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For implementing the new Chinese Patent Law that will take effect on 1 October 2009, on 18 June 2009, the Chinese Supreme Court released the Draft Judicial Interpretation Regarding Handling Patent Infringement Cases (the "Interpretation") to seek opinion from the general public. The draft Interpretation, consisting of 25 articles, is the first of its kind with respect to patent infringement since patent system was introduced to China. Once formally adopted, the Interpretation is widely expected to herald more predictability in terms of the judicial practice in China. The gist of the draft Interpretation is summarized below:
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The court should verify the scope of patent right in accordance with Paragraph 1 Article 59 of the Patent Law based on the claimant's statement of the claim asserted. Where the claimant alters or amends the asserted claim before the end of the debate at the first instance of court proceeding, the court should accept such alternation or amendment. |
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Where the asserted claim is held invalid before issuance of a judgment by the court of the first in-stance and the patent at issue remains valid on the basis of another claim, the court should allow the claimant to seek protection based on such another claim. Where the declaration of patent invalidity occurs after issuance of the first instance judgment but prior to that of the second instance judgment and where the claimant seeks protection based on a claim not asserted in the first instance court proceeding, the court of the second instance may, based on the free will of the parties concerned, proceed with mediations. If the mediation fails, the court should advise the claimant to file another suit. As to the claim already asserted by the claimant, for which the court of the first instance did not issue any judgment, the court of the second instance may, based on the free will of the parties con-cerned, proceed with mediation. If the mediation fails, the court should remand the case back to the court of the first instance, except where the claim for which a judgment was not issued does not affect the finding of patent infringement.
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Where a claimant asserts patent protection based on a dependent claim, the court should determine the patent scope based on the additional technical features covered in the dependent claim as well as the technical features of the claim on which the dependent claim hinges.
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When determining the protection scope of an invention or a utility model patent, the court should refer to the content of the claim as comprehended by technical persons with ordinary skills in the art after reading the specification and drawings. Where the content of the claim so comprehended is different from the literal meaning of the claim, the former should prevail. |
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The protection scope of patent right must comply with the purpose of the patented invention, and may not include any technical solution that seeks to overcome defects or shortages in existing technology.
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When determining the scope of a patent claim, the court may refer to the relevant disclosure in the specification, drawings, other claims and the patent file history; where the specification contains a definition of any term, phrase or language used in the claim, such defined term, phrase or language should govern. If the meaning of the term, phrase or language used in the claim still cannot be ascertained based on the above principle, 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 same art.
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The so-called "protection scope of an invention or a utility model patent" as prescribed in Article 59 of the Patent Law refers to the scope of technical features as defined by a claim. Where a claimant asserts that the scope of patent protection should cover the scope of equivalent technical features as defined by a claim, the court should determine the protection scope based on the "equivalent technical features," which means those features, as compares with the technical features actually disclosed
in the claim, that may achieve the same effects and perform the same functions in the same manners, and that, at the time of patent infringement, can be conceived by technical persons with ordinary skills in the same art without any innovative activity.
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Where the technical features of a claim are expressed based on specific functions or effects, the court should determine the content of the technical features based on the concrete implementation methods as disclosed in the specification and drawings as well as their equivalent implementation methods.
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For a technical solution that is disclosed in the specification or drawings, but is not disclosed in the claim, the court should not accept the assertion that patent protection should cover the technical solution.
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Where a patent applicant or a patentee has made a restrictive amendment or a restrictive response with respect to a claim, the court should not accept the assertion that the patent claim should cover the technical solution already abandoned.
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When determining whether or not an accused technical solution falls within the scope of a patent right, any technical feature disclosed in the claim should not be overlooked.
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Where the accused technical solution contains features that are the same as or equivalent to all those disclosed in the claim, the court should hold that the accused technical solution falls in the scope of patent right. Where the technical solution does not cover one or more technical features as claimed, or contains one or more feature that is not same as or equivalent to the corresponding one as claimed, the court should hold that the accused technical solution does not fall in the patent scope.
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When determining the protection scope of a design patent as prescribed in Paragraph 2, Article 59 of the Patent Law, the court should refer to designs that are same or similar to the claimed design, which are applied to products under the categories same as or similar to the product category of the design patent.
