Interpretation of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Cases Involving Disputes over Infringement of Patent Rights (2009 Release)

Issuing Department: Supreme People's Court

Issue No.: Legal Interpretation [2009] No. 21

Issue Date: 2009.12.28

Implementation date: 2010.01.01

Limitations: Currently in force

The Interpretation of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Cases of Disputes over Infringement of Patent Rights In order to correctly adjudicate cases of disputes over infringement of patent rights, the Interpretation has been formulated based on the Patent Law of the People's Republic of China, the Civil Procedure Law of the People's Republic of China and other relevant laws, and in conjunction with the actual practice of trial.

Article 1 The people's court shall determine the scope of protection of the patent right according to the claim asserted by the right holder, based on the provisions of Article 59(1) of the Patent Law. The right holder in the court of first instance before the end of the argument to change the claim, the people's court shall allow. If the right holder claims that the scope of protection of the patent right shall be determined by the dependent claims, the people's court shall determine the scope of protection of the patent right by the additional technical features recorded in the dependent claims and the technical features recorded in the claims cited by the right holder.

Article 2 The people's court shall determine the contents of the claims as stipulated in Paragraph 1 of Article 59 of the Patent Law on the basis of the records of the claims and the understanding of the claims after reading the specification and the accompanying drawings by a person of ordinary skill in the field.

Article 3 The people's court may use the specification and accompanying drawings, the relevant claims in the claims, and the patent examination file to interpret the claims. If the specification has special definitions for the terms of the claims, the special definitions shall apply. If the meaning of the claims cannot be clarified by the above methods, the claims can be interpreted by combining the publicly known literature such as tool books and textbooks and the common understanding of the ordinary technicians in the field.

Article 4 For technical features expressed as functions or effects in the claims, the People's Court shall determine the contents of such technical features in conjunction with the specific implementations of such functions or effects described in the specification and accompanying drawings and their equivalent implementations.

Article 5 Where a technical program described only in the specification or the accompanying drawings but not recorded in the claims is included in the scope of protection of the patent right by the right holder in the case of dispute over infringement of the patent right, the people's court shall not support such inclusion.

Article 6 The people's court shall not support the patent applicant or the patentee in the patent grant or invalidation proceedings, through the modification of the claims, the specification or the statement of opinion to give up the technical solution, and the right holder in the dispute over the infringement of the patent right to incorporate the technical solution into the scope of protection of the patent right.

Article 7 The people's court shall determine whether the allegedly infringing technical program falls within the scope of protection of the patent right, and shall examine all the technical features recorded in the claims claimed by the right holder. The accused infringing technical program contains the same or equivalent technical features as all the technical features recorded in the claims, the people's court shall determine that it falls within the scope of protection of the patent right; the accused infringing technical program of technical features compared with all the technical features recorded in the claims, lack of more than one of the technical features recorded in the claims, or more than one of the technical features are not the same or not equivalent, the people's court shall hold that it does not fall within the scope of protection of the patent right.

Article 8 Where a design identical with or similar to an authorized design is adopted on a product of the same or similar type as the patented design, the people's court shall determine that the infringing design falls within the scope of protection of the patent right for the design as stipulated in the second paragraph of Article 59 of the Patent Law.

Article 9 The people's court shall, based on the use of the design product, determine whether the product categories are the same or similar. To determine the use of the product, reference may be made to the brief description of the design, the international design classification table, the function of the product as well as the sale of the product, the actual use of the product and other factors.

Article 10 The people's court shall determine whether a design is identical or similar by the level of knowledge and cognitive ability of the average consumer of the patented design product.

Article 11 the people's court determines whether the design is identical or similar, shall be based on the authorized design, the infringing design design features, to the overall visual effect of the design for a comprehensive judgment; for the technical function of the design features as well as the overall visual effect does not have an impact on the product's materials, internal structure and other features, shall not be taken into account.

The following circumstances usually have more influence on the overall visual effect of the design:

(i) The parts of the product that are easily and directly observed in normal use relative to other parts;

(ii) The design features of the authorized design that distinguish it from the existing design vis-à-vis other design features of the authorized design. Where there is no difference in the overall visual effect between the infringing design and the authorized design, the people's court shall find that they are identical; where there is no substantial difference in the overall visual effect, the people's court shall find that they are similar.

