Provisions of the Supreme People's Court on Several Issues concerning the Application of Law in the Trial of Administrative Cases concerning Patent Authorization and Confirmation ((I) 2020)

Issued by: Supreme People's Court

Document No.: Fashi [2020] No. 8

Release Date: 2020.09.10

Implementation Date: 2020.09.12

Timeliness: Current Effective

Announcement of the Supreme People's Court of the People's Republic of China

Provisions of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Administrative Cases concerning Patent Authorization and Confirmation

The (I) Law, as adopted at the 1810th meeting of the Judicial Committee of the Supreme People's Court on August 24, 2020, is hereby issued, and shall come into force on September 12, 2020.

Supreme People's Court

10 September 2020

Provisions of the Supreme People's Court on Several Issues concerning the Application of Law in the Trial of Administrative Cases concerning Patent Authorization and Confirmation

(I)

(Adopted at the 1810th meeting of the Judicial Committee of the Supreme People's Court on August 24, 2020, and implemented as of September 12, 2020, Law Interpretation [2020] No. 8) In order to correctly hear patent authorization and confirmation administrative cases, these Provisions are formulated in accordance with the Patent Law of the People's Republic of the People's Republic of China, the the People's Republic of China Administrative Procedure Law and other legal provisions, and in light of the actual trial.

Article 1 The patent authorization administrative case referred to in these Provisions refers to a case in which a patent applicant brings a lawsuit in a people's court because he does not accept the decision on patent reexamination request made by the patent administration department under the State Council. The term "administrative cases for patent confirmation" as mentioned in these Provisions refers to a case in which the patentee or the applicant for invalidation has filed a lawsuit in a people's court because he does not accept the decision on the examination of the patent invalidation request made by the administrative department for patent under the State Council. The decision to be sued as mentioned in these Provisions refers to the decision on the examination of the request for patent reexamination and the decision on the request for patent invalidation made by the patent administration department under the State Council.

Article 2 The people's court shall define the terms of the claims according to the ordinary meaning understood by the technicians in the technical field to which they belong after reading the claims, specifications and drawings. If the terms of the claims are clearly defined or described in the specification and the drawings, they shall be defined. If it cannot be defined in accordance with the provisions of the preceding paragraph, it may be defined in combination with the technical dictionaries, technical manuals, reference books, textbooks, national or industrial technical standards commonly used by technicians in the technical field to which it belongs.

Article 3 When defining the terms of claims in administrative cases of patent right confirmation, the people's court may refer to the relevant statements of the patentee that have been adopted by the effective judgment of the patent infringement civil case.

Article 4 If there are obvious errors or ambiguities in the grammar, words, numbers, punctuation, graphics, symbols, etc. in the claims, description and drawings, but the technical personnel in the technical field can reach the only understanding by reading the claims, description and drawings, the people's court shall make a determination based on the only understanding.

Article 5 If the parties have evidence to prove that the patent applicant and patentee violate the principle of good faith, fabricate or fabricate the specific implementation methods, technical effects, data, charts and other relevant technical contents in the specification and drawings, and claim that the relevant claims do not conform to the relevant provisions of the Patent Law, the people's court shall support it.

Article 6 If the specification does not fully disclose the specific technical content, resulting in one of the following circumstances on the date of patent application, the people's court shall determine that the specification and the claims related to the specific technical content do not comply with the provisions of Article 26, paragraph 3 of the Patent Law:

The technical scheme limited by the (I) claims cannot be implemented;

The technical problems to be solved by the invention or utility model cannot be solved by the (II) implementation of the technical solutions defined in the claims;

(III) confirming that the technical solutions defined in the claims can solve the technical problems to be solved by the invention or utility model and require excessive labor.

The people's court shall not support the claim that the claim related to the specific technical content conforms to the provisions of paragraph 4 of Article 26 of the Patent Law on "the claim shall be based on the specification" only on the specific technical content that has not been fully disclosed as provided in the preceding paragraph.

Article 7 If a technician in the technical field believes that a claim has one of the following circumstances based on the specification and drawings, the people's court shall determine that the claim does not comply with Article 26, paragraph 4, of the Patent Law, which clearly limits the scope of patent protection required:

The type of the subject matter of the invention defined by the (I) is not clear;

(II) the meaning of the technical features in the claims cannot be reasonably determined;

There are obvious contradictions between (III) technical characteristics and cannot be reasonably explained.

Article 8 After reading the specification and drawings, the technical personnel in the technical field to which they belong cannot obtain or reasonably summarize the technical solution defined by the claim on the filing date, the people's court shall determine that the claim does not comply with Article 26 of the Patent Law. Paragraph 4 stipulates that "the claim shall be based on the specification.

