The Supreme People's Court of the P.R.C. Promulgates
New Judicial Interpretation on Patent Infringement

On December 28, 2009 the Supreme People’s Court of the P.R.C. promulgated “the Supreme People’s Court Interpretation on Several Issues Concerning the Application of Laws in the Trial of Cases of Patent Infringement Disputes” (Hereinafter referred to as Interpretation). The Interpretation has taken effect as of January 1, 2010. The Interpretation relates to the major issues of application of laws arising out of the current trials of patent infringement cases, including the determination of the protection scope of the patent right for invention and utility model, the principles for determining infringements of the patent right for invention and utility model, the principles for determining infringements of the patent right for design, application of prior art defense and prior use right defense, and acceptance of non-infringement proceedings etc.. The Interpretation consists of twenty articles. It provides a uniform judicative basis for the trial of the patent infringement cases.

Determination of Protection Scope of Patent Right
Articles 1 to 4 of the Interpretation relate to the determination of the protection scope of the patent right. According to Article 1, the court shall determine the protection scope of the patent right on the basis of the claim(s) a right holder contends and in accordance with Article 59 (1) of the Patent Law. Where the right holder changes his claim(s) before the conclusion of arguments in court of first instance, the court should approve. If the right holder contends that the protection scope of the patent right is decided by dependent claims, the court shall determine the protection scope of the patent right based on the additional technical features contained in the dependent claims and the technical features contained in their referred claims. Obviously, theses provisions clarify that “the claims” provided in Article 59 (1) of the Patent Law do not merely refer to the independent claim(s). The right holder of the patent right has a right to choose dependent claims as a base of the determination of the protection scope of the patent right.

Article 2 embodies the principle of compromise interpretation of the claims. The court shall determine the contents of the claims provided in Article 59 (1) of the Patent Law on the basis of the description of the claims and the understanding of the claims by a person skilled in the art through reading the description and the drawings.

Article 3 of the Interpretation provides the guidelines of interpretation of the claims. It prescribes that the court may make interpretation of the claims by using the description, the drawings, other relevant claims and the files of patent examination. If there is the special definition of the terms of the claims in the description, the said special definition shall be followed. When the meaning of the claims cannot be determined by the method mentioned above, the interpretation of the claims may be made by reference to the documents known to the public such as reference books and textbooks and the general understanding by the person skilled in the art.

Limitation to Application of Doctrine of Equivalents
Article 5 of the Interpretation provides a “dedication rule”, that is, when the technical solutions are described in the description but not contained in the claims, the technical solutions will be regarded as the technical solutions dedicated to the public by the patentee. Therefore, in the patent infringement proceedings, the court shall not support the claims when the patentee asserts the dedicated contents belong to the scope defined by equivalent features. In fact, this dedication rule constitutes a limitation to the application of the doctrine of equivalents.

Estoppel Rule
Article 6 of the Interpretation relates to the estoppel rule. It prescribes that as for the technical solution which is abandoned by the patent applicant or patentee in the procedures of grant of patent right or in the invalidation procedures through making amendments of the claims or the description or making the observation(s), where the right holder incorporates the said technical solution in the protection scope of the patent right in the cases of patent infringement disputes, the court shall not support the claim. Those provisions of Article 6 mean that the patentee cannot claim the protection of the abandoned solution or contents. The restrictive amendments or observations in fact made by the applicant or patentee are irrevocable, regardless the motivation of the amendments or observations, the causality between the amendments or observations and the requirements of grant of patent right and acceptance of the examiner.

Determination of Patent Infringement
The determination of patent infringement is of great difficulty and vital importance in the practice of patent trial. Article 7 of the Interpretation provides the fundamental approach for determining patent infringements, that is, the so-called “all element rule” for determining patent infringements. According to Article 7, when the court determines whether the accused technical solution falls into the protection scope of the patent right, the court shall examine all technical features defined in the claims the right holder contends. Where the accused technical solution covers the features that are identical or equivalent to all technical features defined in the claims, the court shall determine that the accused technical solution falls into the protection scope of the patent right; where, compared with all technical features defined in the claim(s), there is a lack of one or more technical features defined in the claim(s), or one or more technical features are not identical or equivalent, the court shall determine that the accused technical solution does not fall into the protection scope of the patent right.

Prior Art Defense
According to Article 62 of the Patent Law, in a patent infringement dispute, where a person accused for infringement has evidence to prove that the technology or design that he exploits belongs to prior art or prior design, no infringement of patent is constituted. The Interpretation specifies how to determine whether the technology exploited by the accused infringer falls into the existing technology. Article 14 prescribes that where all the accused technical features which are fallen into the protection scope of the patent right are identical or no-substance differences compared with the corresponding technical features of one technical solution in prior art, the court shall find that the technology which the accused infringer exploits is the existing technology as provided in Article 62 of the Patent Law.

Determination of Similarity of Designs
Articles 8 to 11 of the Interpretation provide the guidelines to determine the similarity of the design.

According to the current laws, the patented design should be incorporated in a product as the carrier of the design. The determination of similarity of the design is based on the identical or similar class of products. Article 8 provides that where the design identical or similar to the patented design is incorporated in the product of the class identical or similar to the product of the patented design, the people’s court shall determine that the accused design falls into the extent of protection of the patent right for design provided in Article 59 (2) of the Patent Law. Article 9 provides that the court shall determine whether the class of the product is identical or similar according to the use of the product of the design. In determining the use of the product, the court refers to the brief explanation of design, the International Classification for Industrial Designs, function of the product, the product sales and actual use. Article 10 provides the subject of judgment. The court shall judge whether the designs are identical or similar, referring to a level of knowledge and a cognitive ability of a normal consume of the product for design. According to Article 11, the court shall comprehensively judge whether the designs are identical or similar, based on the patented design and the design features of the accused design and in the light of the overall visual effect of the design; the design features which are mainly defined by the technical function, the product material and internal structures which do not influence the overall visual effect shall not be considered. In general, the overall visual effect of the design will be notably influenced in the following circumstances:

1. The portions which can be observed easily and directly when the product is normally used, compared with other portions of the product;

2. The features of the patented design which are different from the existing design, compared with other features of the patented design. Where there is no difference between the accused design and the patented design in the overall visual effect, the court shall determine the two designs are the same; where there is no-substance difference in the overall visual effect, the court shall determine the two is similar.