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

Issuing Department: Supreme People's Court

Issue Number：Fa Shi [2020] No. 8

Issue Date: 2020.09.10

Implementation date: 2020.09.12

Limitations: Currently in force

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 to the Trial of Administrative Cases Concerning Patent Authorization and Establishment of Rights

(I)" was adopted at the 1810th meeting of the Trial Committee of the Supreme People's Court on August 24, 2020, and is hereby promulgated and shall come into effect on September 12, 2020.

Supreme People's Court

September 10, 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 of Rights

(I)

(Adopted at the 1810th meeting of the Trial Committee of the Supreme People's Court on August 24, 2020, and effective as of September 12, 2020, and Judicial Interpretation [2020] No. 8) These Provisions are formulated in accordance with the Patent Law of the People's Republic of China, the Administrative Litigation Law of the People's Republic of China, and other laws, and in the light of actual practice of adjudication for the purpose of adjudicating patent licensing and confirmation of rights administrative cases correctly.

Article 1 The administrative case of patent authorization referred to in these provisions refers to the case in which the patent applicant files a lawsuit in the people's court against the decision of the patent administrative department of the State Council on the examination of the patent reexamination request. This provision refers to the patent administrative cases, refers to the patentee or invalidation request for the patent administrative department of the state council for the invalidation of the patent request for review of the decision to the people's court cases. This provision refers to the decision, refers to the patent administrative department of the state council patent re-examination request review decision, patent invalidation request review decision.

Article 2 the people's court shall define the terminology of the claims in the ordinary meaning as understood by the technical personnel in the technical field after reading the claims, the specification and the accompanying drawings. Claim terms in the specification and the accompanying drawings have a clear definition or description, in accordance with its definition. If it cannot be defined in accordance with the preceding paragraph, it can be defined in conjunction with the technical dictionaries, technical manuals, tool books, textbooks, national or industrial technical standards, etc., which are commonly used by the technical personnel in the technical field.

Article 3 The people's court may refer to the relevant statements of the patentee which have been adopted by the effective decision of the civil case of patent infringement when defining the terms of the claims in the administrative case of patent assertion.

Article 4 Where there are obvious errors or ambiguities in the grammar, words, figures, punctuation, graphics, symbols, etc. in the claims, specifications and accompanying drawings, but a person skilled in the technical field to which they belong can arrive at a unique understanding by reading the claims, specifications and accompanying drawings, the people's court shall make a determination on the basis of such unique understanding.

Article 5 Where a party has evidence to prove that the patent applicant or the patentee has violated the principle of honesty and good faith by fictionalizing or fabricating the specific implementations, technical effects as well as data, charts and other relevant technical contents in the specification and accompanying drawings, and accordingly claims that the relevant claims do not conform to the relevant provisions of the Patent Law, the People's Court shall support the claim.

Article 6 Where 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 conform to the provisions of Paragraph 3 of Article 26 of the Patent Law:

(i) The technical program limited by the claims cannot be implemented;

(ii) the implementation of the technical program limited by the claims cannot solve the technical problem to be solved by the invention or utility model;

(iii) Confirming that the technical solution limited by the claim can solve the technical problem to be solved by the invention or utility model, which requires excessive labor.

Where a party only relies on the specific technical content which has not been fully disclosed as stipulated in the preceding paragraph to claim that the claims related to the specific technical content comply with the provisions of Paragraph 4 of Article 26 of the Patent Law that "the claims shall be based on the specification", the People's Court shall not support such a claim.

Article 7 Where a person skilled in the technical field to which he belongs considers, on the basis of the specification and the accompanying drawings, that a claim has one of the following circumstances, the people's court shall hold that the claim does not comply with the provisions of Paragraph 4 of Article 26 of the Patent Law concerning the clear limitation of the scope of the claimed patent protection:

(i) The type of subject matter of the invention limited is not clear;

(ii) The meaning of the technical features in the claim cannot be reasonably determined;

(iii) Where there are obvious contradictions between the technical features which cannot be reasonably explained.

Article 8 If, after reading the specification and the accompanying drawings, a person skilled in the technical field cannot obtain or reasonably summarize the technical scheme limited by the claims on the date of filing, the people's court shall determine that the claims do not comply with the provisions of Article 26(4) of the Patent Law that "the claims shall be based on the specification".

