’s court shall figure out that the alleged infringing design falls under the scope of patent defense; and, if the alleged infringing design does not have the design of a specific individual component or is neither identical nor similar to the design of a specific individual element, the competent people’s court will identify that the supposed infringing design does not fall under the scope of patent defense.
Post 17 As concerns the design patent of a product in active variations, if an alleged infringing design equals or just like the designs of all the different use states illustrated in the diagram of variations, the skilled individual’s court will identify that the alleged infringing design falls under the scope of patent security; if the supposed infringing design lacks the design of a particular use state or is neither similar nor much like the design of a certain use state, the proficient individual’s court shall determine that the supposed infringing design does not fall under the scope of patent defense.
Article 18 Where an ideal holder submits a suit to ask for an entity or individual to pay suitable charges for exploiting the relevant invention throughout the duration from the date of announcement of the development patent application to the date of announcement of the grant of the creation patent in accordance with Article 13 of the Patent Law, the competent individual’s court may make determination on sensible basis by referring to pertinent patent royalties.
Where the scope of security asked for by the candidate upon the statement of the development patent application is irregular with the scope of patent defense upon the announcement of the grant of the innovation patent, and an alleged infringing technical option falls under both of the foregoing two defense scopes, the proficient individual’s court shall figure out that the accused has exploited the pertinent development throughout the duration stated in the preceding paragraph; and, where the alleged infringing technical solution falls under only one of the 2 protection scopes, the skilled people’s court will determine that the accused has actually not made use of the innovation during the duration mentioned in the preceding paragraph.
Where a celebration, without the licensing from the patentee and for the purposes of production and business operation, uses, markets of, or offers the products that have been made, offered or imported by another party throughout the period mentioned in Paragraph 1 of this Article after the date of statement of the grant of the creation patent and such another celebration has actually paid or guaranteed in composing to pay appropriate costs recommended in Article 13 of the Patent Law, the skilled people’s court will not maintain the claim by the best holder that the aforementioned use, market and sale has infringed the patent right.
Article 19 where a product sales contract is established in accordance with the law, the competent individual’s court will identify that the sales as recommended by Article 11 of the Patent Law have been constituted.
Article 20 As relates to the re-processing or re-treatment of a follow-up product acquired from the further processing or treatment of a product directly obtained according to patented methods, a people’s court shall identify that such re-processing or re-treatment does not belong to the situations of the “use of a product directly gotten according to trademarked techniques” as recommended under Article 11 of the Patent Law.
Article 21 Where a celebration has clear knowledge that certain items are the products, equipment, parts and elements, intermediate products, etc. particularly for the exploitation of a patent, but still offers, without the licensing from the relevant patentee and for the function of production and business operation, such items to another party committing the patent violation, the proficient people’s court will maintain the claim by the ideal holder that the party’s provision of such products is an act of help for infringement as recommended by Article 9 of the Tort Liability Law.
Where a celebration has clear understanding that specific items or techniques have been granted patent, and yet still actively induces, without the licensing from the pertinent patentee and for the function of production and company operation, another party committing the patent violation, the proficient individual’s court will maintain the claim by the right holder that the inducing act of the party is an act of abetting another celebration to commit infringement as prescribed by Article 9 of the Tort Liability Law.
Short article 22 where an alleged infringer raises the defense based upon one existing innovation or existing design, the competent people’s court shall specify the existing technology or existing design pursuant to the Patent Law dominating on the date of patent application.
Post 23 Where the alleged infringing technical option or design falls within the protection scope of the prior patent right associated with the case, the competent individual’s court will not maintain the defense made by the alleged infringer that its technical solution or design has actually been granted patent and therefore does not infringe the patent right involved in the case.
Short article 24 Where the recommended nationwide, commercial or local standards clearly indicate the essential patent-related info, the skilled individual’s court will in basic not promote the defense made by the supposed infringer that the exploitation of such standards do not need the licensing from the patentee and thus does not infringe such patent right.
Where the recommended nationwide, commercial or local requirements plainly show the needed patent-related info and the patentee deliberately acts versus the commitment for licensing on fair, affordable and non-discriminatory terms as dedicated in formulating the requirements in consultation with the alleged infringer on the conditions for the exploitation and licensing of such patent, resulting in the failure to conclude the patent licensing agreement, the qualified people’s court shall, in basic, not promote the claim by the ideal holder for cessation of the exploitation of the standards, provided that the alleged infringer has no apparent fault in the assessment.
