On June 1st, the Supreme People's Court promulgated the Provisions of the Supreme People's Court on Several Issues Concerning the Adjudication of Administrative Cases on Granting Patents (1) (Draft for Comments), and solicited opinions from people from all walks of society. The commenting period is 1 month, and opinions are expected to be feedback before July 1, 2018. The following is the full text of the Draft for Comment.

With a view to correctly adjudicating administrative cases on granting and affirming patents, these Provisions are formulated pursuant to the Patent Law of the People's Republic of China, the Administrative Procedure Law of the People's Republic of China and other relevant laws, as well as in light of adjudication practices.

Article 1

For the purpose of these Provisions, administrative cases on granting patents shall refer to the cases brought to people's courts by patent applicants unsatisfied with the examination decisions on re-examination requests made by the patent re-examination board of the patent administrative department of the State Council (hereinafter referred to as the "Patent Re-examination Board"). For the purpose of these Provisions, administrative cases on affirming patents shall refer to the cases brought to people's courts by patentees or requesters for declaration of invalidity unsatisfied with the examination decisions on the requests for declaration of invalidity made by the Patent Re-examination Board.

Article 2

The scope within which the competent people's court adjudicates an administrative case on granting or affirming patents shall, in general, be determined according to the litigation requests of the plaintiff to the said case and the grounds given thereby. Where the relevant determination by the Patent Re-examination Board is apparently improper but the plaintiff has not raised relevant contentions in the lawsuit, the competent people's court may examine relevant matters and render a judgment/ruling thereon after all parties concerned have stated their opinions.

Article 3

When adjudicating an administrative case on granting patents, a people's court shall generally define the terms adopted in the claim based on the common sense understood by persons of ordinary skill in the art, provided that the self-defined terms, if any, used in the claim shall be adopted if the specifications and drawings of the claim have clearly defined or explained such terms. 

When adjudicating an administrative case on affirming patents, a people's court may use the terms for defining rights as adopted in the claim and its specifications and drawings, provided that the special definitions, if any, ascribed to the terms for the claim by the specifications and drawings shall prevail. Patent examination files may be used to interpret the terms adopted in the claim. Where all of the aforesaid methods fail, the people's court may define the terms adopted in the claim in light of the technical dictionaries, technical manuals, reference books, textbooks, national or industry technical standards, etc. commonly used by persons of ordinary skill in the art. 

(Option 2: A people's court shall generally define the terms adopted in a claim according to the common sense understood by persons of ordinary skill in the art, provided that the self-defined terms, if any, used in the claim shall be adopted if the specifications and drawings of the claim have clearly defined or explained such terms.)

Article 4

When determining the meanings of the terms adopted in a claim, a people's court may refer to the statements of the relevant patentee on the contents of the claim during patent infringement litigation proceedings.

Article 5

Where persons of ordinary skill in the art are able to arrive at only one unique understanding of the obvious errors in grammar, wording, numbers, punctuations, graphs, symbols, etc. in a claim or its specifications and drawings by reading the claim, its specifications and drawings, the competent people's court shall admit this unique understanding.

Article 6

Where there is evidence that a patent applicant or patentee violates the principle of good faith and maliciously forges or alters patent exploitation methods, data, graphs or other technical contents of the specifications and drawings of a claim, the competent people's court shall uphold the contention by a party concerned that the specifications are not in compliance with Paragraph 3 of Article 26 of the Patent Law and that relevant claims shall be declared invalid.

Article 7

Where the failure to fully disclose specific technical contents in the specifications and drawings of a claim results in the failure of the persons of ordinary skill in the art to implement the technical solution specified in the claim, or where the ability of the technical solution specified in the claim to solve the technical problems targeted by the relevant patent still cannot be confirmed after limited tests, the competent people's court shall determine that the specifications are not in compliance with Paragraph 3 of Article 26 of the Patent Law, unless the technical contents not fully disclosed in the specifications are not substantively related to the technical solution specified in the claim.

