This is part of a series that show what the 18 judicial interpretations on IP look like after their 2020 amendments that make them Civil Code-ready. See the first of the series here and the amendment on the other patent law judicial interpretation here.
Below is the amendment to the Supreme People’s Court’s Interpretation on Several Issues Concerning the Application of Law in the Trial of Patent Infringement Cases (2). See the old version of the Judicial Interpretation on the site of CCPIT here and the amendment on the site of Justra here (hat tip to Susan Finder). You can find the changes in the introduction and Articles 2, 6 and 21.
Please note that bold is an addition and a strike-out is, indeed, a removal.
SPC’s Interpretation on Several Issues Concerning the Application of Law in the Trial of Patent Infringement Cases (2)
In order to correctly hear patent infringement disputes, it is based on the Civil Code of the PRC, Patent Law of the PRC, Civil Procedure Law of the PRC and other relevant legal provisions, combined with trial practice.
Article 1
Where the claims of a patent contain two or more claims, the right holder shall specify in the complaint the claims based on which the accused infringer is being sued for patent infringement. Where such claims are not specified or not clearly stated in the complaint, the people’s court shall require the right holder to specify the claims; where the right holder refuses to do so upon requirement of the people’s court, the latter may rule to dismiss the lawsuit.
Article 2
Where the claims of a patent on the basis of which the right holder asserted patent infringement in a lawsuit are declared invalid by the Patent Administration Department of the State Council Patent Re-examination Board, the people’s court trying the patent infringement dispute may render a ruling to dismiss the lawsuit filed by the right holder on the basis of the invalid claims.
The right holder may file a lawsuit separately if there is evidence showing that the decision to declare the claims invalid is revoked by a binding administrative judgment.
If the patentee files a lawsuit separately, the period for limitation of action shall be calculated from the date of service of the administrative judgment mentioned in Paragraph 2 of this Article.
Article 3
Where, as a result of obvious violation of paragraph 3 or paragraph 4 of Article 26 the Patent Law, the description cannot be used to explain the claims, which does not fall within the circumstances specified in Article 4 hereof and based on which a request is made for declaring the patent invalid, the people’s court trying the patent infringement dispute shall in general rule to suspend the lawsuit; if the patent is not announced invalid within a reasonable period of time, the people’s court may determine the protection scope according to the claims.
Article 4
In spite that the claims, description or its accompanied drawings are ambiguous to a person of ordinary skill in the art in terms of grammars, wordings, punctuations, graphics, symbols, etc., where said person of ordinary skill in the art can clearly arrive at only one unique understanding by reading the claims, description and drawings, the people’s court shall make determination according to said unique understanding.
Article 5
When a people’s court determines the protection scope of a patent, the technical features defined in the preamble and the characterizing portions of an independent claim, and the technical features defined in the reference and the characterizing portions of a dependent claim shall all be considered.
Article 6
The people’s court may construe the claims of the patent concerned by referring to another patent that has a “divisional application” relation with the patent concerned, the file wrappers of said another patent and any binding judgments/rulings in relation to its allowability or validity.
Said file wrappers include the written materials submitted by applicants or patentees during the process of patent examination, re-examination and invalidation, as well as office actions, meeting minutes, oral hearing records, binding patent re-examination decisions, patent invalidation decisions etc. issued by the patent administrative department of the State Council or the Patent Reexamination Board.
Article 7
As regards a close-ended claim for a composition, if an accused technical solution contains technical features in addition to all the technical features of the claim, the people’s court shall determine that the accused technical solution does not fall within the protection scope of the patent, except that the additional technical features are unavoidable impurities in normal quantity.
Said close-ended claim for a composition referred to in the preceding paragraph shall generally not include the claim of a traditional Chinese medicine composition.
Article 8
A functional feature is a technical feature defining the structure, composition, step, condition or their relations by its function or effect in the relevant invention-creation, unless a person of ordinary skill in the art is able to directly and clearly determine the specific embodiment for achieving such function or effect by reading purely the claim.