Article 12 Where a product infringing a patent right for invention or utility model is used as a component to manufacture another product, the people's court shall determine that it is an act of use as stipulated in Article 11 of the Patent Law; and where such another product is sold, the people's court shall determine that it is an act of sale as stipulated in Article 11 of the Patent Law. If the product infringing the design patent right is used as a component to manufacture and sell another product, the people's court shall determine that it belongs to the sales behavior stipulated in Article 11 of the Patent Law, except that the product infringing the design patent right has only a technical function in the other product. For the cases stipulated in the first two paragraphs, where there is a division of labor between the accused infringers, the people's court shall find that it is a joint infringement.

Article 13 With regard to the original products obtained by using the patented method, the people's court shall recognize them as the products directly obtained in accordance with the patented method as stipulated in Article 11 of the Patent Law. For the act of further processing and treating the said original products to obtain subsequent products, the people's court shall recognize that they are products directly obtained in accordance with the patented method as stipulated in Article 11 of the Patent Law.

Article 14 Where all the technical features of the accused falling within the scope of protection of the patent right are the same as or have no substantial difference with the corresponding technical features of a prior art program, the people's court shall determine that the technology implemented by the accused infringer belongs to the prior art as stipulated in Article 62 of the Patent Law.

Where the alleged infringing design is the same as or not materially different from an existing design, the people's court shall determine that the design implemented by the alleged infringer belongs to the existing design as stipulated in Article 62 of the Patent Law.

Article 15 The people's court shall not support the claim of the infringer of the illegally obtained technology or design to claim the defense of prior use right.

Where one of the following circumstances exists, the people's court shall find that the necessary preparations for manufacture and use have been made as provided in Article 69(2) of the Patent Law:

(a) has completed the implementation of the invention and creation of the main technical drawings or process documents necessary;

(b) has manufactured or purchased the main equipment or raw materials necessary for the implementation of the invention-creation.

The original scope as stipulated in Article 69(2) of the Patent Law includes the scale of production existing before the date of patent application, as well as the scale of production that can be achieved by utilizing the existing production equipment or according to the existing production preparation.

The prior use right holder after the patent application date will have implemented or made the necessary preparations for the implementation of the technology or design transfer or license others to implement, the infringer claimed that the implementation of the implementation of the original scope of the continuation of the implementation of the people's court shall not support, but the technology or design and the original enterprise together with the transfer or inheritance of the exception.

Article 16 The people's court based on the provisions of Article 65(1) of the Patent Law to determine the infringer's benefit from the infringement shall be limited to the infringer's benefit from the infringement of the patent right; the benefit arising from other rights shall be reasonably deducted. Where a product infringing a patent right for invention or utility model is a component part of another product, the people's court shall reasonably determine the amount of compensation based on the value of the component part itself and its role in realizing the profit of the finished product.

Where the product infringing the patent right for design is a package, the people's court shall reasonably determine the amount of compensation in accordance with the value of the package itself and its role in realizing the profit of the packaged product, and other factors. Article 17 Where the product or the technical program for manufacturing the product is known to the public at home and abroad before the date of patent application, the people's court shall determine that the product does not belong to a new product as stipulated in Paragraph 1 of Article 61 of the Patent Law.

Article 18 Where a right holder issues a warning to another person of infringement of patent right, and the person warned or the interested party has been reminded in writing of the right holder's right to exercise the right of action, and within one month from the date of receipt of such written reminder by the right holder or within two months from the date of issuance of such written reminder, the right holder fails to withdraw the warning or file a lawsuit, and the person warned or the interested party files a lawsuit with the people's court requesting confirmation of the non-infringement of the patent right by the person's conduct The people's court shall accept the case.

Article 19 Where the alleged infringement of patent right occurred before October 1, 2009, the people's court shall apply the Patent Law before amendment; where the alleged infringement occurred after October 1, 2009, the people's court shall apply the Patent Law after amendment. Where the alleged infringement of patent right occurred before October 1, 2009 and continued after October 1, 2009, and the infringer is liable to pay compensation according to the provisions of the pre-amended and amended Patent Law, the people's court shall apply the amended Patent Law to determine the amount of compensation.

Article 20 Where the relevant judicial interpretations previously issued by the Court are inconsistent with this Interpretation, this Interpretation shall prevail.