Article 9 Technical features limited by function or effect refer to technical features such as structures, components, steps, conditions, etc., or interrelationships between technical features, which are limited only by the function or effect they play in the invention, except for those technical personnel in the technical field to which they belong, who can directly and explicitly determine the specific implementation method for realizing such function or effect by reading the claims. Exceptions. For the technical features limited by function or effect as stipulated in the preceding paragraph, if the claims, the specification and the accompanying drawings do not disclose any specific implementation method capable of realizing such function or effect, the people's court shall determine that the specification and the claims with such 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 filing date, claiming to rely on such data to prove that the patent application conforms to the provisions of Article 22(3) and Article 26(3) of the Patent Law, the people's court shall examine the same.

Article 11 Where a dispute arises between the parties as to the authenticity of the experimental data, the party submitting the experimental data shall adduce 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 before the court to explain the raw materials, steps, conditions, environment or parameters of the experiment, as well as the personnel and institutions to complete the experiment.

Article 12 The people's court determines the technical field of the technical solution limited by the claim, it shall take into account all the contents of the claim such as the subject name, the specification on the technical field and background technology, as well as the functions and uses realized by the technical solution.

Article 13 Where the specification and the accompanying drawings do not clearly record the technical effect that the distinguishing technical feature can achieve in the technical solution limited by the claim, the people's court may, in conjunction with the public knowledge in the technical field to which it belongs, and in accordance with the relationship between the distinguishing technical feature and the other technical features in the claim, and the role of the distinguishing technical feature in the technical solution limited by the claim, determine that the technical effect that the claim actually solves is the same as that which the technical personnel in the technical field to which it belongs can determine. The respondent decided that the claim actually solved the technical problem. If the appealed decision fails to identify the technical problem actually solved by the claim or identifies it incorrectly, it shall not affect the people's court's determination of the creativity of the claim according to law. Article 14 The people's court determines the level of knowledge and cognitive ability possessed by the average consumer of the patented design product, and shall take into account the design space of the patented design product at the time of filing. Where the design space is large, the people's court may determine that the average consumer is usually less likely to notice smaller differences between different designs; where the design space is small, the people's court may determine that the average consumer is usually more likely to notice smaller differences between different designs. With regard to the determination of the design space referred to in the preceding paragraph, the people's court may take the following factors into consideration:

(i) The function and use of the product;

(ii) The overall condition of the existing design;

(iii) Customary design;

(D) Mandatory provisions of laws and administrative regulations;

(E) National and industry technical standards;

(vi) Other factors to be considered.

Article 15 Where the pictures or photographs of the design are contradictory, missing or ambiguous, resulting in the general consumers not being able to determine the design to be protected on the basis of the pictures, photographs and brief descriptions, the people's court shall determine that they do not comply with the provisions of Article 27(2) of the Patent Law concerning "clearly showing the design of the product for which patent protection is sought. " of the Patent Law.

Article 16 The people's court shall determine whether a design complies with the provisions of Article 23 of the Patent Law, and shall comprehensively judge the overall visual effect of the design. The design features which must be available or have only a limited choice for the realization of a specific technical function shall not have a significant influence on the overall observation and comprehensive judgment of the visual effect of the design patent.

Article 17: Where the overall visual effect of a design is the same as that of an existing design of the same or similar type of product, or where the overall visual effect is the same, or where the design is substantially the same with only minor local 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. In addition to the cases stipulated in the preceding paragraph, if the difference between the 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 is not "obviously different" as stipulated in Paragraph 2 of Article 23 of the Patent Law.

The people's court shall determine whether the product categories are the same or similar according to the use of the design products. Determine the use of the product, can refer to the brief description of the design, design product classification table, the function of the product, as well as the product sales, the actual use of the situation and other factors.

Article 18 If the overall visual effect of a design patent is the same as that of another design patent applied for on the same day for the same kind of product, or if the overall visual effect is the same, or if it is a case of substantial similarity with only local subtle differences, the people's court shall determine that it does not conform to the provisions of Article 9 of the Patent Law that "only one patent right can be granted for the same invention and creation". Article 19

Article 19 Where a design has the same overall visual effect or is substantially identical with another design filed before the filing date and published after the filing date, and belongs to the same or similar type of product, the people's court shall determine that it constitutes "the same design" as stipulated in Paragraph 1 of Article 23 of the Patent Law. ".