Article 9 Technical features limited by function or effect refer to technical features such as structure, components, steps, conditions or the interrelationship between technical features, etc., which are only limited by their function or effect in the invention, except that the technical personnel in the technical field can directly and clearly determine the specific embodiment of realizing the function or effect by reading the claims. For the technical features specified in the preceding paragraph that are limited by function or effect, if the claims, description and drawings do not disclose any specific embodiment that can achieve the function or effect, the people's court shall find that the description and the claims with the technical features do not comply with the provisions of paragraph 3 of Article 26 of the Patent Law.

Article 10 Where an applicant for a pharmaceutical patent submits supplementary experimental data after the date of application and claims to rely on the data to prove that the patent application complies with the provisions of Article 22, paragraph 3, and Article 26, paragraph 3, of the Patent Law, the people's court shall review it.

Article 11 If the parties dispute the authenticity of the experimental data, the party submitting the experimental data shall provide evidence to prove the source and formation process of the experimental data. The people's court may notify the person in charge of the experiment to appear in court and explain the experimental materials, procedures, conditions, environment or parameters, as well as the personnel and institutions that completed the experiment.

Article 12 When determining the technical field of the technical solution defined by the claims, the people's court shall comprehensively consider the full content of the claims such as the subject name, the description of the technical field and background technology, and the functions and uses realized by the technical solution.

Article 13 If the specification and drawings do not clearly record the technical effect that the distinguishing technical feature can achieve in the technical scheme defined in the claim, the people's court may combine the common knowledge in the technical field to which it belongs, according to the relationship between the distinguishing technical feature and other technical features in the claim, the role of the distinguishing technical feature in the technical scheme defined in the claim, etc, identify the technical problems actually solved by the claims that can be determined by those skilled in the art. If the sued decision fails to identify or incorrectly identifies the technical problems actually solved by the claim, it shall not affect the people's court's determination of the creativity of the claim in accordance with the law. Article 14 If the people's court determines the knowledge level and cognitive ability of the general consumers of the design patent product, it shall consider the design space of the design patent product at the date of application. If the design space is large, the people's court may determine that the general consumer is usually less likely to notice the smaller difference between different designs; if the design space is small, the people's court may determine that the general consumer is usually more likely to notice the smaller difference between different designs. For the determination of the design space referred to in the preceding paragraph, the people's court may comprehensively consider the following factors:

Functions and uses of (I) products;

(II) the overall condition of the existing design;

(III) customary design;

Mandatory provisions of (IV) laws and administrative regulations;

(V) national and industrial technical standards;

(VI) other factors to consider.

Article 15 If there are contradictions, deficiencies or ambiguities in the pictures or photos of the design, resulting in the general consumers being unable to determine the design to be protected based on the pictures, photos and brief descriptions, the people's court shall determine that it does not comply with the Patent Law Article 27, paragraph 2, on "clearly showing the design of the product for which patent protection is required.

Article 16 When determining whether a design conforms to the provisions of Article 23 of the Patent Law, the people's court shall comprehensively judge the overall visual effect of the design. Design features that are necessary or have only a limited selection in order to achieve a specific technical function do not have a significant impact on the overall observation and comprehensive judgment of the visual effect of the design patent.

Article 17 Where a design has the same overall visual effect as an existing design of a product of the same or similar type or belongs to the same situation such as having only local subtle differences, the people's court shall determine that it constitutes "an existing design" as stipulated in the first paragraph of Article 23 of the Patent Law ". Except for the circumstances specified in the preceding paragraph, if the difference between a design and an existing design of the same or similar type of product does not have a significant impact on the overall visual effect, the people's court shall determine that it does not have the "obvious difference" stipulated in the second paragraph of Article 23 of the Patent Law ".

The people's court shall, on the basis of the use of the design product, determine whether the product categories are the same or similar. To determine the purpose of the product, you can refer to the brief description of the design, the product classification table of the design, the function of the product, and the sales and actual use of the product.

Article 18 If a design patent has the same overall visual effect as another design patent applied for on the same day on the same type of product or belongs to the same situation such as having only local subtle differences, the people's court shall determine that it does not comply with the Patent Law. Article 9 stipulates that "only one patent can be granted for the same invention-creation.

Article 19 If a design is compared with another design that is filed before the application date and announced after the application date, and belongs to the same or similar type of product, the overall visual effect is the same or belongs to the substantially same situation such as only local subtle differences, the people's court shall determine that it constitutes the "same design" as stipulated in the first paragraph of Article 23 of the Patent Law ".

Article 20 According to the design enlightenment given by the existing design as a whole, the appearance design that is the same as the overall visual effect of the appearance design patent or has only local subtle differences and other substantially the same appearance design is obtained by means of conversion, assembly or replacement of design features that are easy for ordinary consumers to think of, and does not have unique visual effects, the people's court shall determine that the design patent does not have the "obvious difference" as stipulated in the second paragraph of Article 23 of the Patent Law compared with the combination of existing design features ".

