(passed in the 1676th meeting of the Judicial Committee of the Supreme People's Court on January 25, 2016 and implemented on April 1, 2016)

Legal Interpretation (2016) No. 1 Public Announcement of the Supreme People's Court of the People's Republic of China i.e. Interpretations (II) of the Supreme People's Court on Several Issues regarding Law of Application during Trail of Cases related to Patent Right Infringement Disputes has been passed in the 1676th meeting of the Judicial Committee of the Supreme People's Court on January 25, 2016 and implemented on April 1, 2016.

Supreme People's Court

March 21, 2016

In order to correctly try the cases related to patent right infringement disputes, according to the Patent Law of the People's Republic of China, the Tort Liability Law of the People's Republic of China, the Civil Procedure Law of the People's Republic of China and other relevant laws, based on the trial practice, the Interpretations are formulated.

Article 1 Where there are two or more claims in the claims, the right holder shall state in the pleadings the claim(s) based on which the alleged infringer is prosecuted to infringe on the right holder's patent right. If there is no record in this regard in the pleadings or the record is not clear in the pleadings, the people's court shall request the right holder to make it clear. Upon clear explanations, if the right holder still does not make it clear, the people's court can judge to dismiss the lawsuit.

Article 2 Where the right holder's claim claimed in the patent infringement litigation is announced invalid by the Patent Reexamination Board, the people's court which tries  the cases related to patent right infringement disputes can judge to dismiss the right holder's lawsuit based on this invalid claim.

If there is any evidence to prove the decision on invalidity of the above claim is withdrawn by an effective administrative judgment, the right holder can file a lawsuit separately.

If the patentee files a lawsuit separately, the period of limitation of the action shall be calculated as of the date of service of the administrative judgment mentioned in Paragraph 2 of this Article.

Article 3 Where a patent right is requested for declaration of invalidity due to obvious breach of Article 26 Paragraph 3 and Paragraph 4 of the Patent Law to cause that the specification cannot be used to explain the claims and due to the situation which does not belong to a situation as set out in Article 4 of the Interpretations, the people's court which tries the cases related to patent right infringement disputes shall generally judge to suspend the action; where the patent right does not be requested for declaration of invalidity within a reasonable period, the people's court can determine the protection scope of the patent right based on the record of the claims.

Article 4 Where there are ambiguities in grammar, characters, punctuations, graphs and symbols, etc. of the claims, specification and figures, but persons skilled in the art can obtain only one understanding after reading the claims, specification and figures, the people's court shall make an affirmation based on this only one understanding.

Article 5 When the people's court determines the protection scope of the patent right, the preamble portion and the feature portion of an independent claim as well as the technical features recorded in the reference portion and the defining portion of a dependent claim have a defining role.

Article 6 The people's court can interpret the claims of the involved patent by using other patent which has a divisional application relationship with the involved patent and its patent examination archives as well as the effective judgment document for confirmation of patent grant.

The patent examination archives include written materials submitted by the patent applicant or the patentee during the patent examination, reexamination or invalidation procedure as well as the examination opinion notification, meeting records, oral trial records, effective examination decision on patent reexamination request and examination decision on a request for patent right invalidity declaration, etc. which are made by the Patent Administration Department Under the State Council and its Patent Reexamination Board.

Article 7 Where the technical solution which is sued infringing adds other technical feature(s) on the basis of containing all the technical features of the closed composition claims, the people's court shall affirm that the technical solution which is sued infringing does not fall into the protection scope of the patent right, however except that the added technical feature(s) belong(s) to unavoidable impurities with regular quantity.

The closed composition claims mentioned in the preceding paragraph generally do not include traditional Chinese medicine composition claims.

Article 8 A functional feature refers to, in terms of structure, component, step, condition or the relationship among them, the technical feature defined by its function or effect in an invention and creation, but except that ordinary persons skilled in the art can directly and explicitly determine the specific embodiment to realize the above function or effect by reading the claims.

Compared with the technical feature necessary for realization of the function or effect as recorded in the specification and figures, the technical feature corresponding to the technical solution which is sued infringing realizes the same function and achieve the same effect by substantially same means and can be conceived by ordinary persons skilled in the art without paying inventive labor when an alleged infringement occurs, the people's court shall affirm the corresponding technical feature is same as or equivalent to a functional feature.

Article 9 Where the technical solution which is sued infringing cannot apply to the use environment defined by a use environment feature in a claim, the people's court shall affirm that the technical solution which is sued infringing does not fall into the protection scope of the patent right.

