On December 21, 2009, the PRC Supreme People's Court adopted several provisions of the Supreme People's Court on Issues Concerning Applicable Laws to the Trial of Patent Infringement Controversies (Judicial Interpretation). The Judicial Interpretation draws from and parallels the implementation of last year's Third Amendment to the Patent Law, and will become effective as of January 1, 2010. A Chinese version is available at http://www.chinacourt.org/flwk/show.php?file_id=140350.

In July 2009, Foley reported the circulation of a draft Judicial Interpretation (Draft) for public comments. (See http://www.foley.com/publications/pub_detail.aspx?pubid=6159.) As compared to the Draft, the final Judicial Interpretation is a simplified version and provides a more general guideline that gives PRC courts more discretion on a variety of complex issues. A summary of the final Judicial Interpretation follows.

Scope of Protection

A significant portion of the Judicial Interpretation concerns the determination of the scope of patent protection.

1. Claim Construction

Specifically, the Judicial Interpretation sets forth that the court will/should determine the scope of patent protection based on recitation of the claims, in combination with an understanding of the claims by an ordinarily skilled person in the art upon his/her reading of the specification and drawings (Section 2).

2. Narrow Interpretation for “Means” Claims

The Judicial Interpretation also provides for narrow interpretation of means-plus-function claims, similar to the United States (35 USC §112, ¶ 6).

However, during prosecution, most patent examiners currently read the means-plus-function claims broadly to cover all possible mechanisms that perform the same function. Such examination practice is likely to change in light of the Judicial Interpretation.

3. All Elements Rule

The Judicial Interpretation also explicitly requires that all technical features or their equivalents shall be present in the accused infringing product for a finding of patent infringement (Section 7). This essentially abandons the widely criticized “superfluity establishing principle,” which was adopted by the Beijing High People's Court in an earlier decision. There, the court considered a feature of an independent claim apparently “non-essential” and removed it from consideration when determining infringement.

4. Prosecution History Estoppel

The Judicial Interpretation indicates that, if during prosecution or invalidity proceedings, a patent applicant or patent holder abandoned certain technical solutions through amendments or response(s), the scope of protection shall exclude such abandoned subject matter(s) (Section 6). Noticeably, unlike the Draft, the Judicial Interpretation does not require the amendments or responses to be “restrictive,” which appears to suggest that such estoppel theory may have a broader application.

5. Design Patent Infringement

For design patents, the Judicial Interpretation abandoned the “relevant public” concept introduced in the Draft. Instead, the Judicial Interpretation reiterates that identicalness or similarity of designs shall be determined in accordance with the knowledge and recognition of a general consumer (Section 10).

Prior Art Defense

The Third Amendment to the Patent Law codifies the doctrine of prior art defense, under which the PRC courts may find no infringement if the defendant has evidence to prove that his/her technology or design is covered by or performed in accordance with prior art or prior art design. The Judicial Interpretation requires the reliance upon one piece of prior art (or design) in such a defense, but also allows certain changes from the cited prior art. For example, with respect to utility patents, the features of the accused infringing product can be “not substantially different from” those of the prior art; with respect to design patents, the design of the accused infringing product can be “not substantially different from” that of the prior art.

Cease and Desist Letters

The Judicial Interpretation sets forth that the accused infringer is entitled to file a declaratory judgment if the patentee — within one month after receipt of, or within two months after dispatch of, written notice from the accused infringer who has received a cease and desist letter therefrom, urging the patentee to take legal actions — fails to withdraw this letter or to bring a lawsuit. Such an additional procedural requirement may give the patentee significant advantages over the accused infringer in terms of forum shopping.

Noticeable Removals From the Draft

Various sections have been removed from the Draft. For example, the assembling and recycle and contributory infringement sections have been removed, probably due to controversies that became apparent during the comment period. Sections regarding doctrine of equivalents and patents adopted in industrial standards also have been deleted, probably for the reason that such issues have been addressed in previous judicial interpretations (which remain effective) or will be further addressed in pending legislation activities.

Conclusion

The Judicial Interpretation is particularly important, as it represents a powerful interpretative tool for Chinese patent law and practice. Nevertheless, the Judicial Interpretation remains silent on a number of complex and controversial issues. It is possible that the PRC Supreme People's Court may seek to provide further guidance on such issues by agreeing to hear certain cases in the future, which we will certainly monitor closely.