Interpretation (II) of the Supreme People's Court on Several Issues concerning the Application of Law in the Trial of Patent Infringement Dispute Cases

· Document Number：Interpretation No. 1 [2016] of the Supreme People's Court

· Area of Law： Patent Civil Law

· Level of Authority： Judicial Interpretation

· Date issued：03-21-2016

· Effective Date：04-01-2016

· Status： Effective

· Issuing Authority： Supreme People's Court

Announcement of the Supreme People's Court
The Interpretation (II) of the Supreme People's Court on Several Issues concerning the Application of Law in the Trial of Patent Infringement Dispute Cases, as adopted at the 1676th Meeting of the Judicial Committee of the Supreme People's Court on January 25, 2016, is hereby issued and shall come into force on April 1, 2016.
Supreme People's Court
March 21, 2016
Interpretation (II) of the Supreme People's Court on Several Issues concerning the Application of Law in the Trial of Patent Infringement Dispute Cases
(Adopted at the 1676th Meeting of the Judicial Committee of the Supreme People's Court on January 25, 2016, which shall come into force on April 1, 2016, Interpretation No. 1 [2016] of the Supreme People's Court)
In order to correctly try patent infringement dispute cases, this Interpretation is developed in accordance with the provisions of the Patent Law of the People's Republic of China, the Tort Law of the People's Republic of China, the Civil Procedure Law of the People's Republic of China and other relevant laws, and in light of the judicial practice.
Article 1 Where there are two or more claims in a statement of claims, the patentee shall specify in the written complaint the claims based on which it initiates an action against the alleged infringer for infringement upon its patent right. Where there is no such record or the record is unclear in the written complaint, the people's court shall require the patentee to specify the relevant information. Where, after explanations, the patentee still fails to specify the relevant information, the people's court may rule to dismiss the action.
Article 2 Where the claims of a patentee in a patent infringement action is declared invalid by the Patent Reexamination Board, the people's court that tries the patent infringement dispute case may rule to dismiss the action which is initiated based on such invalid claims.
Where there is evidence proving that the decision of declaring the invalidationof the aforesaid claims is set aside by an effective administrative judgment, the patentee may initiate a separate action.
Where the patentee initiates a separate action, the limitation of action for patent infringement shall be calculated from the date when the written administrative judgment as mentioned in paragraph 2 of this Article is served.
Article 3 Where any patent right is requested to be declared invalid because the specifications cannot be used to interpret the claims due to the evident violation of paragraphs 3 and 4 of Article 26 of the Patent Law, and the case does not fall within the scope of the circumstances as prescribed in Article 4 of this Interpretation, the people's court that tries the patent infringement dispute case shall generally rule to suspend the action; or where the patent right is not requested to be declared invalid during a reasonable period, the people's court may, according to the records in the claims, determine the scope of protection of the patent right.
Article 4 Where any grammars, words, punctuations, graphics or symbols, among others, in the statement of claims, specifications or the attached diagramsare ambiguous, but the ordinary skill in the art can get the unique understanding by reading the statement of claims, specifications or the attached diagrams, the people's court shall make determination according to the unique understanding.
Article 5 When a people's court determines the scope of protection of a patent right, the technical features recorded in the preamble andcharacterization of an independent claim, and thereference or definition of a subordinate claim shallall have the definitive roles.
Article 6 A people's court may interpret the claims of the patent involved in a case by using any other patent which has the divisional application relationship with the patent involved in the case and its patent examination archives or effective patent granting and confirmation judgment documents.
Patent examination archives include the written materials submitted by the patent applicant or patentee in the process of patent examination, reexamination and invalidation, the notice of examination opinions made by the patent administrative department of the State Council and its Patent Reexamination Board, meeting records, oral hearing records, effective written decision on the examination of patent reexamination request, and the written decision on the examination of request for declaring invalidation ofa patent right, among others.
Article 7 Where any alleged infringing technical solution is supplemented with other technical features on the basis of including all technical features of the claims for any enclosed composition, the people's court shall determine the alleged infringing technical solution does not fall within the scope of protection of the patent right, except when the added technical features do not fall within the scope of the conventional quantity ofinevitableimpurities.
The claims for the enclosed composition as mentioned in the preceding paragraph generally exclude the claims for traditional Chinese medicine composition.
