This
Interpretation of the Supreme People's Court concerning
certain issues of application of laws in patent infringement
case was approved, on December 21, 2009, by Adjudicatory
Committee of the Supreme People’s Court at 1480th
Session, and hereby promulgated. This Interpretation shall
come into force on January 1, 2010.
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This
Interpretation is hereby promulgated in accordance with the
relevant provisions of the Patent Law and Civil Procedure of
the People’s Republic of China and in consideration of
judicial practice to ensure correct handling of the cases of
patent infringement disputes.
Article 1:
The
people’s courts shall determine the scope of protection of
the patent right according to the claims requested by the
right holder and according to Article 59, paragraph 1 of the
Patent Law of China. Where the right holder changes the
claims before the conclusion of the trial debate of the
first instance, the people’s court shall give its
permission.
Where the right
holder proposes to determine the scope of protection of the
patent right according to any of dependent claims, the
people’s court shall determine the scope of protection of
the patent right based on the additional technical features
stated in the dependent claim in connection with the
technical features of any preceding claim or claims to which
the dependent claim refers.
Article 2:
The
people’s court shall determine the contents of the claims as
prescribed in Article 59, paragraph 1 of the Patent Law in
accordance with the statement of the claims and in
connection with the understanding of the claims by those
skilled in the art reading the description and accompanying
drawings,.
Article 3:
The
people’s court may construe a claim or claims with reference
to the description and accompanying drawings, any relevant
ones of the claims, and files of patent examination. Where
the description has a specific definition of any term of the
claims, the specific definition shall prevail.
If the meaning
of the claim cannot be determined with the aforesaid
methods, it shall be construed in view of any reference
books, textbooks and other publicly known documents, as well
as normal understanding of those skilled in the art.
Article 4:
With
respect to the technical features defined by function or
effect, the people’s court shall determine the contents of
those technical features in connection with the specific
embodiments of said function or effect disclosed in the
description and accompanying drawings, as well as any
possible embodiment equivalent thereto.
Article 5:
If
the right holder would like to include any technical
solution, that is only disclosed in the description or
accompanying drawings, but not stated in the claims, into
the scope of protection of the patent right during the
patent infringement case, the people’s court shall not
support it.
Article 6:
If
the right holder would like to include any technical
solution, that has been given up by the patent applicant or
patentee through amendment of the claims and description or
express statement during the patent examination and/or
invalidation, into the scope of protection of the patent
right during the patent infringement case, the people’s
court shall not support it.
Article 7:
The
people’s court shall examine all technical features stated
in the claims of the patent when judging whether or not the
alleged infringing technical solution falls within the
protection scope of the patent right.
Where the
alleged infringing technical solution comprises technical
features that are identical with or equivalent to all
technical features stated in the claims, the people’s court
shall conclude that it falls within the protection scope of
the patent right. Where the alleged infringing solution
misses one or more technical features stated in the claims,
or includes one or more technical features that are not
identical with or equivalent to the technical features
stated in the claims, the people’s court shall conclude that
it does not fall within the protection scope of the patent
right.
Article 8:
Where a design that is identical with or similar to a
patented design is adopted in a product that is the same or
similar kind of the product of the design patent, the
people’s court shall conclude that the alleged infringing
design falls within the protection scope of the design
patent as prescribed in Article 59, paragraph 2 of the
Patent Law.
Article 9:
The
people’s court shall consider the usage of the product
incorporating the design to determine whether or not the
products are the same or similar. In determining the usage
of the product, reference may be made to the brief
description of the design, international classification for
designs, function of the product, and sales and actual usage
of the product, etc.
Article 10:
The
people’s court shall determine whether or not the designs
are the same or similar according to the common knowledge
and cognitive ability of ordinary consumers of the product
incorporating the patented design.
Article 11:
In
determining whether or not the designs are the same or
similar, the people’s court shall make a comprehensive
judgment with respect to the overall visual effect of the
products of the designed features of the patented design and
the alleged infringing design. The design features defined
by technical function and the features of materials and
internal structure of the products shall not be considered
if they do not contribute to the overall visual effect.
Generally, the
following circumstances may have more impact on overall
visual effect of designs:
(I) any parts
of the product which can be observed easily and directly in
normal use of the product, as opposed to other parts
thereof;
(II) any design
features of the design patent that are distinguishable from
the prior designs, as opposed to other design features of
the granted design patent.
If there is no
difference between the alleged infringing design and the
patented design in their overall visual effect, the people’
s court shall conclude that they are identical; and if there
is no substantive difference between them in the overall
visual effect, the people’s court shall conclude that they
are similar.
