Introduction

On Jan. 19, 2015, the Adjudication Committee of the Supreme People’s Court of China passed the Decision on Amending the Several Provisions of the Supreme People's Court on Issues Relating to Application of Law to Adjudication of Cases of Patent Disputes, according to which the amended Provisions (i.e. the Several Provisions of the Supreme People's Court on Issues Relating to Application of Law to Adjudication of Cases of Patent Disputes) will come into force on Feb. 1, 2015. This is the second time for the Supreme People’s Court to amend the Provisions after it was promulgated on June 19, 2001. Only a slight amendment was made to the Provisions in 2013 for the first time.

The amendments to the Provisions include mainly the amendments for adapting it to the present Chinese Patent Law (2009) and the amendments for clarifying several essential issues in determining patent infringement. This article will give readers a general overview of the amendments made to the Provisions firstly, and then will focus on the essential issues by referring to some recent cases before the Supreme People’s Court or the rationale behind the amendments.

Anoverview of the amendments to the Provisions

1. locus delicti in design patent infringement litigation

 Article 5 of the Provisions was amended so that the place of infringement where the people’s court would have jurisdiction over the accused infringing act further includes the place where offering for sale of products incorporating the alleged design patent occurs.

Note: Generally speaking, Article 5 of the Provisions provides that a lawsuit instituted against a patent infringing act shall be within the jurisdiction of the people's court of the place where the defendant has its domicile or the place of infringement. The place of infringement includes both the place where infringing act takes place and the place where consequences of the infringing act arise. According to Article 11 of the present Chinese Patent Law, among the acts of infringing a design patent, “offering for sale”of a patented design is prohibited by the Law. Article 5 of the Provisions was therefore amended.

2. Submitting of a search report or an evaluation report for patentability

Article 8(1) of the Provisions was amended to read, for a utility model patent filed before Oct. 1, 2009 (not including that date), any plaintiff who takes action against infringement may furnish a search report made by the patent administrative department under the State Counsel, for a utility model patent or a design patent filed after Oct. 1, 2009, any plaintiff who takes action against infringement may furnish an evaluation report on patentability made by the patent administrative department under the State Council. According to any trial need, the people’s court may require the plaintiff to submit a search report or an evaluation report on patentability. If the plaintiff refuses to submit such a report without justa causa, the people’s court may stay the case or rule the case by having the plaintiff bear the adverse consequences.

Note: Since both utility mode patents and design patents are not substantially examined as to patentability before grant, there was a concern that the patent owner of a utility model patent or a design patent may make abuse of its right for unfair competition. As a response, Article 61(2) of the present Chinese Patent Law provides that where any infringement dispute relates to a patent for utility model or design, the people’s court or administrative authority for patent affairs may ask the patentee or any interested party to furnish an evaluation report on patentability made by the patent administration department under the State Council after having conducted search, analysis and evaluation of the relevant utility model or design, and use it as evidence for hearing or handling the patent infringement dispute.  Said evaluation report on patentability is different from a search report: 1) it is officially issued by the State Intellectual Property Office like an office action and can only be issued once, 2) only the patent owner or a person in privity may ask for such an evaluation report, but any others may look up it once it was made by the SIPO.

The court will generally refer to the search report or evaluation report on patentability to assess the validity of a utility mode patent or a design patent, so as to determine at its discretion, whether or not to stay the case if the accused infringer requests for invalidation of the alleged patent.

In spite of this, the previous Provisions did not tell whether it is mandatory for the patent owner to submit a search report or an evaluation report on patentability and what legal consequences might be on the patent owner if he refuses to submit such a report. Amended Article 8(1) of the  Provisions clarifies the role of a search report and evaluation report on patentability and will accordingly mitigate abuse of utility mode or design patent to some extent.

3. Stay of a case

Article 9 item (1) of the Provisions was amended to read, in a patent infringement dispute case of a utility model or design patent received by the people’s court, where the defendant files a request for invalidation of the patent within the reply period, the court may not stay the proceedings:

(1) where in the search report or evaluation report on patentability furnished by the plaintiff there is no any ground for invalidating the utility model patent or design patent.