Article 8 Functional features means the technical features which define the structures, components, procedures, conditions or the mutual relationship thereof, among others, through their functions or effects in invention and creation, except when the ordinary skill in the art can directly and explicitly determine the specific exploitation mode for achieving the aforesaid functions or effects only by reading the claims.
Where, in comparison with the indispensable technical features for achieving the functions or effects as mentioned in the preceding paragraph as recorded in the specifications and the attached diagrams, the corresponding technical features of the alleged infringing technical solution realizes basically the same functions and achieve basically the same results by basically the same means as the stated technical features, with which an ordinary skill in the art is able to associate without any creative activity when the alleged infringing act occurs, the people's court shall determine the corresponding technical features are identical with or equivalent to the functional features.
Article 9 Where the alleged infringing technical solution cannot apply to the usage environment defined by the usage environment features in the claims, the people' s court shall determine the alleged infringing technical solution does not fall within the scope of protection of the patent right.
Article 10 Where the technical features of any product is defined through preparation method in the claims, and the preparation method for the alleged infringing product is neither identical with nor equivalent to that of the said product, the people's court shall determine the alleged infringing technical solution does not fall within the scope of protection of the patent right.
Article 11 Where the order of the technical steps is not explicitly recorded in the claims for the methods, but the ordinary skill in the art directly and explicitly deem after reading the statement of claims, specifications and the attached diagrams that the technical steps shall be exploited in a specific order, the people's court shall deem the order of such steps has a definitive role in determining the scope of protection of the patent right.
Article 12 Where a claim defines the numeric features with “at a minimum” or “not more than” or any other terms, and the ordinary skills in the art deem after reading the statement of claims, specifications and the attached diagrams that such technical solution specially emphasizes that the definitive role of the term in the technical feature, the patentee's claim that a different numeric feature is an equivalent feature shall not be supported by the people's court.
Article 13 Where a patentee proves that the patent applicant or patentee has explicitly negated any restricted modification to or statement of the statement of claims, specifications and the attached diagrams in the procedure of patent right granting and confirmation, the people's court shall determine such modification or statement does not result in the abandonment of the technical solution.
Article 14 A people's court shall, when determining average consumers' knowledge level and cognitive abilities in terms of the design, generally consider the design space of the products of the same or similar type in terms of the design granted with a patent when the alleged infringing act occurs. Where the design space is large, the people's court may determine that it is generally not easy for an average consumer to notice the minor differences between different designs. Where the design space is small, the people's court may determine that it is generally easier for an average consumer to notice the minor differences between different designs.
Article 15 As for the design patent for a complete set of products, where the alleged infringing design is identical with or similar to a certain design of the complete set of products, the people's court shall determine that the alleged infringing design falls within the scope of protection of the patent right.
Article 16 As for the design patent for an assembled product whose components can be assumed in only one way, where the alleged infringing patent design is identical with or similar to the design of the product under the assembled state, the people's court shall determine that the alleged infringing design falls within the scope of protection of the patent right.
As for the design patent for an assembled product whose components are not assembled or which can be assembled in more than one way, where the alleged infringing design is identical with or similar to the design of all components of the product, the people's court shall determine that the alleged infringing design falls within the scope of protection of the patent right. Where the alleged infringing design is short of the design of a single component of the product or is neither identical with nor similar to it, the people's court shall determine that the alleged infringing design does not fall within the scope of protection of the patent right.
Article 17 As for the design patent for a product of variable states, where the alleged infringing design is identical with or similar to the designs under various usage states as shown in the state variation diagrams, the people's court shall determine the alleged infringing design falls within the scope of protection of the patent right. Where the alleged infringing design is short of or is neither identical with or similar to any design under a certain usage state, the people's court shall determine the alleged infringing design does not fall within the scope of protection of the patent right.
