On January 29, 2015, the Supreme People's Court promulgated the Decision of the Supreme People's Court on Amending the Provisions on Issues Relating to Application of Laws to the Trial of Patent Dispute Cases (hereinafter, the "Provisions"), which entered into effect on February 1, 2015. This amendment marks the second amendment to the Provisions by the Supreme People's Court after a provision concerning the competent court for patent cases was added to the Provisions in 2013. Covering 10 of the original 26 articles, this amendment is primarily reflected in the following aspects.
- The Patent Law, amended and effective on October 1, 2009, confirms that "offering design patent products for sale" is also an act of patent infringement. To ensure consistency with the provisions of the Patent Law, Article 5 Para. 2 of the new Provisions expands the scope of infringing acts in design infringement cases by adding acts of "offer for sale" on the basis of the provisions concerning design patent infringing acts.
- Article 8 Para. 1 of the original Provisions requires that a plaintiff filing a complaint for infringement upon his utility model patent shall submit a search report issued by the patent agency under the State Council when the complaint is filed, whereas Article 8 Para. 1 of the new Provisions is amended as follows: "a plaintiff filing a complaint for infringement upon his utility model patent may submit a search report (for utility model patents with filing dates before October 1, 2009 (not inclusive)) or a patent evaluation report (for utility model patents with filing dates after October 1, 2009). Meanwhile, the paragraph specifically provides that if a plaintiff fails to provide a search report or patent evaluation report without justified reasons, the people's court may terminate a trial or render a decision potentially unfavorable to the plaintiff.
- The circumstances where a people's court does not need to terminate litigation under Article 9 Para. 1 of the Provisions was changed from "the search report submitted by the plaintiff does not indicate any technical literature that causes a utility model patent to lose novelty or inventive steps" to "the search report or patent evaluation report submitted by the plaintiff does not indicate any reason for the invalidation of a utility model patent or design patent." Therefore, the scope of the circumstances where the court does not have to terminate litigation is expanded.
- Article 17 Para. 1 of the new Provisions changes the original scope of patent protection from "the scope confirmed based on the essential technical features specifically set forth in the claims" to "the scope confirmed based on all technical features set forth in the claims." To wit, there is no difference between "essential" and "non-essential" technical features in claims. Such modification is completely consistent with the "all elements principle" affirmed under Article 7 of the Interpretation of the Supreme People's Court on Specific Issues Relating to Application of Laws to the Trial of Patent Infringement Dispute Cases. In other words, "a people's court should decide whether an alleged infringing technical solution falls within the scope of patent protection by examining all of the technical features set forth in the claims asserted by the rights holder." In addition, Article 17 Para. 12 of the new Provisions also specifically provides that the timing for applying the "principle of equivalents" to determine if infringement is constituted" is "the time when the alleged infringing act occurs."
- Article 21 of the original Provisions provides that where it is difficult to determine the losses of an infringement victim or the gains of an infringer, if any patent royalty is available for reference, the people's court may determine the amount of damages by referencing one to three times the patent royalty. To ensure consistency with Article 65 Para. 1 of the Patent Law (amended and effective on October 1, 2009), the modification that "the people's court may determine the amount of damages by referencing the multiples of such patent royalty" is contained in the new Provision. In addition, the amount of "statutory damages" is set at RMB10,000 to RMB1,000,000 under the new Provisions in reference to Article 65 Para. 2 of the Patent Law.