Note: The amendment was made to take the evaluation report on patentability into consideration for the court to decide whether or not to stay a case in view of the present Chinese Patent Law and extends the previous cause of not staying a case when finding no “technical documentation leading to loss of novelty or inventiveness of the utility model patent”in a search report to when finding no “any ground for invalidating the utility model patent or design patent”in a search report or evaluation report on patentability.

Further, although both the search report and the evaluation report on patentability will have the effect of being taken into consideration for deciding whether or not to stay a case, the evaluation report on patentability might be more recognized than the search report, since it is officially and more seriously issued by the State Intellectual Property Office.

4. Fines against counterfeiting

Article 19of the Provisions was amended to read, where there is counterfeiting of another person's patent, the people's court may impose civil liability in accordance with the provisions of Article 63 of the Patent Law. Where the administrative authority for patent affairs does not impose any administrative penalty, the people's court may impose civil penalty pursuant to the provision of Article 134(3) of the General Principles of the Civil Law, and the amount of the applicable fine in civil terms may be determined by reference to the provisions of Article 63 of the Patent Law.

Note: Article 63 of the present Chinese Patent Law, corresponding to Article 58 of the previous Chinese Patent Law, provides that, where any person passes off a patent, in addition that his illegal earnings shall be confiscated, he may be imposed a fine of not more than four times his illegal earnings and, if there is no illegal earnings, a fine of not more than RMB 200,000 Yuan. As compared with corresponding Article 58 of the previous Chinese Patent Law, which provides that a person passing off the patent of another person may be imposed a fine of not more than three times his illegal earnings and if there is no illegal earnings, a fine of not more than RMB 50,000 Yuan, Article 63 of the present Chinese Patent Law greatly improves the administrative fines which may be imposed against an infringer.

5. Damages for patent infringement

a) Improved damages for patent infringement

Article 21 of the Provisions was amended in order to adapt to the present Chinese Patent Law, which enhances protection of patent right by increasing the damages for patent infringement, and reads, Where the losses of the patent owner or the income of the infringer is difficult to determine, the people's court may, where there is a patent royalty that may be referred to, reasonably determine the amount of compensation according to the type of patent right, the nature and circumstances of the infringing act, the nature, extent and time of a patent license etc. with reference to times of the patent royalty; where there is no patent royalty to be referred to or the patent royalty is obviously unreasonable, the people's court may, according to factors such as the type of the patent right, the nature and circumstances of the infringing act, determine the amount of compensation according to Article 65(2) of the Patent Law.

Note: Article 65(2) of the present Chinese Patent Law reads, Where it is difficult to determine the losses suffered by the right owner, the profits the infringer has earned and the exploitation fee of that patent under a contractual license, the people’s court may award damages of not less than RMB 10,000 Yuan and not more than RMB 1,000,000 Yuan in light of such factor, as the type of the patent right, the nature and the circumstances of the infringing act.

The above defined statutory damages, which is granted by the court fully at the judges’discretion in view of certain factors of the case, were improved under Article 65(2) of the present Chinese Patent Law, so does in the amended Provisions. This is totally in response to the criticisms that the damages granted to a patent owner in a patent litigation is too little to compensate the damages to the patent owner and even the lawyer’s fees. However, the demand for bigger damages is still very strong in the present.

b) Additionally grantable lawyers’fees

Article 22 of the Provisions was amended to read, Where the right owner claims that he has paid reasonable expenses for stopping the infringing act, the people’s court may additionally determine compensation besides the compensation determined according to Article 65 of the Patent Law.

Note: Article 22 of the Provisions was amended by giving the patent right owner the probability to additionally claim expenses for stopping the infringing act, especially the lawyers’fees. This will encourage patent owners to enforce their patent rights positively.