Article 18 Where a patentee, in accordance with Article 13 of the Patent Law, petitions for the payment of appropriate expenses by the entity or individual that exploits an invention during the period from the date of issuance of the application for the patent for the invention to the date of announcement of the patent granting, the people's court may make a reasonable determination by reference to the relevant patent licensing fees.
Where, when an application for the patent for an invention is issued, the scope of protection requested for by the applicant is inconsistent with the scope of protection of the patent right when the granting of the patent for the invention is announced, and the alleged infringing technical solution falls within the aforesaid two scopes, the people's court shall determine that the defendant exploits such invention during the period as mentioned in the preceding paragraph. Where the alleged infringing technical solution falls within any of the aforesaid two scopes, the people's court shall determine that the defendant does not exploit such invention during the period as mentioned in the preceding paragraph.
Where, after the granting of the patent for an invention is announced, the products that have been manufactured, sold or imported by others during the period as mentioned in paragraph 1 of this Article are used, offered for sale, or sold for the purpose of production or business operation without the licensing of the patentee, and such others have paid or made a written commitment to paying the appropriate expenses as prescribed in Article 13 of the Patent Law, the patentee's claim that the aforesaid usage, offering for sale or sale infringes upon the patent right shall not be supported by the people's court.
Article 19 Where a product sale contract is legally binding, the people's court shall determine the product sale in the contract falls within the scope of the sale as prescribed in Article 11 of the Patent Law.
Article 20 Where any subsequent product which is acquired through further processing or treatment of the product acquired directly in accordance with the patent method is reprocessed or retreated, the people's court shall determine the product does not fall within the scope of the “product acquired directly in accordance with the patent method” as prescribed in Article 11 of the Patent Law.
Article 21 Where any party fully aware that the relevant product is exclusively used for the materials, equipment, parts and components or intermediates, among others, that exploits the patent provides such product for any other party for the purpose of production or business operation to implement the act infringing upon the patent right without the approval of the patentee, the patentee's claim that the act of the provider falls within the scope of “assisting others in committing a tort” as prescribed in Article 9 of the Tort Law shall be supported by the people's court.
Where any party fully aware that the relevant product or method is granted with the patent right actively induces any other party to conduct an act infringing upon the patent right for the purpose of production or business operation without the licensing of the patentee, the patentee's claim that the act of the inducer falls within the scope of “instigating others to implement an infringement act” as prescribed in Article 9 of the Tort Law shall be supported by the people's court.
Article 22 For the defenses of prior art and prior design claimed by the alleged patent infringer, the people's court shall determine the prior art or prior design in accordance with the Patent Law implemented on the date of application for the patent.
Article 23 Where the alleged infringing technical solution or design falls within the scope of protection of the prior patent right involved in a case, and the alleged infringer makes a defense that it does not infringe upon the patent right involved in thecase because its technical solution or design is granted with the patent right, the people's court shall not support such a defense.
Article 24 Where any recommended national standard, industrial standard or local standard expressly indicates the information on the essential patent it involves, the alleged infringer makes a defense that it does not infringe upon the patent right because the implementation of such standard does not require the licensing of the patentee, the people's court shall generally not support such a defense.
Where any recommended national standard, industrial standard or local standard expressly indicates the information on the essential patent it involves, and, when the patentee and the alleged infringer conduct negotiation on the licensing conditions for the exploitation of patent, the patentee intentionally violates its commitment to fair, rational and non-discriminatorylicensing obligations in the process of preparation of the standard, which results in the failure to conclude a patent licensing contract, and the alleged infringer is not obviously at fault in the process of negotiation, the patentee's claim for the termination of the standard exploitation shall be generally not supported by the people's court.
The “licensing conditions for the exploitation” as mentioned in paragraph 2 of this Article shall be determined by the patentee and the alleged infringer through negotiation. Where no agreement can be reached even through sufficient negotiations, they may request the people's court to make a determination. The people's court shall, when determining the aforesaid licensing conditions for the exploitaiton, take a comprehensive consideration of the degree of innovation of the patent and its role in the standard, the technical field of the standard, the nature of the standard, the exploitation scope of the standard and the relevant licensing conditions and other factors under the principles of fairness, rationality, and non-discrimination.