Article 10 For a technical feature of a product defined by using a preparation method in the claims, where the preparation method of the product which is sued infringing is not same as or equivalent to it, the people's court shall affirm that the technical solution which is sued infringing does not fall into the protection scope of the patent right.

Article 11 Where a method claim does not explicitly record the sequence of technical steps, but ordinary persons skilled in the art directly and explicitly consider the technical steps should be implemented based on the particular sequence after reading the claims, specification and figures, the people's court shall affirm that the step sequence has a defining role for the protection scope of the patent right.

Article 12 Where a claim defines a numerical feature by using the words such as "at least" and "not exceeding", etc., and ordinary persons skilled in the art consider the patent technical solution specially highlights the defining role of such words on the technical feature after reading the claims, specification and figures and the right holder claims a different numerical feature belongs to the equivalent feature, the people's court will not support.

Article 13 Where the right holder proves the patent applicant or patentee's limitation amendments or statements to the claims, specification and figures during the procedure of confirming patent grant are explicitly denied, the people's court shall affirm that such amendments or statements do not cause waiver of the technical solution.

Article 14 When affirming general consumers' knowledge level and cognitive competence on an appearance design, the people's court shall generally consider the design space of a product which is same as or similar to the product to which the granted appearance design belongs, when an alleged infringing act occurs. If the design space is larger, the people's court can affirm that general consumers are usually not easy to notice a smaller difference among different designs; if the design space is smaller, the people's court can affirm that general consumers are usually easier to notice a smaller difference among different designs.

Article 15 For the appearance design patent of a whole set of products, where the design which is sued infringing is same as or similar to one of appearance designs, the people's court shall affirm that the design which is sued infringing falls into the protection scope of the patent right.

Article 16 For the appearance design patent of a component product whose assembly relationship is only, where the design which is sued infringing is same as or similar to the appearance designs under the combination state, the people's court shall affirm that the design which is sued infringing falls into the protection scope of the patent right.

For the appearance design patent of a component product for which there is no assembly relationship among each component or whose assembly relationship is not only, where the design which is sued infringing is same as or similar to the appearance design of all the single components, the people's court shall affirm that the design which is sued infringing falls into the protection scope of the patent right; where the design which is sued infringing is lack of the appearance design of a single component or is not same as or similar to the appearance design of a single component, the people's court shall affirm that the design which is sued infringing does not fall into the protection scope of the patent right.

Article 17 For the appearance design patent of a component product whose state is changeable, where the design which is sued infringing is same as or similar to the appearance design under each use state as shown in the change state diagram, the people's court shall affirm that the design which is sued infringing falls into the protection scope of the patent right; where the design which is sued infringing is lack of the appearance design under a use state or is not same as or similar to the appearance design of a single component, the people's court shall affirm that the design which is sued infringing does not fall into the protection scope of the patent right.

Article 18 Where the right holder appeals to request according to Article 13 of the Patent Law the entity or person who implements the invention to pay appropriate fees during the period from the publication date of an invention patent application to the date of announcement of the grant, the people's court can reasonably determine such fees by referring to relevant patent license fees.

If the scope claimed by the applicant at the time of announcement of the invention patent application is not consistent with the protection scope of the patent right when the invention patent is announced for grant and the sued technical solution falls into the above two scopes, the people's court shall affirm the defendant implements the invention during the period as mentioned in the preceding paragraph; if the sued technical solution only falls into one of the scopes, the people's court shall affirm that the defendant does not implement the invention during the period as mentioned in the preceding paragraph.

After the invention patent is announced for grant, without permission of the patentee, if someone for the purpose of production and operations uses, promises to sell, sells the product which has been manufactured, sold or imported by other person during the period as mentioned in Paragraph 1 and such other person has paid or made a written promise to pay the appropriate fees as set out in Article 13 of the Patent Law, for the claim of the right holder regarding infringement of the above use, promise to sell and sale on the patent right, the people's court will not support.

Article 19 Where a product purchase and sales contract is established according to law, the people's court shall affirm that the sales as set out in Article 11 of the Patent Law have been constituted.

Article 20 Where a subsequent  product obtained from further processing or treatment of a product directly obtained according to patented methods is reprocessed or retreated, the people's court shall affirm that such reprocessing or retreatment does not belong to "use of a product directly obtained according to the patented methods" as set out in Article 11 of the Patent Law.