Under any of the following circumstances, the people's court may determine that the design revelation referred to in the preceding paragraph exists:

(I) the design features of different parts of the same kind of product are combined or replaced;

(II) existing design discloses the transfer of design features of a particular category of product to the design patented product;

(III) existing designs disclose the combination of design features of different specific types of products;

(IV) the pattern in the existing design is directly or only slightly changed for use in the design patented product;

(V) transferring the characteristics of a single natural object to the patented product of design;

(VI) the design is obtained by simply adopting the basic geometric shape or only making minor changes;

(VII) are designed using all or part of buildings, works, logos, etc. that are generally known to consumers.

Article 21 When determining the unique visual effects referred to in Article 20 of these Provisions, the people's court may comprehensively consider the following factors:

(I) design space for patented products;

Correlation of (II) product categories;

The number and ease of design features (III) to be transferred, combined and replaced;

(IV) other factors to consider.

Article 22 The "lawful rights" mentioned in Article 23, paragraph 3 of the Patent Law include the lawful rights or interests enjoyed in respect of works, trademarks, geographical indications, names, enterprise names, portraits, as well as the names, packaging, decorations, etc. of goods that have a certain impact.

Article 23: The parties claim that the following circumstances in the review procedure for patent reexamination and invalidation request belong to "violation of legal procedures" as stipulated in Item 3 of Article 70 of the Administrative Litigation Law, and the people's court shall support it:

The (I) omits the reasons and evidence put forward by the parties and has a substantial impact on the rights of the parties;

The (II) fails to notify the patent applicant, patentee and invalidation requester who should participate in the examination procedure according to law, which has a substantial impact on their rights;

The (III) fails to inform the parties of the members of the collegiate group, and the members of the collegiate group do not withdraw because of the statutory reasons for withdrawal;

(IV) failing to give the party against whom the decision is asserted an opportunity to present its views on the grounds, evidence and facts on which the decision is asserted;

(V) taking the initiative to introduce common knowledge or customary design not claimed by the parties, failing to listen to the opinions of the parties and having a substantial impact on the rights of the parties;

(VI) other violations of legal procedures that may have a substantial impact on the rights of the parties.

Article 24: Where the accused decision has one of the following circumstances, the people's court may partially revoke it in accordance with the provisions of Article 70 of the Administrative Litigation Law:

(I) the respondent decides that some of the claims are incorrect and the rest are correct;

(II) the accused decides that part of the design determination in "an application for a patent for design" as stipulated in paragraph 2 of Article 31 of the Patent Law is wrong, and the rest is correct;

(III) other circumstances in which a partial revocation may be decided.

Article 25 If the people's court considers that the reasons for invalidation of the claim are untenable, the people's court shall decide to revoke or partially revoke the decision and, depending on the circumstances, the defendant shall decide to make a new review decision on the claim.

Article 26: The review decision is made again directly on the basis of the effective judgment and no new facts and reasons are introduced. If the party files a lawsuit against the decision, the people's court shall rule that it will not accept it; if it has already accepted it, it shall rule to reject the lawsuit according to law.

Article 27: Where the accused decision to ascertain the facts or apply the law is indeed improper, but the conclusion of the patent authorization confirmation is correct, the people's court may decide to reject the plaintiff's claim on the basis of correcting the relevant facts and the application of the law.

Article 28 If a party claims that the relevant technical content belongs to common knowledge or that the relevant design features belong to customary design, the people's court may require him to provide evidence or make explanations.

Article 29 Where a patent applicant or patentee provides new evidence in an administrative case of patent authorization and confirmation to prove that the patent application should not be rejected or the patent right should remain valid, the people's court shall generally examine it.

Article 30 The people's court shall generally not examine the new evidence provided by the applicant for invalidation in an administrative case of patent right confirmation, except for the following evidence:

(I) prove the common knowledge or customary design that has been claimed in the examination procedure for the request for invalidation of the patent;

(II) prove the knowledge level and cognitive ability of technicians in the technical field or general consumers;

(III) proving the design space or the overall condition of the existing design of the patented product;

(IV) to strengthen the probative force of the evidence that has been accepted in the examination procedure for the patent invalidation request;

(V) refuting the evidence provided by other parties in the proceedings.

Article 31 The people's court may require the parties to provide new evidence as provided for in Articles 29 and 30 of these Provisions.

If the evidence provided by the party to the people's court is required according to law in the patent reexamination and invalidation request examination procedure but has not been provided without justifiable reasons, the people's court shall generally not accept it.

Article 32 These Provisions shall come into force as of September 12, 2020. After the implementation of these Provisions, these Provisions shall apply to the cases of first and second instance being tried by the people's courts; these Provisions shall not apply to the retrial of cases that have already made effective judgments before the implementation of these Provisions.