Article 8

Under any of the following circumstances, a people's court shall determine that a claim is not in compliance with the requirements of Paragraph 4 of Article 26 of the Patent Law that a claim shall be clear: (1) Where the type of invention as specified in the claim is not unique or is ambiguous; (2) Where the meaning of the technical features in the claim cannot be determined; or (3) Where there are obvious contradictions between and among technical features, and such contradictions cannot be reasonably explained.

Article 9

Where persons of ordinary skill in the art, after reading the specifications and drawings of a claim, cannot directly arrive at or reasonably summarize the technical solution specified in the claim, the competent people's court shall determine that the claim is not in compliance with the provisions of Paragraph 4 of Article 26 of the Patent Law that a claim shall be based on specifications. 

Where persons of ordinary skill in the art, after reading the specifications and drawings of a claim, cannot reasonably foresee that all the methods of patent exploitation covered by the claim can solve the technical problems that need to be solved as described in the specifications, the competent people's court shall determine that the claim falls under the circumstance prescribed by the preceding Paragraph where it cannot be reasonably summarized.

Article 10

Where some of the specific methods of patent exploitation described in the specifications of a claim cannot solve the technical problems targeted by the relevant patent, but persons of ordinary skill in the art, after reading the specifications and drawings of the claim, are able to reasonably foresee, without excessive work on the date of patent application, that all the other specific methods of patent exploitation covered by the claim can solve the technical problems targeted by the patent and achieve the same technical effects, the competent people's court shall generally uphold the contention by a party concerned on the foregoing basis that the claim is in compliance with the provisions of Paragraph 4 of Article 26 of the Patent Law that a claim shall be based on specifications.

Article 11

Where the technical contents described in the specifications of a claim are contradictory to each other, making persons of ordinary skill in the art unable to confirm whether the technical problems targeted by the relevant patent can be solved, the competent people's court shall not uphold the contention by a party concerned on the ground of such technical contents that the claim meets the requirements of Paragraph 4 of Article 26 of the Patent Law.

Article 12

With respect to technical features that are defined in a claim by function or effect, if the specifications and drawings of the claim contain no specific method of patent exploitation to achieve such functions or effects, and persons of ordinary skill in the art cannot determine the meaning of such functions or effects merely based on the claim and its specifications and drawings, the competent people's court shall uphold the contention by a party concerned on the foregoing ground that the claim is not in compliance with Paragraph 4 of Article 26 of the Patent Law.

Article 13

Where a chemical invention patent applicant or chemical invention patentee submits experimental data after the date of patent application to further prove that the technical effects described in the specifications of its claim have been fully disclosed, and such technical effects are confirmable by persons of ordinary skill in the art based on the specifications and drawings of the claim and common knowledge on the date of patent application, the competent people's court shall generally proceed to conduct examination.

Where a chemical invention patent applicant or chemical invention patentee submits experimental data after the date of patent application to prove that the patent application or patent has technical effects different from comparative documents, and such technical effects are directly and unambiguously confirmable by persons of ordinary skill in the art from the publicly-disclosed contents in patent application documents on the date of patent application, the competent people's court shall generally proceed to conduct examination.

Article 14

Where a party concerned submits experimental data, the competent people's court may require the party concerned to furnish evidence to prove the sources and the formation process of the experimental data, including raw materials for the experiment and their sources, the procedures, conditions or parameters of the experiment, personnel involved in and venues for the experiment and other factors that are sufficient to affect the authenticity of the experimental data.  Where the authenticity of experimental data is disputed by the parties concerned, the competent people's court may entrust a qualified institution to conduct appraisal pursuant to the law.

Article 15

Where the modifications made by a patent applicant to the specifications and drawings of its claim are clearly recorded in the original specifications, drawings and claim, or can be directly and unambiguously determined by persons of ordinary skill in the art, the competent people's court shall determine that the modifications are in compliance with Article 33 of the Patent Law.

