The Supreme People’s Court (“SPC”) has recently issued a new judicial interpretation on patent disputes (“JI”). In this new JI, the SPC seeks to streamline its former JI with the Patent Law, and tweak some patent litigation rules.
The SPC’s new JI – which came into effect on February 1, 2015 – replaces the former version that dates back to 2001. The JI was in dire need of an update since it still contained a range of provisions that were incompatible with the Patent Law after its major overhaul of 2008. Some highlights of the changes to the JI are presented below.
1. Submission of evaluation reports
Under the old rules, the submission of a ‘search report’ (as it then was called) was a prerequisite to case acceptance in utility model and design patent cases. That prerequisite is now abolished. The new JI stipulates that a plaintiff may submit the report, and that the court may request the submission of that report if it deems it useful. However, a refusal to submit the report upon request can either lead to a stay or to a complete rejection of the case.
In addition, the report plays a vital role in cases where the defendant files a counterclaim for invalidity of the utility model or design patent. In such cases, the court may decide not to stay the case, but instead proceed with the infringement question if the evaluation report does not show any serious ground for invalidation of the asserted patent.
2. Doctrine of Equivalents
For reasons of consistency, the revised JI clarifies the Chinese doctrine of equivalents by stipulating that all technical elements rather than just the essential technical elements – as provided by the 2001 version of the JI – should demarcate the protection scope of a claim. This is not a radical change in the interpretation of the doctrine of equivalents, since another SPC judicial interpretation dating back to 2009 already changed this.
Moreover, in the revised JI, the SPC clarifies for the first time from which point of view a disputed technical element should be assessed when applying the doctrine of equivalents. According to the JI, this should be the standpoint of “the ordinary technical personnel in the relevant field at the time when the contentious infringing activities occur“. This last element – the time of assessment – is a new element in the test. While it may lead to greater clarity of the doctrine of equivalents, it may, at the same time, lead to a higher burden of proof on the plaintiff.
3. Wider jurisdiction over design patent cases
The new JI extends the jurisdiction over design patent cases to the courts of the place where the accused products are offered for sale. This means that it will now be easier for plaintiffs to determine and choose the best forum to bring their claims. This may in turn help them to avoid local protectionism or select courts with more experience in IP litigation (e.g. the IP Courts).
4. Rules regarding damages updated
As to damages, the SPC mainly brought the JI in line with the provisions of the Patent Law. As a consequence, the JI now mirrors Article 65 of the Patent Law which prohibits plaintiffs from freely selecting the method that awards them the highest amount of damages. Instead, they will have to follow the Patent Law’s cascade system based on proof.
Moreover, the JI now officially confirms the existing practice that reasonable expenses incurred by the plaintiff for stopping infringement may be separately calculated and may go above and beyond the amount of the statutory damages provided by the Patent Law.
While the JI does not bring about ground-breaking changes in Chinese patent law, it does clarify a few important points in practice.
Going forward, we expect another, even more important, SPC judicial interpretation on patent infringement to be issued this year. The draft has already undergone public comment and revision, and is now under legislative consideration.