Article 12:
If a
product that infringes an invention patent or utility model
patent is used as a part in making another product, the
people’s court shall find it as an act of (unauthorized) use
as prescribed in Article 11 of the Patent Law; and if said
another product is sold, the people’s court shall find it as
an act of (unauthorized) sale as set forth in Article 11 of
the Patent Law.
If a product
that infringes a design patent is used as a part in making
another product and said another product is sold, the
people’s court shall find it as an act of sale as prescribed
in Article 11 of the Patent Law, unless that the product
infringing the design patent has only technical effect in
said another product.
In the
situations of the aforesaid two paragraphs, the people’s
court shall find the joint (liable for) infringement of the
alleged infringers if they cooperate with each other.
Article 13:
With
respect to a product originally obtained from a patented
process, the people’s court shall find it as a product
directly obtained from the patented process as prescribed in
Article 11 of the Patent Law.
Where the
aforesaid originally obtained product is further treated and
processed to obtain a subsequent product, the people’s court
shall find it as an act of use of the product directly
obtained from the patented process as prescribed in Article
11 of the Patent Law.
Article 14:
If
all technical features that allegedly fall within the
protection scope of a patent are identical with, or not
substantively different from the corresponding technical
features of a technical solution of prior art, the people’s
court shall find that the technology exploited by the
alleged infringer belongs to the prior art as prescribed in
Article 62 of the Patent Law.
If an alleged
infringing design is identical with, or not substantively
different from a prior design, the people’s court shall find
that the design used by the alleged infringer belongs to the
prior art design as prescribed in Article 62 of the Patent
Law.
Article 15:
The
people’s court shall not support a prior use defense of the
alleged infringer if the technology or design is acquired
illegally.
In any of the
following circumstances, the people’s court shall find that
necessary preparations have been made for manufacture and
use as prescribed in Article 69, item (2) of the Patent Law
of China:
(I) completion
of primary technical drawings or process documents that are
essential for exploitation of the invention;
(II) finished
manufacture or purchase of the main equipments or raw
materials that are essential for exploitation of the
invention.
The original
scope as defined in Article 69, item (2) of the Patent Law
shall include the scale of production before the filing date
of the patent application, and the scale of the production
that can be achieved with the existing manufacture equipment
or the existing production preparations.
If the party of
prior use right assigns or licenses to other party, after
the filing date of the patent application, the technology or
design that has been exploited or finished with necessary
preparations for exploitation, the people’s court shall not
support a claim of the alleged infringer (the other party)
that their exploitation is the continuous exploitation
within the original scope unless the technology or design
being assigned (to) or succeeded (by the alleged infringer)
together with the original enterprise (the party of prior
use right).
Article 16:
Profits the infringer gained through infringement as
prescribed in Article 65, paragraph 1 of the Patent Law
shall be limited to the profits obtained by the infringer
through the infringement of the patent; and any other profit
obtained from any other rights shall be deducted reasonably.
Where a product
that infringes an invention patent or utility model patent
is a part of another product, the people’s court shall
assess reasonable amount of compensation, taking into
consideration of the value of the part itself and its
function in realizing the profit of the finished product.
Where a product
that infringes a design patent is a package of another
product, the people’s court shall assess reasonable amount
of compensation, in consideration of the value of the
package itself and its function in realizing the profit of
the product being packed.
Article 17:
The
people’s court shall not find that a product is a new
product as prescribed in Article 61, paragraph 1 of the
Patent Law if the technical solution of the product or the
process of making the product is known to the public in this
country or abroad before the filing date of the patent
application.
Article 18:
Where the right holder sends a warning to other party with
allegation of infringement of patent rights, and the party
being warned or any party of interests sends a demand in
writing to the right holder, urging exercise of the right to
bring a lawsuit, the people’s court shall accept the case in
which the party being warned or the party of interests
petitions for the people’s court to declare that their act
is not infringement of patent rights, provided that the
right holder does not withdraw the warning, nor brings a
lawsuit within one month from the date the right holder
receives the written demand, or two months from the issuing
date of the written demand.
Article 19:
The
people’s court shall apply the previous Patent Law to the
alleged infringing acts occurred prior to October 1, 2009,
and shall apply the amended Patent Law to the acts occurred
after October 1, 2009.
Where any acts
of the alleged infringement occurred before October 1, 2009
and continue after October 1, 2009, the people’s court shall
determine the amount of compensation in accordance with the
amended Patent Law if the infringer is liable for
compensation under both versions of the Patent Law before
and after the amendment.
Article 20:
In
case of any inconsistency between this Interpretation and
the previous judicial Interpretations issued by this Court,
this Interpretation shall prevail.
“( )” added by
Liu Shen & Associates
January 19,
2010
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