Where, as compared to the technical feature in the description and its accompanied drawings essential for achieving aforesaid function or effect, the corresponding technical feature of the accused technical solution performs the same function by substantially the same way to achieve the same result, and can be contemplated without creative work by a person of ordinary skill in the art at the time of the accused infringement, the people’s court shall determine that such corresponding technical feature is identical with or equivalent to the functional feature.
Article 9
Where the accused technical solution cannot be applied to the use environment defined by the use environment features of a claim, the people’s court shall determine that the accused technical solution does not fall within the protection scope of the patent.
Article 10
Where the manufacturing process of the accused product is neither identical with nor equivalent to the manufacturing process recited in a claim that includes said manufacturing process to define certain technical features of the relevant product, the people’s court shall determine that the accused technical solution does not fall within the protection scope of the patent.
Article 11
Where the sequence of technical steps is not specified in a process claim but a person of ordinary skill in the art can directly and clearly learn that such technical steps shall be exploited according to specific sequence upon reading the claims, description and drawings, the people’s court shall decide that such sequence of steps is a limitation to the protection scope of the patent.
Article 12
Where phrases such as “at least” or “not more than” are used in a claim to define numerical features, and a person of ordinary skill in the art can learn that the patented technical solution places special emphasis on the roles of such phrases to limit the respective technical features, upon reading the claims, description and drawings, the people’s court shall not side with the right holder if the later alleges that the technical features different from the numerical features are equivalent features.
Article 13
Where the right holder proves that any amendments or statements made by the patent applicant or the patentee to limit the claims, description or drawings during the patent prosecution or patent invalidation proceedings are definitely denied, the people’s court shall determine that said amendments or statements do not lead to waiver of a technical solution.
Article 14
When determining the level of knowledge and discriminability of an ordinary consumer to a design, the people’s court shall normally consider the design space of the products in the same or similar category as the patented design at the time of infringement. Where the design space is relatively large, the people’s court may determine that it is usually unlikely for an ordinary consumer to notice the minor differences between the compared designs; where the design space is relatively small, the people’s court may determine that it is usually more likely for an ordinary consumer to notice the minor differences between two compared designs.
Article 15
For a patent for designs of products in set, where the accused design is identical with or similar to one of the designs, the people’s court shall determine that the accused design falls within the protection scope of the patent.
Article 16
For a patent for design of a component product with a unique assembly relation among the individual components, where the accused design is identical with or similar to the design of the component product in its assembled sate, the people’s court shall determine that the accused design falls within the protection scope of the patent.
For a patent for design of a component product with no assembly relation or with no unique assembly relation among the individual components, where the accused design is identical with or similar to the designs of all the individual components of the component product, the people’s court shall determine that the accused design falls within the protection scope of the patent; where the accused design lacks the design of one individual component of the component product or is neither identical with nor similar to the design of one individual component, the people’s court shall determine that the accused design doesn’t fall within the protection scope of the patent.
Article 17
For a patent for design of a product with variant states, where the accused design is identical with or similar to the design in all its use states as shown in the relevant views, the people’s court shall determine that the accused design falls within the protection scope of the patent; where the accused design lacks the design in one of its use states or is neither identical with nor similar to the design in one of its use states, the people’s court shall determine that the accused design doesn’t fall within the protection scope of the patent.
Article 18
Where a right holder files a lawsuit to request an entity or individual to pay appropriate fees for exploiting its, his or her invention during the period from the date of publication of the invention patent application to the date of announcement of grant of the invention patent in accordance with Article 13 Patent Law, the people’s court may determine the fees reasonably by referring to relevant royalties of the patent.