Article 16

Where a patent applicant modifies its claim, and the modified claim meets the requirements of Paragraph 4 of Article 26 of the Patent Law that a claim shall be based on specifications, the competent people's court shall determine that the modifications are in compliance with Article 33 of the Patent Law.

Article 17

The background art described in the specifications of a claim shall generally not be regarded as prior art referred to in Paragraph 2 of Article 22 of the Patent Law, unless there is evidence that such background art has been disclosed before the date of patent application.

The contents disclosed in comparative documents shall include technical contents that are clearly described in the comparative documents and technical contents that can be directly and unambiguously determined by persons of ordinary skill in the art.

Article 18

A people's court shall generally determine the technical field of a patent based on the claim, in light of the title of the patent and the technical functions and purposes achieved by the technical solution, and by reference to the lowest level of the patent in the International Patent Classification.

Article 19

A people's court shall, based on the technical effects produced by the distinguishing technical features between the claim as described in the specifications and drawings and the closest prior art, and in light of the overall understanding of the patented technical solution by persons of ordinary skill in the art, determine the technical problems actually solved by the claim. Where the technical effects produced by the distinguishing technical features are not clearly described in the specifications and drawings, the people's court may determine the technical problems actually solved by the claim in light of common knowledge in the art, the relationship between the distinguishing technical features and other technical features, the role of the distinguishing technical features in the patented technical solution, etc.

Where the technical problems actually solved by the claim are to provide alternative solutions for prior art, the claim is not required to have better technical effects than prior art.

Article 20

Where prior art provides technical teaching as a whole for the technical problems that are actually solved by a claim, the competent people's court shall determine that the claim is not in compliance with Paragraph 3 of Article 22 of the Patent Law. Under any of the following circumstances, the people's court may determine that technical teaching referred to in the preceding Paragraph exists:

(1) Where prior art has disclosed distinguishing technical features and that the distinguishing technical features can solve the technical problems actually solved by the claim;

(2) Where distinguishing technical features are common knowledge in the art, unless there is evidence to the contrary that it is not easy for persons of ordinary skill in the art to think of applying the common knowledge to the closest prior art; or

(3) Where parts not explicitly mentioned by prior art are selected purposefully within the scope disclosed in the prior art, but such parts do not generate any surprising technical effects.

Article 21

When determining the knowledge level and cognitive ability of the average consumer with regard to a design, a people's court shall generally take into consideration the design space of the relevant product with design patents.

For the purpose of the preceding Paragraph, a people's court may determine the design space of a product by taking the following factors into comprehensive consideration:

(1) The functions and purposes of the product;

(2) The intensity of existing designs;

(3) Customary designs;

(4) Mandatory provisions of laws and administrative regulations; and

(5) National and industry technical standards.

Article 22

A design feature that is solely determined by technical functions shall generally not affect the overall visual effects of a design patent, except for the positional relationship between the said design feature and other design features. The said design feature shall include the following types:

(1) A unique or non-selectable design feature for achieving technical functions; and

(2) Although the design feature is not unique or non-selectable for achieving technical functions, the changes in the choice of design features serving such purposes is not based on visual effects.

Article 23

Where the pictures or photographs of a design patent are contradictory or vague, making it impossible for the general consumer to determine the design to be protected based on such pictures or photographs and brief descriptions, the competent people's court shall determine that Paragraph 2 of Article 27 of the Patent Law is not complied with.

Article 24

Where the overall visual effects of a design patent and a prior design of a product of the same or a similar type are found to be the same or substantively the same with only subtle differences after comparison, the competent people's court shall determine that the design patent shall "belong to prior designs" under Paragraph 1 of Article 23 of the Patent Law.

Where the difference between a design patent and a prior design of a product of the same or a similar type after comparison does not have any significant impact on overall visual effects, the competent people's court shall determine that the design patent is not "obviously different" from the prior design under Paragraph 2 of Article 23 of the Patent Law.

Article 25

Where it is found after comparison that the overall visual effects of a design patent and another design patent of a product of the same type on the same date of patent application are the same or substantively the same with only subtle differences, the competent people's court shall determine that the first-mentioned design patent is not in compliance with Article 9 of the Patent Law that the same invention shall only be granted one patent.