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Where the product category is same or similar but the accused design is neither same as nor similar to the patented design, or where the accused design is same as or similar to the patented design but the product category is neither same or similar, the court should hold that the accused design does not fall in the scope of design patent.
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The so-called "products under the same category" refers to products with the same functions, and the so-called "products under a similar category" refers to products with similar functions.
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When determining the function of product, the court may refer to international design category list and the brief description in which the product name and function are stated, and further consider factors related to the sale of product, actual use of product, etc.
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When determining whether two or more designs are same as or similar to each other, the court should make a decision based on the knowledge level and recognition ability of the general public relevant to the new design product.
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The so-called "general public" 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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When determining whether two or more designs are the same or similar to each others, the court should refer to the overall visual effects of the designs and consider the entire design features of the patented design. However, a design feature that is exclusively used to serve the technical function of a product, the materials of a product or the internal structure of a product etc., which would not cause impacts to the overall visual effects, should not be considered.
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Where an accused design and a patented design may cause confusion to the relevant general public in their overall visual effects, the court should hold that the accused design is similar to the patented design. Where an accused design does not contain the design feature of the patented design, it should be deemed that the accused design and the patented design do not cause confusion to the relevant general public in their overall visual effects.
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The so-called "design feature" refers to the feature that, as compared with the existing designs, can create obvious visual effects to the relevant general public. The court may refer to the brief description when determining the design feature.
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In the case of assembling products under patent protection, the court should hold that it constitutes "manufacture" as prescribed in Articles 11 & 69 of the Patent Law. However, the above does not apply to products which are normally sold to others as "components of one set" and which are normally assembled by sellers or users.
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Where a specific packaging material under deign patent protection is retrieved for use in packaging the same or similar products, the court should deem such act as "manufacture".
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The court should deem the use of an infringing product infringing an invention or a utility model patent as a part/component to manufacture another product as "use" as prescribed in Articles 11 and 69 of the Patent Law; the act of selling the other product thus produced should be deemed as "sale" as prescribed in Articles 11 and 69 of the Patent Law.
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Where using a product infringing an invention or a utility model patent as a part/component of another product so as to manufacture and sell another product, the court should deem that such act as "sale" under Articles 11 and 69 of the Patent Law.
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In the event as prescribed in any of the preceding two paragraphs and where the accused infringers have cooperation with each other, the court should deem the act as "manufacture". Where the accused infringer fails to supply the information regarding the legal source of the accused products or where the information provided by the accused infringer with respect to the legal product source is untrue, the court should presume that the act constitutes "manufacture."
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An original product manufactured by a patented method should be deemed as "product manufactured by a direct use of a patented method" as prescribed in Articles 11 and 69 of the Patent Law.
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An act of further processing or disposing of an original product so as to obtain a subsequent product should be deemed as "product manufactured by a direct use of a patented method" as prescribed in Article 11 of the Patent Law.
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Where one knows that the concerned product can only be used as raw materials, a interim-product, a part/component, equipment etc. in practicing an invention or a utility model patent and still supplies the product to a third party to commit patent infringement acts, the court should uphold the civil liability claim against such person and the third party. Where the third party's practice is not for purposes of production or business operation, the court should uphold the civil liability claim against the first person.
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Where an accused infringer in an invention or utility model patent infringement case raises prior technology defense, if all the technical features of the accused technology that fall within the scope of the patent claim are same as or equivalent to the technical features of existing technology, the court should accept the defense.
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Where, in a design patent infringement case, the accused infringer raises prior technology defense and the patented design in dispute is same as or similar to a design applied to an existing product, the court should, pursuant to Article 62 of the Patent Law, accept the defense.
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Where an accused infringer raises a non-infringement defense based on a conflicting patent application that has been published, the court may refer to the same principle mentioned above.
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Where, in a design patent infringement case, the accused infringer raises prior technology defense and where the patented design in dispute is same as or similar to one design applied to an existing product, the court should, pursuant to Article 62 of the Patent Law, accept the accused infringer's defense that it has submitted evidence proving that the technology used thereby belongs to existing technology.