Where the patent in the exploitation standard is otherwise provided by any other law or administrative regulation, such provision shall prevail.
Article 25 Where any party uses, offers for sale or sells any patent-infringing products which it does not know are manufactured and sold without the licensing of the patentee for the purpose of production or business operation, and produces evidence to prove the legal source of the product, the patentee's claim for cease of the aforesaid use, offer for sale and sale acts shall be supported by the people's court, except when the user of the alleged infringing product produces evidence to prove that it has paid the reasonable consideration of the product.
The “it does not know” in paragraph 1 of this Article means “it actually does not know and should not have known.”
The “legal source” as mentioned in paragraph 1 of this Article means the acquisition of the product through any lawful marketing channel, common sales contract or any other normal business mode. The relevant evidence on legal source in line with trading practices shall be provided by user, offerer for sale or seller.
Article 26 Where the defendant constitutes an infringement upon the patent, and the patentee requests to order the defendant to cease the infringing act, the people's court shall give support thereto, but, in consideration of the national interests and public interests, the people's court may not order the defendant to cease the alleged act, but order it to pay the corresponding reasonable expenses.
Article 27 Where it is difficult to determine the actual losses suffered by the patentee due to the infringement, the people' court shall, in accordance with the provisions of paragraph 1 of Article 65 of the Patent Law, request the patentee to produce evidence to prove the interests acquired by the infringer due to the infringement. Under the circumstance that the patentee has provided the preliminary evidence on the interests acquired by the infringer, and the account books or materials related to the patent infringing act are primarily controlled by the infringer, the people's court may order the infringer to provide such account books or materials. Where the infringer refuses to provide or provides any false account books or materials without any justifiable reason, the people's court may determine the interests acquired by the infringer due to the infringement according to the patentee's claims and the evidence they provided.
Article 28 Where the patentee and the infringer agrees on the amount of compensation or compensation calculation method in accordance with the law, and claim to determine the amount of compensation on the basis of such agreement in the patent infringement action, the people's court shall give support thereto.
Article 29 After the decision of declaring the patent to be invalid is rendered, the party shall, according to this decision, apply for a retrial in accordance with the law, and request to set aside the written judgment and mediation document rendered but not executed by the people's court before the declaration of the invalidity of the patent, the people's court may rule to suspend the review for a retrial, and suspend the execution of the original written judgment and mediation document.
Where the patentee provides the people's court with a sufficient and effective guarantee to request to continue the execution of the written judgment and mediation document as mentioned in the preceding paragraph, the people's court shall continue the execution thereof. Where the infringer provides the people's court with a sufficient and effective counter guarantee, requesting to suspend the execution thereof, the people's court shall approve such request. Where the decision of declaring the invalidity of the patent is not set aside in the effective judgment of the people's court, the patentee shall compensate the losses caused to the opposing party due to further execution thereof. Where the decision of declaring the invalidity of the patent is set aside by the effective judgment of the people's court and the patent is still valid, the people's court may, according to the written judgment and mediation document as mentioned in the preceding paragraph, directly execute the aforesaidproperty under counter guarantee.
Article 30 Where no action is initiated in the people's court against the decision of declaring the invalidity of the patent during the statutory period or the decision is not set aside by the effective judgment after the action is initiated, and the party applies for a retrial in accordance with the law on the basis of the decision, requesting to set aside the written judgment and mediation document on the patent infringement rendered but not executed by the people's court before the declaration of the invality of the patent, the people's court shall retry the case. Where the party, according to the decision, applies for the termination of execution of the written judgment and mediation document on the patent infringement rendered but not executed by the people's court before the declaration of the invalidity of the patent, the people's court shall rule to terminate the execution thereof.
Article 31 This Interpretation shall come into force on April 1, 2016. In case ofany discrepancybetween the relevant judicial interpretations previously issued by the Supreme People's Court and this Interpretation, this Interpretation shall prevail.