In May, 2016, Beijing Higher People’s Court summarized several legal problems needing attention in the current IP hearing, and raised opinions on preliminary examinations regarding entities and procedures of patent and trademark hearing. Below are the opinions that will be functioning as direct guidelines for IP hearings in Beijing jurisdiction.

1. Give full play to technical researchers’ role in finding facts and highlight the judges’ dominance in case hearing.

  1. A look over the Higher Court’s patent dispute cases of second instance that were overruled and remanded in 2015 reveals that 70% of them were thus handled simply because the technical facts involved were not clearly understood. We believe parties involved and their attorneys should be encouraged to elaborate on the technical facts though ample evidence and illustration. Specifically, parties involved should be encouraged to submit real products or their models, create and present slides and so on, so as to fully explain the technical problems involved.
  2. Explore and give play to technical researchers’ role in hearing. A technical researcher shall participate in court hearing and express his/her opinion on technical facts, and shall attend the collegial panel meetings and offer his/her opinion on technical facts. The technical examination opinions made by technical researchers shall be docked as restricted files which shall not be accessed by parties involved or their attorneys. However, it should be made clear that technical researchers are only supposed to facilitate hearings by advising on technical issues, rather than giving opinions on legal aspects such as whether infringement shall be established, whether technical features are identical or equivalent, whether a technical solution possesses inventiveness or novelty, whether a Description is fully disclosed or whether Claims are supported by the corresponding Description. The IP Court will explore the question procedures between technical researchers and parties involved, so as to provide guidance for courts in Beijing or even courts in the whole nation at large.

2. Issues on administrative cases involving patent right authorization and verification

  1. Law application problem caused by different versions of Patent Law, Implement Regulations of Patent Law and Patent Examination Guidelines

Non-retroactivity of law is a basic principle. For the amendment of patent application documents, the determination of whether an amendment is legitimate shall, in principle, apply the Patent Law and Implement Regulations of Patent Law that were in force on the application date, or on the date of priority. Regarding the decision on the inventiveness, novelty and applicability of a patent, case hearings in recent years show that most judges made no mistake on law application. For the handful of cases that were brought to appealing courts for law application problems, trials of second instance mostly upheld the original ruling on ground that the articles involved are substantially the same though belonging to different versions of law, thereby would not harm the right owner’s interests.

  1. Regarding the burden of proof of common knowledge in the art

In the administrative cases involving patent right authorization and verification, the Patent Examination Guideline provides two scenarios for the burden of proof of common knowledge in the art. During the substantive examination and reexamination procedure, the examiner is liable to provide evidence for and explanation on the common knowledge he/she cited. While during the invalidation process, the party that claim the patentee’s technical features as common knowledge shall bear the burden of proof. In practice, when the above mentioned administrative cases enter into litigation, Patent Reexamination Board (PRB) was always found not providing documentary evidence to support the cited common knowledge. As the judicial review organ, the court shall demand administrative departments to bear the burden of proof. In this sense, the court shall, in accordance with law, cancel the decisions made by administrative departments on a lack of evidence which may damage the interests of right owners.

It should be pointed out that a court shall not introduce common knowledge on its own initiative, if the parties involved have never cited such common knowledge. In practice, PRB sometimes would declare a patent invalid by introducing common knowledge in the patent right verification process. It is unappropriated for a court to either approve of such act without questioning, or cancel PRB’s such decisions for violating the principle of examination by requests. Therefore, for cases that meet the hearing principles and the introduced common knowledge could indeed render a patent invalid, the court shall point out in its ruling that: though PRB’s introduction of common knowledge violates the principle of examination by requests, the court deem the decision shall stand as individual cases in consideration of maintaining administrative efficiency and preventing unyielding procedures. However, for cases that do not meet the hearing principles, the decisions thereof shall be canceled. 