Article 21 Where someone clearly knows that a relevant product is a material, equipment, component and part, intermediate article, etc. which is specially used to implement a patent and without permission of the patentee and for the purpose of production and operations, provides such product to other person to implement a behavior of patent infringement, if the right holder claims the behavior of such provider belongs to a behavior of helping other person  to implement an infringement behavior as set out in Article 9 of the Tort Liability Law, the people's court shall support such claim.

Where someone clearly knows that a relevant product or method is granted a patent right and without permission of the patentee and for the purpose of production and operations, actively induces other person to implement a behavior of patent infringement, if the right holder claims the behavior of such inductor belongs to a behavior of instigating other person to implement an infringement behavior as set out in Article 9 of the Tort Liability Law, the people's court shall support such claim.

Article 22 For the defense based on an existing technology or existing design as claimed by the alleged infringer, the people's court shall define the existing technology or existing design according to the Patent Law executed on the patent application date.

Article 23 Where a technical solution or appearance design which is sued infringing falls into the protection scope of the prior patent right involved in the case, and the alleged infringer defends that its technical solution or appearance design does not infringe the patent right involved in the case for the reason that its technical solution or appearance design has been granted a patent right, the people's court shall not support the defense.

Article 24 Where the recommended national, industrial or local standards explicitly indicate the necessary patent-related information, and the alleged infringer defends that such patent right is not infringed for the reason that the implementation of such standards do not need the permission of the patentee, the people's court shall generally not support such defense.

Where the recommended national, industrial or local standards explicitly indicate the necessary patent-related information and at the time of consultation with the alleged infringer on the implementation and licensing conditions of such patent, the patentee intentionally breaches the committed obligation for fair, reasonable and non-discriminatory licensing during formulating the standards, resulting in failure to conclude a patent implementation and licensing contract, and the alleged infringer has no obvious fault in the consultation, the people's court shall generally not support the claim of the right holder for cessation of the implementation of the standards.

The implementation and licensing conditions as mentioned in Paragraph 2 of this Article shall be determined by the patentee and the alleged infringer upon consultations. If no consensus is reached after sufficient consultations, they can request the people's court to determine such conditions. When determining the above implementation and licensing conditions, the people's court shall, based on the principles of fairness, reasonableness and nondiscrimination, take into comprehensive consideration the innovation degree of the patent, the role of the patent in the standards, the technical field to which the standards belong, the nature and implementation scope of the standards, relevant licensing conditions and other factors.

The provisions on the implementation of patents in the standards as otherwise specified by laws and administrative regulations shall prevail.

Article 25 Where a party uses, promises to sell, or sells a patent-infringing product for the purpose of production and operations without the knowledge that such product is manufactured and sold without the permission of the patentee, and puts to the proof to prove  such product has legal sources, the people's court shall support the request of the right holder that the above use, promise to sell or sale should be stopped, except that the user of the alleged infringing product puts to the proof to prove that it has paid reasonable consideration for such product.

"without the knowledge" mentioned in Paragraph 1 refers to the situation in which a party has no actual knowledge and ought not to have knowledge.

"legal sources" mentioned in Paragraph 1 refers to use of legal sales channels, a usual purchase and sales contract and other normal commercial manners to obtain a product. For legal sources, a user, a person who promises to sell or a seller shall provide relevant evidence in line with trading practice.

Article 26 Where the defendant commits the patent right infringement, the people's court shall support the request of the right holder that the defendant should be ordered to stop the infringement; however, the people's court may, instead of ordering the defendant to stop the act against which the lawsuit is filed, order the defendant to pay corresponding reasonable fees based on the consideration of the national interest and the public interest.

Article 27 Where it is difficult to determine the actual loss of the right holder due to infringement, the people's court shall, according to the provisions of Article 65 Paragraph 1 of the Patent Law, request the right holder to put to the proof for the interests obtained by the infringer; under the circumstance that the right holder has provided preliminary evidence for the interests obtained by the infringer and the account books, materials related to the patent infringement are mainly held by the infringer, the people's court can order the infringer to provide such account books and materials; if the infringer refuses to provide without a due cause or provides false account books and materials, the people's court can, based on the claim of the right holder and the evidence provided by the right holder, affirm the interests obtained by the infringer due to infringement.

Article 28 Where the right holder and the infringer agree on a compensation amount for patent infringement or a method for calculating the compensation according to law and in the patent infringement lawsuit, claim to determine the compensation amount based on such agreement, the people's court shall support.

Article 29 After a decision for announcing invalidity of a patent right is made, if the parties apply for retrial according to this decision and request to withdraw the patent infringement judgment or mediation documents which are made by the people's court before announcing invalidity of a patent right and have not been enforced, the people's court can judge to suspend retrial examination and to suspend the enforcement of the original judgment or mediation documents.