Where the protection scope claimed by the applicant upon the publication of the invention patent application is inconsistent with the protection scope of the patent upon the announcement of grant of the invention patent, and the accused technical solution falls within both of the foregoing two protection scopes, the people’s court shall determine that the defendant exploited the relevant invention during the period stated in the preceding paragraph; where the accused technical solution falls within only one of the two protection scopes, the people’s court shall determine that the defendant didn’t exploit the invention during the period stated in the preceding paragraph.
Where a party, without consent of the patentee and for the business purposes, uses, offers to sell, or sells the products that were manufactured, sold or imported by another party during the period stated in Paragraph 1 of this Article after the date of announcement of grant of the invention patent, and such another party has paid or promised in writing to pay appropriate fees prescribed in Article 13 Patent Law, the people’s court shall not side with the right holder asserting that the aforesaid act of use, offer to sell and sell has infringed the patent.
Article 19
Where a sales contract of products is concluded in accordance with laws, the people’s court shall determine that the sale as prescribed by Article 11 Patent Law have been constituted.
Article 20
As regards the re-processing or re-treatment of a follow-up product obtained from the further processing or treatment of a product directly obtained from a patented process, the people’s court shall determine that such re-processing or re-treatment does not belong to “use of a product directly obtained according to the patented process” as prescribed in Article 11 Patent Law.
Article 21
Where a party, knowing that certain products are the materials, equipment, parts and components or intermediate items, etc. specifically for the exploitation of a patent, without consent of the patentee and for business purposes, provides such products to another party committing patent infringement, the people’s court shall side with the right holder claiming that the party’s provision of such products is an act of contributory infringement as prescribed by Article 9 of the Tort Liability Law Article 1169 Civil Code.
Where a party, knowing that a product or process has been granted patent, without consent of the patentee and for business purposes, induces positively another party to commit patent infringement, the people’s court shall side with the right holder claiming that the inducement of the party is an act of inducing another party to commit infringement as prescribed by Article 9 of the Tort Liability Law Article 1169 Civil Code.
[Mark Cohen of China IPR posted an unofficial translation of the general provisions part of the Civil Code, see here. Article 1169 Civil Code: A person who aids or abets an actor in the commission of a tortious act shall assume joint and several liability with the actor.
A person who aids or abets an actor with no or limited capacity for performing performing civil juristic acts in the commission of a tortious act shall assume tort liability. The guardian of the actor with no or limited capacity for performing civil juristic acts shall assume corresponding liability where he fails to fulfill the duties of a guardian.]
Article 22
Where an accused infringer defends on the basis of prior arts or prior designs, the people’s court shall define the prior arts or prior designs pursuant to the Patent Law effective on the filing date of the patent.
Article 23
Where the accused technical solution or design falls within the protection scope of the asserted prior patent, the people’s court shall not side with the accused infringer defending that its technical solution or design has been granted patent and thus does not infringe the asserted patent.
Article 24
Where a recommended national, industrial or local standard clearly indicates the essential patent-related information, the people’s court shall in general not side with the accused infringer defending that the exploitation of such standard does not need consent of the patentee and thus does not infringe the patent.
Where a recommended national, industrial or local standard clearly indicates the essential patent-related information and the patentee intentionally violates the obligation for licensing on fair, reasonable and non-discriminatory terms as committed in formulating the standard in consultation with the accused infringer on the conditions for the exploitation and licensing of such patent, resulting in failure to conclude a patent licensing contract, the people’s court shall, in general, not side with the right holder claiming stopping the exploitation of the standard by the accused infringer, if the accused infringer has no obvious fault in the consultation.
The conditions for the exploitation and licensing of a patent as mentioned in Paragraph 2 of this Article shall be determined upon consultation by the patentee and the accused infringer. Where no agreement is reached upon careful consultation, the parties may request the people’s court to determine such conditions, in which case the people’s court shall, on fair, reasonable and non-discriminatory terms, take into comprehensive consideration the degree of innovation of the patent, the role of the patent in the standard, the technical field to which the standard belongs, the nature and scope of application of the standard, the relevant licensing conditions and other factors to determine such exploitation and licensing conditions.
