PRC Supreme People's Court announcement

The Decision of amending Certain Provisions of Laws Applicable to the Trial of Patent Disputes by Supreme People's Court was passed by the 1641 meeting of the Supreme People's Court Judicial Committee on January 19, 2015, and is hereby announced for implementation since February 1, 2015.

The Supreme People's Court

January 29, 2015

According to the decision of the 1641 meeting of the Supreme People's Court Judicial Committee, the Certain Provisions of Laws Applicable to the Trial of Patent Disputes by Supreme People’s Court is modified as follows:

  1. The second paragraph of Article 5 is amended as follows: "The location of infringement includes: the location for implementing manufacture, use, offer for sale, sales, import and other acts of products by alleged infringement of invention and utility model patents; the location of uses of patented methods, the location of implementing use, offer for sale, sales, import and other acts of products directly obtained from patented process; the location of implementing manufacture, offer for sale, sales, import and other acts of products by design patent; the location of implementing patent forgery. The location of the results of infringements above.
  2. The first paragraph of Article 8 is amended as follows: "For the lawsuit filed against patent infringement of utility model applied before October 1, 2009 (excluding the day), the plaintiff may issue the search report made by the patent administration department of the State Council; For the lawsuit filed against patent infringement of utility model or design applied after October 1, 2009, the plaintiff may issue the patent evaluation report made by the patent administration department of the State Council. According to case hearing needs, the court may require the plaintiff to submit a search report or patent evaluation report. If the plaintiff does not submit the report without justifiable reasons, the court may decide to suspend the proceedings or order the plaintiff to bear the possible adverse consequences.”
  3. The first paragraph of Article 9 is revised as follows: "(a) No subject is found in the search report or patent evaluation report issued by the plaintiff which causes invalidity of utility model or design patent;"
  4. Article 17 is amended as follows: "The scope of protection of invention or utility model patent is subject to the content claimed, the description and drawings may be used to interpret the content claimed” in the first paragraph of Article 59 of Patent Law” refers to that the scope of patent protection should be subject to the scope determined by all the technical features described in the claims, including the scope determined by features equivalent to such technical features.

"Equivalent features, refer to the technical features described which achieve essentially the same function and effect with substantially the same means, and the features associated by an ordinary skilled person without going through creative work at the time of the alleged infringement. "

  1. Article 18 is amended as follows: "Patent infringements occurred before July 1, 2001, the provisions of the patent law before revision shall be applicable in determining the civil liability; and those occurred after July 1, 2001, the provisions after revision shall be applicable.
  2. Article 19 is amended as follows: "For patent forgery, the court can determine its civil liability in accordance with the provisions of Article 63 of Patent Law. In case the patent administrative department does not issue administrative punishment, the court may give civil sanctions in accordance with the provisions of the third paragraph of Article 134 of Civil Code, and the amount of civil fine shall be referred to the provisions determined by Article 63 of Patent Law.
  3. Deleting the first paragraph of Article 20, and the second paragraph changes to the first paragraph and is amended as follows: "The actual loss of the owner suffered from infringement prescribed in Article 65 of the Patent Law, can be calculated by the total volume of sales reduction of the patentee's patented product multiplying reasonable profit obtained from each of the patented product. In case the total volume of sales reduction is difficult to determine, the total sales volume of infringing products in the market multiplying reasonable profit of each patented product can be deemed as the actual losses suffered by the owner from the infringement.

The third paragraph changes to the second paragraph, and is amended as follows: "The benefit obtained from infringement prescribed in Article 65 of the Patent Law, can be calculated by the total sales volume of the patented product in the market multiplying reasonable profit obtained from each of the patented product. The benefit obtained from infringement is generally calculated in accordance with the infringer's operating profit. For professional infringers, the benefit can be calculated by the sales profit.

  1. Article 21 is revised as: "In case the loss of the right holder or the infringer's benefit is difficult to determine, if the patent licensing fees can be referred to, the court can reasonably determine the amount of compensation according to the type of patent, the nature and circumstances of the infringement, and the nature, scope, and time patent licensing, with reference to the multiples of patent licensing fees; if no patent licensing fees can be referred to or the patent licensing fees are obviously unreasonable, the court may determine the amount of compensation in accordance with the type of patent, the nature and circumstances of the infringement as well as the provisions of the second paragraph of Article 65 of the Patent Law.
  2. Article 22 is amended as: "In case the right holder claims its reasonable expenses paid to stop the infringement, the court may calculate in addition to the amount of compensation determined in light of Article 65 of the Patent Law.
  3. Article 24 is amended as: "The offer for sale alleged in Article 11 and 69 of Patent Law, refers to the intention to make the sale of goods through advertising, display in shop windows or exhibit at trade show, etc.

According to the decision, the Certain Provisions of Laws Applicable to the Trial of Patent Disputes by Supreme People’s Court is amended accordingly and re-released.