Where the patentee provides a sufficient and valid guarantee with the people's court and requests to continue to enforce the judgment or mediation documents mentioned in the preceding paragraph, the people's court shall continue to enforce; where the infringer a sufficient and valid counter guarantee with the people's court and requests to suspend the enforcement, the people's court shall approve. Where an effective judgment of the people's court does not withdraw the decision for announcing invalidity of a patent right, the patentee shall compensate the losses caused to the other party due to continue to enforce; where the decision for announcing invalidity of a patent right is withdrawn by the effective judgment of the people's court but the patent right is still valid, the people's court can directly enforce the above counter guaranteed properties according to the judgment or mediation documents mentioned in the preceding paragraph.

Article 30 Where a lawsuit is not filed against the decision for announcing invalidity of a patent right with the people's court within the legal time limit or the effective judgment does not withdraw the decision after the lawsuit is filed, and the parties apply for retrial according to this decision and according to law and request to withdraw the patent infringement judgment or mediation documents which are made by the people's court before announcing invalidity of a patent right and have not been enforced, the people's court shall conduct a retrial. Where the parties, based on this decision and according to law, apply to terminate enforcement of the patent infringement judgment or mediation documents which are made by the people's court before announcing invalidity of a patent right and have not been enforced, the people's court shall judge to terminate enforcement.

Article 31 hese Interpretations are implemented on April 1, 2016. In case the relevant judicial interpretations previously published by the Supreme People's Court are not consistent with these Interpretations, these Interpretations prevail.

Briefing on IP cases handled by Beijing courts & 20 major cases

At the news conference held on the morning of April 13, the Higher People's Court briefed on the handling of IP cases by Beijing courts in 2015, and released Top 10 Exemplary Cases and Top 10 Innovation Related Cases. In 2015, Beijing courts newly accepted 13, 939 IP civil cases of first instance, marking a year-on-year growth of 24.1%; and concluded 11, 858 cases, marking a year-on-year growth of 8.49%. The newly accepted cases include 506 patent cases, 1, 210 trademark cases, 10, 935 copyright cases, 263 technical contract cases, 540 unfair competition cases, and other 485 cases. Beijing’s Higher and Intermediate courts accepted 1, 332 cases of second instance and civil cases involving IP rights, and concluded 1, 274 of them. The First Intermediate Court and the IP court newly accepted 7, 948 administrative cases (1, 443 patent cases, 6, 505 trademark cases) involving IP rights grant and registration, marking a year-on-year decrease of 18.38%. The two courts concluded 8, 819 cases, marking a year-on-year growth of 86.53%. The Higher Court accepted 2, 243 cases of second instance and civil cases involving IP rights, marking a year-on-year decrease of 6.19%. The cases include 180 patent cases and 2, 063 trademark cases. The Higher Court concluded 2, 312 cases, marking a year-on-year growth of 11.15%. The 10 Exemplary Cases and 10 Innovation Related Cases were all cases of last instance and their judgments were all effective.

The Top 10 Exemplary Cases are:

  • Yao Qiong vs. Zheng Yu on copyright disputes
  • Disputes over deceiving publicity of “China’s first beverage can”
  • Invalidation against an invention patent application: “a chatbot system”
  • Trademark dispute over “滴滴打车”(DiDi Taxi Hailing)
  • Review of opposition on trademark “清样”
  • Copyright dispute on Red Detachment of Women
  • Copyright and unfair competition dispute on “Super MT”
  • Copyright dispute between travel channels on the station caption
  • Dispute over design infringement of “Similac rice flour can”
  • Copyright infringement caused by selling App Lock

The Top 10 Innovation Related Cases are:

  • Unfair competition case: Sougou suing Qihoo 360 over the block of the former’s explorer installation
  • Unfair competition case: “Gee” blocking video advertisement
  • Dispute over design patent infringement of building blocks
  • Administrative case of trademark rejection of “莫言”(MO, Yan)
  • Dispute over trademark “Uniqlo”
  • Dispute over the prior using right of the trademark “启航” (set sail)
  • Dispute over liability for damage caused by filing of IP litigation out of bad faith
  • MIUI vs. Qihoo 360 over jurisdiction opposition
  • Copyright dispute of model aircraft of J-10
  • Dispute over copyright ownership of 《贾志刚说春秋》(a book literally translated as Zhigang Jia’s Narration on the History

(Source: Beijing intellectual property court)