On 10 September 2020, China’s Supreme Court announced the “Provisions (I) of the Supreme People's Court on Several Issues concerning the Application of Law in the Trial of Administrative Cases Involving the Grant and Confirmation of Patents” (hereinafter referred to as “Judicial Interpretation”) which took effect on 12 September 2020.  The major content of the Judicial Interpretation is as follows: 

 

Prior to the announcement of the Judicial Interpretation, invitations were extended to the general public for comments and suggestions.  On 1 June 2018, a draft Judicial Interpretation was published to collect comments from the general public, followed by a further invitation made on 28 April 2020 for comments by the public.  After considering the comments collected, the Supreme Court announced the Judicial Interpretation.   

 

 

The Judicial Interpretation includes 32 articles directed to the following subject matters:  

 

1.     The definition of patent grant and patent confirmation (Article 1) 

 

2.     Interpretation of claims for invention and utility model patent cases (Articles 2-4)

 

3.     Criteria for determining whether the specification disclosure is sufficient for invention and utility model patent cases (Articles 5-6)

 

4.     Criteria for determining whether the claim(s) is (are) definite for invention and utility model patent cases (Article 7) 

 

5.     Criteria for determining whether the claims(s) can be supported by the specification disclosure for invention and utility model patent cases(Article 8) 

 

6.     Definition of technical features defined by function or effect as well as the criteria for determining the disclosure sufficiency (Article 9)

 

7.     Criteria for determining whether post-filing submission of testing data is legitimate (Articles 10-11)

 

8.     Determination of the technical field for invention and utility model patent cases (Article 12) 

 

9.     Determination of the technical problem resolved by the invention(s) covered in claims for invention and utility model patent cases (Article 13) 

 

10.  Determination of patentability and patent validity for design patent cases (Articles 14-22) 

 

11.  Determination as to whether the statutory procedural requirements are complied with (Article 23) 

 

12.  Categories of judgments issued by People’s Court (Articles 24-27) 

 

13.  Burden of proof as to “common knowledge” or “customary design” (Article 28) 

 

14.  Definition of new evidence and the admissibility thereof (Articles 29-31) 

 

15.  Application of the Judicial Interpretation and date of implementation (Article 32) 

 

This article will focus on the major impacts regulated in the Judicial Interpretation that concern "invention patent cases and utility model patent cases."

According to the China Patent Law, examination of patent applications, patent grant and patent invalidation actions are handled by the China National Intellectual Property Administration (CNIPA).  The CNIPA is under the State Council, which is an administrative agency.  Based on the principle that an administrative decision shall become irrevocable through the judicial appeal review, as stated in the China Patent Law, a concerned party who is not satisfied with a decision issued by the CNIPA may file an administrative suit with the People’s Court (hereinafter referred to as "court"), naming the CNIPA as the defendant.   The above-mentioned suits normally include (1) suits against the reexamination decisions issued by the CNIPA (“Reexamination Decisions”), which are defined as “patent grant administrative suits,” and (2) suits against decisions issued by the CNIPA for patent invalidation actions (”Decisions on Invalidation Actions”), which are defined as “patent confirmation administrative suits” in the Judicial Interpretation.

 

Articles 2-4 set forth the following criteria:

 

1.     the subject body – the interpretation shall be made by the standards possessed by persons skilled in the arts

 

2.     invention interpretation rules - meaning of the terms and phrases included in the claims shall be interpreted based on the common meanings for persons skilled in the art after reading the claims, specification and drawings.

 

3.     It is necessary to combine internal evidence (such as specifications, drawings, file history, etc.) and external evidence (such as a technical dictionary, technical manual, text book, reference book, national standard or industry standard, etc.) when interpreting the technical terms shown in the claims, and the internal evidence shall prevail (such as where the specification and drawings have provided definitions of the technical terms shown in claims, such definitions shall apply; where the specification and drawings are silent on definitions of the technical terms shown in claims, such definitions shall be determined based on common meanings of these terms with reference to a technical dictionary, technical manual, text book, reference book, national standard or industry standard, etc.). 

 

4.     Criteria for exclusive interpretation of an obvious erroneous disclosure - where there is an obvious error in the specification, claims or drawings in respect of the grammar, digit, punctuation, figure, marking, etc., if there is only one way for interpreting the erroneous disclosure, interpretation of such erroneous disclosure shall follow said exclusive interpretation and the court shall respect such interpretation.

 

Articles 5-6 of the Judicial Interpretation set forth the criteria for determining whether the disclosure in a specification is sufficient or not. Article 5 of the Judicial Interpretation, for the first time, sets forth the requirement that “Principle of Good Faith” shall be considered when determining whether the specification disclosure of an invention patent case or a utility model patent case is sufficient to disclose the technical solutions covered in the claims, whether the patent application will be granted or denied, whether the validity of the granted patent will be confirmed or revoked, etc.  If a patent applicant violates the “Principle of Good Faith” and if the applicant makes a false or misleading disclosure in its patent specification and/or drawings, a concerned party may, based on the above fact, challenge the patentability of the patent application or the validity of patent, and the court shall admit and support such challenge.  

