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 a special definition of the terms of the claims, the special definition shall apply. If the meaning of the claims cannot be clarified by the above methods, the claims may be interpreted in conjunction with tools, textbooks and other well-known literature, as well as the common understanding of people of ordinary skill 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 the 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 authorization or invalidation proceedings, through the modification of the claims, the specification or the statement of opinion and give up the technical solution, the right holder in the dispute over infringement of the patent right to include it in the scope of protection of the patent right.

Article 7 The people's court decides whether the accused infringing technical program falls into the scope of protection of the patent right, it shall examine all the technical features recorded in the claims claimed by the right holder. The 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 infringing technical program and the technical features of the claims recorded in the technical features, compared with the claims recorded in all the technical features, 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 provided for 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 shall, in determining whether a design is identical or similar, make a comprehensive judgment on the basis of the design features of the authorized design and the infringing design, and on the overall visual effect of the design; and shall not take into account the design features which are mainly determined by the technical function, as well as the material and internal structure of the product which do not have any effect on the overall visual effect.

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

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

(ii) The design features of the authorized design that distinguish it from the existing design relative to 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 preceding two paragraphs, where there is a division of labor and cooperation between the accused infringers, the people's court shall find that it is a joint infringement.

Article 13 For the use of the original product obtained by the patented method, the people's court shall recognize as the products directly obtained in accordance with the patented method as stipulated in Article 11 of the Patent Law. For further processing and treatment of the said original products to obtain the subsequent products, the people's court shall recognize the use of the 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 not substantially different from 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 infringing design is identical to 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 Where an accused infringer claims a prior-use right defense on the basis of illegally obtained technology or design, the people's court shall not support it.

Where one of the following circumstances exists, the people's court shall find that the person has made the necessary preparations for manufacture or use as stipulated in Article 69(2) of the Patent Law.

The necessary preparations for manufacture and use have been made as stipulated in Article 69(2) of the Patent Law:

(a) The main technical drawings or process documents necessary for the implementation of the invention or creation have been completed;

(b) the main equipment or raw materials necessary for the implementation of the invention-creation have been manufactured or purchased. 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 and 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 the first paragraph of Article 65 of the patent law to determine the infringer for infringement of the benefits obtained by the infringer shall be limited to the infringer for infringement of the patent rights of the benefits obtained by the infringer's behavior; due to the benefits arising from the 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. Infringement of the patent right for design products for packaging, the people's court shall in accordance with the value of the packaging itself and its role in realizing the profits of the packaged products and other factors to determine the amount of compensation.

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.