Article 26

The competent people's court shall determine that a design patent constitutes "the same design" under Paragraph 1 of Article 23 of the Patent Law if after comparing the design patent with the design patent documents of a product of the same or a similar type that are filed before but announced on or after the date of patent application, the people's court finds that their overall visual effects are the same or substantively the same with only subtle differences.

Article 27

The competent people's court shall determine that there is no obvious difference between a design patent and a combination of prior design features if the average consumer, based on the design inspirations given by the prior designs as a whole, can easily think of converting, splicing or replacing design features to obtain a design that has the same or only subtly different overall visual effects and that does not have any unique visual effects.

Under any of the following circumstances, a people's court may determine that design inspirations referred to in the preceding Paragraph exist:

(1) Where the features of a single natural object are directly converted to be used on products with design patents;

(2) Where prior designs disclose the use of the design features of products of a specific type to patented products;

(3) Where the design features of different parts of products of the same type are simply spliced or replaced;

(4) Where prior designs disclose the simple combination of the design features of the products of a specific type; or

(5) Where an existing single pattern is directly used for products with design patents.

Article 28

When determining the unique visual effects referred to in Article 27 herein, a people's court may take the following factors into comprehensive consideration:

(1) The overall status of prior designs;

(2) Design space;

(3) The degree of association of product types;

(4) The number and difficulty of the combined design features;

(5) The effects of conversion, splicing or replacement on product functions; and

(6) Whether there exist difficulties that are hard to overcome.

Article 29

For the purpose of Paragraph 3 of Article 23 of the Patent Law, legitimate rights shall include works, trademarks, geographical indications, enterprise names, trade names, portraits, names, packaging or decoration unique to well-known products, etc.

Where the evidence submitted by a requester for declaration of invalidity serves to prove the conflict of rights under Paragraph 3 of Article 23 of the Patent Law, the competent people's court shall not uphold the contention by the relevant patentee that the said requester is not entitled to request for declaration of invalidity as it is not a holder of prior legitimate rights or an interested party. 

(Option 2 of Paragraph 2: Where the evidence submitted by a requester for declaration of invalidity cannot prove that it is a holder of prior legitimate rights or an interested party under Paragraph 3 of Article 23 of the Patent Law, the competent people's court shall uphold the contention by the relevant patentee on the foregoing ground that the said requester is not entitled to request for declaration of invalidity.)

Article 30

The competent people's court shall uphold the contention by a party concerned that any of the following acts committed by the Patent Re-examination Board constitutes "violations of statutory procedures" under Item (3) of Article 70 of the Administrative Procedure Law:

(1) Where the Patent Re-examination Board omits the facts and grounds put forward by the party concerned, which has substantively affected the rights of the party concerned;

(2) Where the Patent Re-examination Board fails to inform the party concerned of the members of the collegiate panel during the same re-examination procedures or procedures for request for declaration of invalidity, and it is found after review that certain members fail to abstain despite falling under circumstances requiring abstention; or

(3) Where the Patent Re-examination Board fails to notify an eligible party concerned to participate in the same re-examination procedures or procedures for request for declaration of invalidity, and the said party clearly raises objections.

Article 31

Where the Patent Re-examination Board conducts examination beyond the facts and grounds claimed by a requester for declaration of invalidity or requester for re-examination, and such examination does not fall under any of the circumstances where the Patent Re-examination Board may conduct examination ex officio in accordance with the law, the competent people's court shall uphold the contention of a party concerned that the Patent Re-examination Board has "exceeded authority" under Item (4) of Article 70 of the Administrative Procedure Law.

Article 32

Under any of the following circumstances, a people's court may, in accordance with Article 70 of the Administrative Procedure Law, render a judgment to revoke the erroneous parts of a decision made by the Patent Re-examination Board:

(1) Where the decision has made errors in determining some of the claims for rights in the relevant claim, while the determination of the remaining claims for rights is correct; or

(2) Where the decision has made errors in determining some design aspects in one design patent application under Paragraph 2 of Article 31 of the Patent Law, while the determination of the remaining design aspects is correct.