 

Article 6 of the Judicial Interrelation further defines the below-listed situations under any of which the specification disclosure shall be considered as insufficient:

 

1.    where the claimed technical solution cannot be practiced;

2.    where the claimed technical solution cannot resolve the specific technical problem intended to be resolved by the claimed invention or claimed utility model;

3.    where determining that the technical problem can be resolved by the claimed technical solution needs extraordinary effort.

 

Given the above, at the time when a patent applicant or its patent attorney drafts a patent application with a goal of not disclosing the unnecessary content of the claimed invention or utility model (for example, the patent applicant prefer to use trade secret protection approach to protect certain implementation details of the invention or utility model), the applicant and its patent attorney must be very cautious in evaluation the balance between the choices (disclosure and non-disclosure) so as to avoid the "patent non-sufficient disclosure" risk to be caused to its patent application. 

The Judicial Interpretation sets forth the following conditions under which the claims would be considered as indefinite in scope: (1) where the claimed subject matter is not definite, (2) where it is not possible to identify the meaning of the technical features stated in claims,or (3) where there exists conflict between/among the technical features, for which there is no justified explanation. 

 

According to the Judicial Interpretation, when determining whether the claim(s) can be supported by the specification disclosure, consideration shall be made based on whether, at the time of patent filing, persons skilled in the art can conceive or reasonably deduce the claimed technical solution after reading the specification and drawings.  If not, the claims shall be considered not supported by the specification disclosure.   Also, determination of the "support by specification" shall be made based on the filing date of the concerned invention patent application or utility model patent application.

 

According to Article 9 of the Judicial Interpretation, the so-called “ technical features defined by functions or effects” refers to the technical features as being the structure, composition, steps, conditions, etc. or the inter-relationship between/among the technical features, which are only limited by the functions or effects created in the invention or utility model.  However, the following exception shall apply: “where persons skilled in the art may, through reading the claims, directly and precisely identify the implementation method achieving said function or effect.”

 

Also, according to Artie 9 of the Judicial Interpretation, if the claims, specification and drawings do not disclose any concrete method for achieving said function or effect as stated above, it shall be considered “insufficient disclosure.”  

 

  

In the past, there existed no precise standard as to whether testing data submitted after patent filing should be taken into consideration in the substantive examination of the patent application. The CNIPA amended the Patent Examination Guidelines on 28 February 2017, which took effect on 1 April 2017.  Prior to the amendment, Point (2) of Section 3.4, Chapter 10, Part II of the Guidelines stipulated that embodiments and experimental data submitted after the date of filing shall not be taken into consideration. In the amended Guidelines, "embodiments and experimental data submitted after the date of filing shall not be taken into consideration" was changed to "the examiner shall examine experimental data submitted after the date of filing. The technical effects proved by the supplementary experimental data shall be determinable by a person skilled in the art according to the disclosure of the application documents originally filed." Accordingly, in response to the "insufficient-disclosure objection" raised during the prosecution of a patent application, an applicant, besides making a defense or further defining claims, may submit relevant supplementary experimental data after the date of filing according to the provision in the amended Guidelines.

 

The Judicial Interpretation further sets forth the following standards: 

 

1.     Where an applicant of a pharmaceutical-related patent application submits supplementary testing data after patent filing, and claims that the data submission meets the requirements set forth in Article 22(3) and Article 26(3) and other related provisions of the China Patent Law, such submitted data shall be considered by court.   

 

2.     Where the concerned party (parties) raises objection against the authenticity of the testing data submitted after patent filing, the party submitting the data shall bear the burden of proving the source of the data and the process of generating the data.  The court may notify the person in charge of the testing to appear before the court to provide an explanation as to the testing materials, testing steps, testing conditions, testing environment and parameters, information on persons carrying out the testing, etc.   

 

 

Article 12 of the Judicial Interpretation sets forth the criteria for determining the "specific technical field of a claimed invention or a claimed utility model." That is, when determining the technical field of an invention patent case or a utility model patent case, consideration shall be made as to, the entire claims including the title(s) of the claimed subject matter(s), the description as to the technical field and the technology background information stated in the specification, the content of the functions and usage achieved by the claimed technical solution(s).  Determination of the technical field of a patent case is critical, because it may relate to a fair determination with respect to the novelty and inventiveness of the claimed invention. Article 12 of the Judicial Interpretation may certainly help to avoid the risk caused to an erroneous or improper determination of the technical field of an invention patent case or a utility model patent case

According to Article 13 of the Judicial Interpretation, the following shall be adhered to when determining the technical problem resolved by the invention(s) covered in claims: 

 

1.     Where the specification and drawings do not clearly disclose “the technical effect achieved by the distinguishing technical feature(s) in the claimed technical solution,” the court may, based on common knowledge of the persons skilled in the art and taking into consideration the relationship between the distinguishing technical feature(s) and other technical features stated in the claims, identify the functions of the distinguishing technical feature(s)in the claimed technical solution and further determine the technical problem to be actually resolved by the claimed solution, which can be identified by persons skilled in the art.