  1. Regarding the submission and acceptance of experimental data

In the administrative cases involving patent right authorization and verification, applicants and patentees often submit experimental data to prove that their patent applications have fully disclosed or possess inventiveness. For the acceptance of such data, PRB employs rigid standards, which often cause dissatisfaction from the applicants and patentees, specifically so, when it comes to cases where the Descriptions are void of experimental evidence. In accordance with the Examination Guideline enforced in 1993, for a patent where the Description thereof only records specific technical solutions without providing experimental evidence, and where the said technical solutions shall be established only when verified by the experimental result, it should be deemed that the patent does not conform to the regulation of applicability provided in Article 22 of Patent Law. The same Guideline further provides that applicants are allowed to submit experimental data and embodiments after the application date so as to prove the effect of the invention and to prove that the invention could be implemented. Such data and embodiments are not allowed to be added into the Description, but they could be included in the application documents as application evidence, serving as reference files for the examination of patentability. However, in accordance with the Examination Guideline enforced in 2001, such scenario is deemed as not conforming to the full disclosure provision, violating Article 26 of Patent Law. And the above provision in the Guideline’s 1993 edition was deleted in the 2001 edition. This is where the law application mentioned above comes from. The handling principle for this predicament is: in accordance with Patent Law and Implement Regulations of Patent Law enforced in 1992, and the Patent Examination Guideline enforced in 1993, for patent application without submitting experimental evidence, applicant shall be allowed to submit experimental data and embodiments after the application date on condition that the patent meet the requirements of the 1993 edition Guideline. For the experimental data later submitted by the patentee during the creativeness examination, if the advantageous effects provided have been explicitly o inexplicitly mentioned in the Description, such experimental data shall bee accepted, otherwise, it shall not be accepted. However, in view that the later submitted experimental data may conflict with prior application, strict standards shall be employed before such data could be accepted. To be specific, corresponding technical effects must have their origin in the Description, and the experimental data must be arrived at, without creative brainwork, based on prior art known before the application date

3. Problems in civil cases involving patent

  1.  Regarding the selection of claims

In accordance with the provision of the Judicial Interpretation 2, when a patent has over 2 claims, the patentee shall state clearly in the complaint the claims on which his/her charge against the alleged infringer are based. The Interpretation also provides that if the complaint fails to state such claims or the statement is unclear and remains unclear after explanation, the action could be dismissed. However, this provision is not the prerequisite for filing a case, a court shall not refuse to accept the case on ground that the plaintiff fails to clearly state the claims. In judicial practice, some patentees may include all claims so as to seek comprehensive protection of its patent. The above provision does not mention how to react when patentee chooses to include all claims. In principle, if the claims are few, patentee is normally allowed to include all of them its complaint. However, if there are many claims or if the citation between claim are complex, the judge on the case shall fully exercise the right of explanation, encouraging and guiding the patentee to choose the right claims. If the patentee still insists on choosing all the claims under such condition, the court could choose the independent claims as the subject of trial while neglecting other dependent claims, so as to avoid futile efforts. The logic lies in that dependent claims have the largest protection scopes, making it pointless to examine whether the alleged infringer violates the protection scope of dependent claims, regardless of whether the alleged infringer violates the protection scope of the independent claims.

  1. Regarding law application of “design space” in design patent infringement cases

The Judicial Interpretation provides that design pace is the subject of judgment for similarity. When determining whether design patents are identical or similar, design space shall be the first consideration. For designs with large design space, there should be rigid standards in the determination of similarity. Similarly, easy standards shall be employed for designs with small design space. The demonstration of design space shall be based on the design of prior products, while considering the function and usage of the disputed product. The verdict shall reveal the process of judge’s heart proffer in determining the size of the design space.

  1. Regarding the determination of indirect infringement

The Judicial Interpretation 2 gives the definition of indirect infringement, which is often interpreted as “aiding and abetting” in Patent Law. Paragraph 1, Article 9 of Tort Liability Law provides: “One who abets or assists another person in committing a tort shall be jointly and severally liable with the tortfeasor.” That is to say that indirect infringement in Patent Law is normally based on direct infringement, and indirect infringer and direct infringer constitute joint infringement of right. 

On the legal basis of Article 9 of Tort Liability Law, indirect infringer shall have subjective intention, while the direct infringer may violates law out of fault or subjective intention. Where patentee has no proof to demonstrate that the direct infringer has been sentenced as guilty, he/she shall not regard the indirect infringer as defendant. Instead, the patentee shall regard the alleged direct and indirect infringers as co-defendants.