On April 20 2017 the Beijing High People's Court issued the newly revised Guidelines for Patent Infringement Determination in Chinese, English and Japanese. The guidelines include sections on:

  • determining the scope of protection of inventions and utility models;
  • determining what constitutes invention and utility model infringement;
  • determining the scope of protection of design patents;
  • determining what constitutes design patent infringement;
  • determining patent infringement activities; and
  • defending against patent infringement.

In addition to the comprehensive rules on the above matters, the guidelines also provide rules on some much-discussed issues for the first time, such as standard-essential patents and graphical user interface (GUI) designs.

The revised guidelines follow the Supreme People's Court's Interpretation on Several Issues concerning the Application of Law in the Adjudication of Patent Infringement Dispute Cases (II).

This update summarises the major revisions that the guidelines have introduced, with reference to the Beijing High People's Court's introduction, which was published on its website.

Claim interpretation rules

Fairness principle Article 2 of the revised guidelines introduces a new fairness principle. According to this principle, when determining a claim's scope of protection, consideration must be given not only to how the patent protects the rights holder's interests, but also whether it is in the public interest not to include the prior art or a technical defect to be overcome by the patent in the claim's scope of protection.

Principle of interpretation – compliance with invention's objective Article 4 of the revised guidelines provides for a new interpretation principle. In order to be granted, a patent must comply with the invention's objective and solve a technical problem. On the presumption that the patent is effective, technical solutions that are incapable of achieving the invention's objective cannot be interpreted as falling within the claim's scope of protection in patent infringement proceedings. This principle is in line with the fairness principle.

The Supreme People's Court has also discussed this issue in patent prosecution proceedings. Nonetheless, since the purpose of claim interpretation in patent prosecution and infringement proceedings is different, the application of the principle in the two proceedings is also different.

Construction of different claims Article 17 of the revised guidelines has introduced a method for constructing different claims. In general, the scope of protection of an independent claim can be presumed to be different from that of its dependent claims unless there is contrary evidence to overturn such presumption.

Claim interpretation not limited to prescribed rules The term "include" in Article 13 has been amended to "included but not limited to", which should prevent the misunderstanding that a claim must be interpreted according to the rules prescribed in the guidelines. In practice, claim interpretation can take place throughout the entire infringement analysis process and is not limited to the three options listed in Article 13.

Interpretation relating to subject title and environment feature Article 25 of the revised guidelines includes the definition of a 'subject title'. In addition, Article 24 revises the meaning of an 'environment feature' and further clarifies the difference between the two terms in order to prevent the common misconception that a subject title is an environment feature. Under Article 24, an infringement determination involving environment features depends on whether the environment features listed in the claims are applicable to the accused technical solution, rather than whether they are actually applied in the accused technical solution. This article further details the exceptions to this rule.

Interpretation method for patentee's lexicography Article 28 of the revised guidelines introduces the so-called 'lexicographer rule'. Unless a patent's description provides no definition, a term with a special definition should generally be interpreted according to the definition in the description. This article further provides that the term will be interpreted to "best reflect the goal of the invention" when there is no definition for the lexicography in the patent's description.

Interpreting claims according to drawings The new Article 30 provides information on how to use drawings to interpret claims and states that "only the technical content that can be directly and unambiguously determined from the drawings by a person with ordinary skills in the art after reading the claims and description can be used to interpret the technical features in the claim".

Interpreting claims by embodiments The new Article 32 provides that, apart from statutory exceptions, "the protection scope of a patent shall not be limited to the particular embodiments disclosed in the description". Therefore, claims should not be directly interpreted as embodiments.

Interpretation of functional claims and doctrine of equivalents

Interpretation of functional claims The definition of a 'functional feature' in Article 18 of the guidelines has been amended in accordance with the Supreme People's Court's Interpretation on Several Issues concerning the Application of Law in the Adjudication of Patent Infringement Dispute Cases (II).

The new Articles 42 and 56 stipulate the methods to determine literal and equivalent infringement for claims involving functional features, respectively. However, these articles differ to the Supreme People's Court's judicial interpretation with regard to the specific determination rules of identical and equivalent infringement. The judicial interpretation provides that literal or equivalent infringement will be determined based on when the infringing behaviour occurs, whereas the above two articles provide that literal infringement will be determined based on the patent filing date.