 

2.     Where, in a decision against which n administrative suit is filed, the technical problem actually resolved is not determined or is erroneously determined, the court may investigate and determine the inventiveness of the claimed invention.   

 

The point stated in Item 2 above bears positive meaning to patent applicants and patentees. In the past, some patent examiners have tended to adopt a more conservative attitude when determining the technical problem actually resolved by the claimed invention, which may lead to decisions asserting that the distinguishing technical features are conventional and the claimed inventions do not meet the inventiveness requirement, or lead to incorrect understanding regarding the technical problems involved.  The Judicial Interpretation now provides a clear means of identifying the technical problems resolved by the technical solution(s) as stated in an invention patent case or a utility model patent case.   

 

 

According to the Judicial Interpretation, where any of the following are found in the CNIPA’s handling procedure for a reexamination case or for an invalidation action, it shall be deemed that the handling procedure violates the statutory procedure requirement set forth in Article 70(3) of the Law of Administrative Suit Proceedings: 

 

1.     where the reason(s) or evidence presented by a concerned party is ignored, which may lead to substantive impact on the rights and interests of said party. 

 

2.     where the CNIPA fails to notify the applicant, patentee or invalidation petitioner who should attend the trial, which may lead to substantive impact on the rights and interests of said party. 

 

3.     where the CNIPA fails to notify the parties of the members of the collegiate tribunal, and there exists a legitimate requirement for the judge to disqualify a member of the collegiate tribunal, but he/she does not exercise said requirement.   

 

4.     where the party receiving an unfavorable decision was not given opportunities to present opinions against the reasons, evidence and findings in support of said decision. 

 

5.     where common knowledge or customary designs are voluntarily brought into the case but are not argued by a concerned party, and where the party’s opinion was not heard, which may lead to substantive impact on the rights and interests of said party. 

 

6.     where there is any other violation of the statutory procedural requirement, which may lead to substantive impact on the rights and interests of a concerned party. 

 

Articles 24-27 of the Judicial Interpretation set forth methods of issuing judgments by courts regarding suits for patent grant and patent confirmation, including partial revocation judgments, revocation judgments of different natures of suits, dismissing suits, etc.

 

Where a party to a suit claims that the content of technology belongs to common knowledge, the court may ask said party to produce evidence or present an explanation.

 

 

The so-called “new evidence” refers to evidence that is not presented or not adopted at the previous reexamination procedure or the previous invalidation procedure, and that is presented in the patent grant administration suit or the patent confirmation administrative suit.  According to the Judicial Interpretation, the court shall normally take into consideration new evidence presented by a patent applicant or a patentee to support the patentability or validity of its patent case.   Where new evidence is presented by an invalidation petitioner at an administrative suit to negate the validity of a granted patent, the court shall not consider said evidence except for the following: 

 

1.     where the new evidence is to prove the common knowledge already argued at an earlier patent invalidation procedure. 

 

2.     where the new evidence is to prove the knowledge level of persons skilled in the art and their ability of understanding. 

 

3.     where the new evidence is to supplement the proof as to the authenticity or competence of the evidence that was admitted in an earlier patent invalidation action. 

 

4.     where the new evidence is to rebut the evidence submitted by the other party or other parties in the suit. 

 

 

The Judicial Interpretation took effect on 12 September 2020 and shall govern the first-instance and the second-instance suits (including pending suits).  But the Judicial Interpretation shall not apply to suits for which effective judgments have been issued prior to 12 September 2020.   

 

The enactment and implementation of the Judicial Interrelation provides important examination principles for handling patent grant and patent confirmation administrative suits.  The Judicial Interrelation also points out the importance for drafting patents to meet the pertinent disclosure requirements.  The high-quality patent drafting will allow patent applicants to get the best assurance in the procedure of patent filing and patent examination, reexamination, patent invalidation and administrative suits.   

 

The enactment and implementation of the Judicial Interrelation may facilitate harmonization in respect of patent-related decisions and judgments between the administrative agency and courts, which can help avoid or reduce inconsistency in handling patent grant and patent confirmation matters between administrative agencies and courts.  Patent applicants are recommended to closely monitor the implementation of the Judicial Interrelation and incorporate the important highlights into their patent landscaping and acquisition strategies, both offensively and defensively.