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Where an accused infringer raises a non-infringement defense based on a conflicting patent application that has been published, the court should refer to the same principle mentioned above.
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Where an accused infringer raises a defense of prior user right based on a technology or a design illegally obtained, the court should not accept such defense.
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In either of the following events, the court should deem that "the manufacture is done or the necessary preparation is 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 the invention or creation are completed; and
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where the major equipments or tools needed for practicing the invention or creation are produced or purchased.
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The so-called "original scale" as prescribed in Subparagraph 2, Article 69 of the Patent Law includes the manufacture scale already existing, as well as the scale achievable based on the existing manu-facturing equipment or based on the original production plan, at the time of patent filing.
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Where a party claiming prior user right assigns, after patent filing, to another party or allows another party to use the already practiced technology or design, for which the necessary preparation is done, and where the party argues that such assigned or allowed practice is within the original scope of practice, the court should not accept such allegation. However, the above does not apply if the concerned technology and design has been transferred or inherited together with the original business enterprise.
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Where, with consent from a patent owner, the patent concerned has been included into the standards announced by the state, business industry or district standard formulating organization and where the standard does not disclose the patent, the court may deem that the patentee has agreed to others' practice of the patent at the time when they implement the standard concerned. The above does not apply provided that the patent concerned must be practiced only in the format of implementation of standard. Where the patentee asks persons implementing the standard to pay license fees, the court should reasonably determine the amount of license fees based on the inventiveness level of the patent, its function in the standard, the technical field to which the standard pertains, the nature of the standard, and the implementation scope of the standard. The above does not apply if the patent owner agrees to give up the licensee fees.
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Where the standard discloses the patent concerned and its license terms and where other parties do not practice the patent based on the disclosed terms and the parties concerned alleges that the practice shall follow the disclosed license terms, the court should accept such allegation. Where the disclosed license terms are obviously unreasonable and the parties concerned this make a claim, the court may make appropriate adjustment. Where there is no license term disclosed or the disclosed licensed terms are not precise, the parties concerned may resolve it by negotiations; if the negotiations are unsuccessful, they may ask the court to make a decision.
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If there is any law or administrative regulation that applies to patent practice due to implementation of standard, such law or regulation should govern.
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When determining the "profit earned by an infringer due to infringement", the court should follow Paragraph 1, Article 65 of the Patent Law and limit such profit to that earned by the infringer because of the patent infringement itself. Where any profit is earned by the infringer for any other reason, such profit should be excluded from the "profit earned by an infringer due to infringement."
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Where an accused infringing product is a part/component of another product, the court should reasonably determine the damage award based on the factors such as the value of the part/component, the function of such part/component in the profit creation of the final product, etc. If the part/component is a key part/component that creates the technical function or effects of the final product and if the value of the final product is mainly created by the part/component, the court may determine the damage award based on the profit of the final product.
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Where the product involved in a design patent infringement case is a packing article, the court should reasonably determine the damage awards based on the factors such as the value of the packaging article, the function of the packaging article in creating the value of the product packed thereby, etc. Where the design of the packing article is a major factor to attract the general consumers to purchase the product so packed, and where the packing article cannot be separated from the product packed when the product is sold, the court may determine the damage awards based on the profit of the product packed.
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When handling a dispute related to the license fee that is payable based on the provisional protection of an invention patent as prescribed in Article 13 of the Patent Law, the court may refer to law provisions applying to patent infringement disputes.
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When determining whether an accused infringer has practiced the invention during the period for provisional protection, if the protection scope of claim on record at the time when the invention patent application concerned is laid open is different from the scope of claim granted and published, the court should follow the claim of which the scope is narrower.
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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 request the rightful party in writing to enforce the patent right, but the rightful party neither withdraw the warning notice nor file a formal suit within one month as of the date of receiving the request, and if the party receiving the warning notice or an interested party files a suit with the court to confirm non-infringement, the court should accept such a suit.
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Where a product or the technical solution used in a product is not publicly known anywhere in the world prior to the filing date of the patent, the court should deem such product as "new product" prescribed in Paragraph 1, Article 61 of the Patent Law.
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We will closely watch the development of the Interpretation and keep our readers informed.
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