Doctrine of equivalents Article 44 explicitly provides that the rights holder bears the burden of proof for equivalent infringement – that is, "evidence shall suffice to prove that the accused technical solution constitutes equivalent infringement". Arguably, this article aims to limit the application of equivalent infringement.

Articles 45 to 48 enhance the elements for determining equivalent infringement – namely:

  • "basically the same means";
  • "basically the same function"; and
  • "basically the same effect".

Article 49 provides rules on how to determine the technical feature that "can be anticipated without inventive effort".

Articles 45 to 49 provide guidance for judicial trials and the production of evidence.

In addition, Article 57 further regulates the determination of equivalent infringement involving numerical range features following the Supreme People's Court's judicial interpretation.

The new Article 60 explicitly provides that an allegation that alternative technical features constitute equivalent infringement will not be supported in a determination of infringement if "the right[s] holder knows or is able to foresee the existence of alternative technical features at the time of filing or amending the patent application but doesn't incorporate the alternative technical features into the protection scope".

This article is similar to the foreseeability limitation on the application of the doctrine of equivalents in US patent practice and aims to prompt patentees to define a patent's protection scope clearly and as early as possible. This article also reflects the rationale for Articles 42 and 56 providing different timeframes for determining identical and equivalent infringement (the patent filing date is important).

Design patent and GUI rules

Article 66 emphasises the overall comparison principle, which is similar to the so-called 'all elements' rule regarding inventions and utility models. The overall comparison principle requires that in determining the scope of protection of a design patent, consideration cannot be given to only some of the design features and not others. Further, this article provides, for the first time, an explicit definition of a 'design feature', which is not clearly defined in the State Intellectual Property Office (SIPO) Guidelines for Patent Examination. Therefore, it can be understood that during design patent prosecution proceedings, the new definition of 'design feature' will be an important reference for determining the validity of a design patent.

The new Articles 82 and 83 emphasise the impact that design space will have on determining whether designs are identical or similar. They also include detailed provisions that follow on from the Supreme People's Court's judicial interpretation.

Article 73 introduces provisions regarding GUI design protection. This article is the same as that provided in the SIPO Guidelines for Patent Examination and emphasises that the protected component is a product's design and not the GUI itself. This article also includes the principle that the protection scope of a dynamic GUI design will be "jointly determined by product design views that can determine the dynamic change process".

The new Articles 86 and 87 provide more detailed rules on the infringement determination method of static and dynamic GUI designs.

Contributory infringement

Articles 118 to 122 provide several typical examples of aiding and abetting another's direct infringement, in addition to those provided in the Supreme People's Court's judicial interpretation. Notably, all examples of aiding and abetting infringement require the actor to commit the contributory behaviour knowingly.

Abuse of patent rights and standard essential patents

Article 126 articulates that if a patentee obtained its patent in bad faith, the court may reject the plaintiff's claim. Since the guidelines focus on the determination of patent infringement, they include no provisions on issues regarding counterclaims or compensation for damages.

Article 127 provides several typical circumstances in which patents are acquired in bad faith, which will be a good guide in judicial practice.

The new Articles 149 to 153 mainly concern whether an injunction should be issued in standard-essential patent dispute cases. Article 149 follows the Supreme People's Court's judicial interpretation and provides that the licensing of recommended national, local or industrial standards must comply with the fair, reasonable and non-discriminatory (FRAND) rule. It further provides that the licensing of other standards drafted by international standard or other organisations must also follow the FRAND rule.

Article 150 provides that both negotiating parties must act in good faith (ie, the relevant obligations must be performed bilaterally rather than unilaterally).

Under Article 151, which concerns the allocation of the burden of proof, a patentee will bear the burden of proving the specific FRAND terms committed to in formulating the standard.

Article 152 provides that the general principle is not to issue an injunction in standard-essential patent dispute cases. It also lists the circumstances in which a patentee will be considered to have wilfully violated its FRAND licensing obligations.

Article 153 provides more detailed rules on when an accused party will be found to be faultless.

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