Insight into amendments to Article 17 of the Provisions[KY1]

Article 17 of the Provisions was amended to read,

“The protection scope of the patent right for invention or utility model shall be determined by the contents of the claims. The description and the accompanied drawings may be used to interpret the contents of the claims" prescribed in Article 59(1) of the Patent Law means that the protection scope of the patent right shall be determined by all the technical features recited in the claims, including the scope as determined by the features equivalent to the technical features.

An equivalent feature refers to the feature which perform substantially the same function, in substantially the same way to achieve substantially the same result as the feature recited in the claim, and which can be contemplated, at the time of the accused infringing act, by an ordinary person skilled in the art without inventive labour.

The amendments to Article 17 of the Provisionstouch upon several critical issues in patent infringement litigation

1. Application of the all-elements-rule

“All-elements-rule”in patent infringement as defined in Article 17(1) of the Provisions can be more definitely found in Article 7 of the Interpretation of the Supreme People’s Court on Several Issues Concerning Adjudicating Patent Infringement Disputes (effective from on 1 January 2010), which reads,

When a people's court adjudicates whether an accused infringing technical solution falls into the  protection scope of a patent right, it shall examine all the technical features recited in the claim asserted by the right owner.

If the accused infringing technical solution includes all the technical features or equivalent technical features recited in or as those recited in the claim, the people's court shall determine that the accused infringing technical solution falls into the protection scope of the patent right.  When comparing the technical features of the accused infringing technical solution and all the technical features recited in the claim, if one or more of the technical features recited in the claim are missing, or if one or more of the technical features are not identical or equivalent, the people's court shall determine that the accused infringing technical solution does not fall into the protection scope of the patent right.

From the above, it is clear that all of the features in a claim shall be considered in patent infringement assessment, regardless whether said features are indispensable technical features necessary for the purpose of the invention or not. The Provisions therefore was amended so as to delete the limitation of “indispensable” technical features in applying the all-elements-rule.

The “all-elements-rule”clearly denies application of the doctrine of “superfluity establishing”in China, under which doctrine, features which are obviously not necessary for the purpose of the invention (i.e. not indispensable features) in a claim, may be neglected for finding patent infringement. This will essentially broaden the protection scope defined by a patented claim and impair the public notice function of the claim.

Regarding application of the all-elements-rule in patent infringement litigation, the Supreme People’s Court have made some significant cases in refining its particular implication.

a) All features recited in a claim shall limit the protection scope

In Dalian Renda New Wall Building Materials Plant v. Dalian Xinyi Building Materials Co., Ltd, Dalian Renda being the exclusive licensee of the patented invention, “a concrete thin-walled cylinder structure”sued Danlian Xinyi for patent infringement.  Said concrete thin-walled cylinder structure consists of a cylinder tube and bottoms for closing both ends of the cylinder tube. The cylinder tube and bottoms contain separately "at least two or more layers" of glass fiber clothes. The accused infringing product of Dalian Xinyi differs from the patent in that its cylinder tube contains solely a layer of glass fiber cloth and its bottoms contain no glass fiber cloth. Both the first and second instance courts supported the claim of the plaintiff and held the defendant infringed the plaintiff’s patent right under the doctrine of equivalents.

In retrial, the Supreme People’s Court held that, "All of the technical features recited in the independent claim by the patentee are indispensable technical features that should not be ignored ... Only when all the technical features recited in the claims are given comprehensive and full respect, can confusion of public by unforeseeable changes in the contents of the claims be avoided and the certainty of legal rights be maintained so that the proper functioning and the value realization of the patent system can be fundamentally guaranteed.[KY2] ”[1] The Supreme People’s Court therefore held that the accused infringing product is different from the patent in view of the aforesaid differences and doesn’t fall within the protection scope of the patent right. The articulation of the Supreme People’s Court, though not absolutely, essentially ruled out the application of the doctrine of superfluity establishing in adjudication of patent infringement.