The provisions on the exploitation of a patent involved in a standard as otherwise prescribed by laws and administrative regulations shall prevail.
Article 25
Where a party, using, offering to sell, or selling patent-infringing products for business purposes without the knowledge that such products are manufactured and sold without consent of the patentee, proffers evidence showing the legitimate sources of such products, the people’s court shall side with the right holder claiming that the aforesaid using, offering to sell, or selling shall be stopped, except that the user of the accused products proffers evidence to prove that it has paid reasonable quid pro quo for such products.
For the purpose of Paragraph 1 of this Article, “without the knowledge” shall mean the circumstance where a party has no actual knowledge and ought not to have knowledge.
For the purpose of Paragraph 1 of this Article, “legitimate sources” shall mean acquire products through regular business methods such as lawful sales channels or usual sale and purchase contracts. The party who engages in use, offering to sell or selling shall proffer relevant evidence consistent with trading habits to prove said legitimate sources.
Article 26
Where the defendant is found to commit patent infringement, the people’s court shall side with the right holder claiming that the defendant shall be ordered to stop infringement; however, the people’s court may, instead of ordering the defendant to stop the accused act, order the defendant to pay reasonable fees in consideration of the interests of the state or the public interest.
Article 27
Where it is difficult to determine the actual loss suffered by a right holder, the people’s court shall require the right holder to proffer evidence to prove the gains obtained by the infringer from the infringement in accordance with Paragraph 1 of Article 65 Patent Law. Where the right holder has proffered the prima facie evidence in relation to the gains obtained by the infringer but the account books and materials related to the acts of patent infringement are mainly under the control of the infringer, the people’s court may order the infringer to submit such account books and materials; where the infringer refuses to provide such account books and materials without justification or submits false account books and materials, the people’s court may determine the gains obtained by the infringer from the infringement based on the claims of the right holder and the evidence proffered thereby.
Article 28
Where a right holder and the infringer have legally agreed on the amount of damages for patent infringement or the methods for calculating the amount of damages, and one of them claims during a patent infringement lawsuit that the amount of damages shall be determined in accordance with such an agreement, the people’s court shall uphold such a claim.
Article 29
Where a party legally applies for retrial based on a decision declaring the patent invalid to request for vocation of the judgment or mediation statement on patent infringement that is rendered by the people’s court before the patent is declared invalid but is not enforced, the people’s court may render a ruling to suspend the examination in retrial and suspend the enforcement of the original judgment or mediation statement.
If the patentee provides sufficient and effective guarantee to the people’s court to request that the enforcement of the judgment or mediation statement mentioned in the preceding paragraph be continued, the people’s court shall continue the enforcement; if the infringer provides sufficient and effective counter-guarantee to the people’s court to request that the enforcement be suspended, the people’s court shall approve such request. Where the decision declaring the patent invalid is not revoked by a binding ruling/judgment of the people’s court, the patentee shall make compensation for the loss suffered by the other party concerned due to the continuation of the enforcement; where the decision declaring the patent invalid is revoked by a binding ruling/judgment of the people’s court, the people’s court may directly enforce the property under the above counter-guarantee based on the judgment or mediation statement mentioned in the preceding paragraph provided that the patent is still valid.
Article 30
If a lawsuit is not filed against a decision declaring the patent invalid with the people’s court within the statutory time limit or the decision is not revoked by a binding ruling/judgment made after filing of a lawsuit, the people’s court shall conduct retrial if one party legally applies for retrial based on such decision requesting that the judgment or mediation statement on patent infringement that has been rendered before the announcement of the invalidity of the patent and is not yet enforced be revoked. If the party, based on such decision, legally applies for termination of the enforcement of 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, the people’s court shall rule to terminate the enforcement.
Article 31
This Interpretation is implemented as of 1 April 2016. In case the relevant judicial interpretations previously published by the SPC are not consistent with this interpretation, this interpretation shall prevail.