The conditions for the exploitation and licensing of a patent as pointed out in Paragraph 2 of this Article shall be identified upon consultation by the pertinent patentee and the alleged infringer. Where no consensus is reached upon adequate assessment, the parties concerned may ask for the competent people’s court to determine such conditions, where case the people’s court shall, on fair, reasonable and non-discriminatory terms, take into comprehensive consideration the degree of development of the patent, the function of the patent in pertinent standards, the technical field to which the requirements belong, the nature and scope of application of the standards, pertinent licensing conditions and other elements to identify such exploitation and licensing conditions.
The arrangements on the exploitation of patents associated with standards as otherwise recommended by laws and management regulations will prevail.
Post 25 Where a party utilizes, offers for sale of, or offers, patent-infringing items for the function of production and business operation without the understanding that such products are produced and offered without the licensing from the relevant patentee, and has the ability to prove the genuine sources of such items, the skilled people’s court will uphold the demand of the right holder that the aforementioned use, market, or sale be stopped, unless the user of the alleged infringing products furnishes proof to show that it has actually paid affordable consideration for such products.
For the function of Paragraph 1 of this Article, “without the understanding” shall mean the condition where a party has no real competency and ought not to have understanding.
For the purpose of Paragraph 1 of this Article, “legitimate sources” shall imply using genuine company approaches such as lawful sales channels and normal sale and purchase agreements to get products. The celebration who engages in use, market or sale shall offer pertinent evidence constant with company standards to prove genuine sources.
Post 26 Where the accused is discovered to commit the patent infringement, the skilled individual’s court shall support the demand of the ideal holder that the defendant be purchased to stop the violation; however, individual’s court may, instead of purchasing the accused to stop the act versus which the lawsuit is submitted, purchase the accused to pay reasonable fees as suitable based on the consideration of the interests of the State and the public interest.
Short article 27 where it is hard to figure out the real loss suffered by a best holder, the skilled people’s court will require the best holder to furnish evidence to prove the gains acquired by the infringer from the infringement in accordance with Paragraph 1 of Article 65 of the Patent Law. Where an ideal holder has provided the prima facie evidence showing the gains acquired by the infringer but the account books and materials related to the acts of patent violation are primarily controlled by the infringer, the competent individual’s court may order the infringer to submit such account books and products; where the infringer chooses not to provide such account books and products without reason or offers false account books and materials, the proficient individual’s court may figure out the gains obtained by the infringer from the violation based upon the claims of the right holder and the proof supplied thereby.
Short article 28 Where an ideal holder and the relevant infringer have actually legitimately settled on the quantity of payment for patent violation or the techniques for computing the quantity of compensation and claim throughout the patent violation lawsuit that the amount of compensation shall be determined in accordance with such arrangement, individual’s court will promote such claim.
Post 29 Where the celebration concerned legally makes an application for retrial based on the decision on proclaiming the patent invalid to demand for the cancellation of the judgment or mediation statement on patent violation that is rendered by the people’s court before the patent is proclaimed void however is not imposed, individual’s court may render a ruling to suspend the evaluation in retrial and suspend the enforcement of the initial judgment or mediation statement.
If the patentee offers the enough and reliable warranty to individual’s court to demand that the enforcement of the judgment or mediation statement discussed in the preceding paragraph be continued, the people’s court will approve such demand; if the infringer supplies adequate and efficient counter-guarantee to the people’s court to request that the enforcement be suspended, individual’s court will authorize such request. Where the decision stating the patent invalid is not revoked by the binding ruling/judgment of the people’s court, the patentee will make payment for the loss suffered by the other celebration concerned due to the continuation of the enforcement of such decision; where the choice proclaiming the patent void is revoked by the binding ruling/judgment of individual’s court, individual’s court might straight impose the property under the above counter-guarantee based on the judgment or mediation statement discussed in the preceding paragraph provided that the patent is still legitimate.
Article 30 If a suit is not filed versus a decision proclaiming the patent invalid with the skilled people’s court within the statutory time limit or the decision is not withdrawer by the binding ruling/judgment made after the filing of the claim, the competent people’s court shall carry out retrial if the party worried lawfully applies for retrial based on such decision asking for that the judgment or mediation statement on patent infringement that has been rendered before the declaration of the invalidity of patent and is not yet enforced be revoked. If the celebration worried, based on such decision, legitimately applies for termination of the enforcement of the judgment or mediation statement on patent infringement that has actually been rendered before the declaration of the invalidity of patent and is not yet implemented, the people’s court shall rule to terminate the enforcement.
Post 31 These Interpretations shall enter impact on April 1, 2016. Where there is any inconsistency in between relevant judicial interpretations promulgated previously by the Supreme People’s Court and these Interpretations, these Interpretations shall dominate.