The Supreme People’s Court also denied application of the doctrine of equivalents when the alleged claim has clearly recited "at least two or more layers" of glass fiber clothes, while the accused infringing product contain solely a layer of glass fiber cloth or no glass fiber cloth.

b) Restriction of use environment features

In Shimano Co., Ltd. v. Ningbo Richi Industry & Trade Co., Ltd., claim 1 of the patent concerned calls for a bicycle rear derailleur bracket for connecting a rear derailleur to a bicycle frame, and includes two so called “use environment features”, i.e. the features in the claim defining the background or conditions under which the invention is employed, 1) the structural features in relation to the bicycle bracket and 2) the structural features in relation to the rear derailleur. By reviewing the file wrapper of the alleged patent, the Supreme People’s Court found that, the claimed bicycle rear derailleur bracket must be used with the rear fork end of the bicycle frame and with the rear derailleur with the defined structural features.

With regard to the two use environment features, the Supreme People’s Court held that, “use environment features already recited in a claim are indispensable technical features of the claim and function to limit the protection scope of the claim.”and that “generally, use environment features in a claim should be interpreted as that the claimed subject may be used in the environment rather than must be used in the environment, but the use environment features should be interpreted as the claimed subject must be used in the environment if a person skilled in the art can be explicitly and reasonably informed that the claimed subject must be used in the environment after reading the patent claims, the description and the file wrapper.”[2]

In this case, although the two use environment features are said “must be used in the environment”features, the Court found that the accused infringing product is necessarily used in commercial with the bicycle bracket as defined in the alleged claim, and necessarily presents the same assembling position features as in the alleged claim after assembling, besides having the other features of the alleged claim, the Court held that the accused infringing product falls into the protection scope of the alleged claim and constitutes infringement.

c) Restriction of the title of the claimed subject matter

In Xinghe Industry Co. Ltd. of Harbin Institute of Technology v. Jiangsu Runde Pipeline Co. Ltd., the Supreme People’s Court held that, “in determining the protection scope of a claim, the title of the claimed subject matter recited in the claim should be considered, and its practical limitation depends upon the impacts imposed on the claimed subject matter by the title.”[3]

In this case, the Court, by constructing the technical solutions of claims 2 and 6, found that, the title of the subject matter of claim 2, which defines “a process for manufacturing the drainage pipeline of steel strip reinforced plastics according to claim 1”, and the title of the subject matter of claim 6, which defines “an apparatus for manufacturing the drainage pipeline of steel strip reinforced plastics for implementing the process according to claim 2”would have essential impacts on claims 2 and 6 by referring to a preceding claim and therefore would have limitation to the claimed subject matters.

2. Timing in application of the doctrine of equivalents

Doctrine of equivalents effectively extends the protection scope of a patent beyond that defined literally. “The proper time for evaluating equivalency and thus knowledge of interchangeability between elements is at the time of infringement, not at the time the patent was issued.”[4] A very important consideration regarding doctrine of equivalents is the after-arising technology. “The doctrine of equivalents is necessary because one cannot predict the future. Due to technological advances, a variant of an invention may be developed after the patent is granted, and that variant may constitute so insubstantial a change from what is claimed in the patent that it should be held to be an infringement.”[5]

However, for a long time, in China, it was not clearly prescribed by laws or judicial interpretations the timing in determining patent infringement under the doctrine of equivalents. While for regular product and process claims, the courts took the time of infringement as the critical date for evaluating equivalency, for means-plus-function claims, the courts were not unified in application of the doctrine of equivalents as far as the critical date is concerned. Most courts kept silent on it, while some courts applied additional restriction on the doctrine of equivalents re means-plus-function claims. For example, the Beijing High People’s Court opined  in 2013 that “For a claim containing a means-plus-function feature…The time for determining the equivalence is the filing date of the patent.”[6]

Article 17(2) of the Provisions clarifies that, whatever the type of the features in a claim, equivalence under the doctrine of equivalents is evaluated at the time of infringement.

Conclusion

There are also in the Provisions some other minor amendments which don’t involve merits of the Provisions and will not be discussed here. The present Provisions after amendment generally enhances protection of patent right and refines several controversial issues in the past in China.