Article 33

Where the Patent Re-examination Board decides to declare a patent invalid after examining all the grounds and evidence presented for invalidity in the case at hand, but the competent people's court is of the opinion that none of the reasons for determining the patent invalid in the decision of the Patent Re-examination Board is established, the people's court shall render a judgment to revoke the said decision, and shall no longer render a judgment to order the Patent Re-examination Board to make a new decision. Where the patentee transfers, pledges or licenses the patent after being served the aforesaid decision or binding judgment, the competent people's court shall not uphold the contention by a party concerned that such transfer, pledge or licensing is not based on rights.

Article 34

Where relevant facts and the application of law have been clearly determined in a binding judgment/ruling of the competent people's court, and a party concerned files a lawsuit against a new decision made by the Patent Re-examination Board pursuant to the binding judgment/ruling, the competent people's court shall render a ruling on non-acceptance of the lawsuit in accordance with the law, and shall render a ruling to dismiss the filing of the lawsuit pursuant to the law if it has been accepted.

Article 35

Where a decision of the Patent Re-examination Board has made errors in the determination of facts or the application of law, but its conclusions on the validity of the patent in question are correct, the competent people's court may, in accordance with Article 69 of the Administrative Procedure Law, render a judgment to dismiss the plaintiff's litigation requests without revoking the decision.

Article 36

When adjudicating an administrative case on granting or affirming patents, a people's court may determine the time limit for a party concerned to submit evidence based on the contentions of the party concerned and case adjudication situations. Where the party concerned submits a piece of evidence beyond the prescribed time limit, the people's court shall order the party concerned to explain the reasons therefor; and, where the party concerned refuses to give any reason or the reasons provided thereby are not substantiated, the people's court shall not admit this particular piece of evidence.

Article 37

Where a party concerned contends that relevant technical contents belong to common knowledge in the art or that relevant design features belong to customary designs of products with design patents, the competent people's court shall require the party concerned to submit evidence as proof or provide sufficient explanations.

Article 38

Where the Patent Re-examination Board introduces the concept of common knowledge or customary design ex officio during the procedures for granting patents and listens to the opinions of a party concerned on common knowledge or customary design, the competent people's court shall generally not uphold the contention by the party concerned that the Patent Re-examination Board has violated statutory procedures. Where the Patent Re-examination Board, without hearing, takes the initiative to introduce the concept of common knowledge or customary design that has not been mentioned by a party concerned during the procedures for affirming patents, the competent people's court shall generally uphold the contention by the party concerned that the Patent Re-examination Board has violated statutory procedures.

Article 39

Where a patentee submits new evidence during the adjudication of an administrative case on affirming patents to prove that the claim declared invalid by the Patent Re-examination Board shall remain valid, the competent people's court shall generally proceed to conduct examination. Where a requester for declaration of invalidity submits new evidence during the adjudication of an administrative case on affirming patents to prove that the patent in question shall be declared invalid, the competent people's court shall generally not admit the evidence except under any of the following circumstances:

(1) Where the evidence is used to prove common knowledge or customary design that has been claimed in the procedures for requesting for declaration of invalidity;

(2) Where the evidence is used to prove the knowledge level and cognitive ability of the average consumer with regard to products with design patents;

(3) Where the evidence is used to reinforce the probative force of evidence that has been admitted by the Patent Re-examination Board; or

(4) Where the evidence is used to refute the new evidence submitted by the patentee referred to in the preceding Paragraph.

Article40

Upon the effective date hereof, cases of first instance and cases of second instance currently under adjudication by people's courts shall be governed by these Provisions. These Provisions shall not apply to cases that have been closed upon final-instance prior to the implementation hereof but are re-adjudicated based on application by the parties concerned or pursuant to the law after the implementation hereof.