Article 20 Where, based on the design revelation given by an existing design as a whole, a design is obtained by transposing, combining or replacing design features that are easily thought of by ordinary consumers, and the overall visual effect of the design patent is the same, or there are only local subtle differences and other substantially the same design, and it does not have a unique visual effect, the people's court shall determine that the design patent does not have "obvious difference" as stipulated in Paragraph 2 of Article 23 of the Patent Law when compared to a combination of the features of the existing design, and that the patent has no distinctive effect. The people's court shall find that the design patent is not "obviously different" from the combination of existing design features as stipulated in Article 23(2) of the Patent Law.

Where one of the following circumstances exists, the people's court may determine that there is a design revelation as referred to in the preceding paragraph:

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

(b) The existing design discloses the transfer of the design features of a specific type of product to the patented design product;

(iii) Where an existing design discloses the combination of design features of different products of a particular kind;

(iv) The use of a pattern in an existing design for a patented design product, either directly or with only minor changes;

(v) Transferring the features of a single natural object for use in a patented design product;

(vi) Simply adopting basic geometric shapes or making only minor changes to obtain a design;

(g) Using all or part of the design of a building, work, logo, etc., which is generally known to consumers.

Article 21 The People's Court may take into account the following factors in determining the unique visual effect referred to in Article 20 of these provisions:

(i) The design space of the patented design product;

(ii) The relevance of the product category;

(iii) The number and degree of difficulty of the design features that are transposed, put together or replaced;

(iv) other factors to be considered.

Article 22 The "lawful rights" referred to in Article 23(3) of the Patent Law include the lawful rights or interests in respect of works, trademarks, geographical indications, names, enterprise names, portraits, as well as trade names, packages, and decorations which have a certain degree of influence.

Article 23 The people's court shall support a party's claim that the following circumstances in the examination procedure of a patent reexamination or invalidation request are "in violation of statutory procedures" as stipulated in Article 70(3) of the Administrative Procedure Law:

(A) the omission of the reasons and evidence put forward by the parties, and the rights of the parties to have a substantial impact;

(ii) Failure to notify the patent applicant, patentee and invalidation claimant who should participate in the examination procedure in accordance with the law, which has a substantial impact on their rights;

(C) Failure to notify the parties of the composition of the panel, and the existence of legal reasons for the panel members to recuse themselves but did not do so;

(d) Failure to give a party against whom the decision being appealed is unfavorable an opportunity to state its opinion on the grounds, evidence and facts found on which the decision being appealed is based;

(e) Taking the initiative to introduce common knowledge or customary design not claimed by the party concerned, without hearing the party concerned and having a substantial impact on the rights of the party concerned;

(vi) Other violations of statutory procedures that may have a substantial impact on the rights of the parties.

Article 24 Where one of the following circumstances exists in the appealed decision, the people's court may, in accordance with the provisions of Article 70 of the Administrative Procedure Law, adjudicate partial revocation:

(A) the appealed decision for the claims of some of the claims in the determination of the error, the rest of the correct;

(B) the decision against the decision for the patent law article 31, paragraph 2 of the "a design patent application" in part of the design is wrong, and the rest is correct;

(C) other circumstances that can be partially revoked by judgment.

Article 25 Where the decision appealed against has commented on all the invalid reasons and evidence claimed by the party and declared the claim invalid, and the people's court considers that the reasons for the decision appealed against to find the claim invalid are untenable, the people's court shall adjudge to revoke or partially revoke the decision, and may adjudge that the defendant shall make a new decision on the examination of the claim as appropriate.

Article 26 If the people's court decides that the review decision is based directly on the effective decision and does not introduce new facts and reasons, and if the party concerned files a lawsuit against the decision, the people's court decides that the case shall not be accepted; if the case has been accepted, the people's court decides that the lawsuit shall be dismissed.

Article 27 Where the decision under appeal is inappropriate in ascertaining the facts or in applying the law, but the conclusion of the determination of the right to grant patents is correct, the people's court may, on the basis of correcting the relevant facts and application of the law, reject the plaintiff's litigation request.

Article 28 Where a party claims that the relevant technical content belongs to public knowledge or the relevant design features belong to customary design, the people's court may require the party to provide evidence to prove it or make an explanation.

Article 29 If the patent applicant or patentee provides new evidence in the administrative case of patent authorization to prove that the patent application should not be rejected or the patent right should be maintained, the people's court shall generally examine the evidence.

Article 30 The people's court shall not review new evidence provided by the invalidation applicant in the administrative case of patent authorization, except for the following evidence:

(a) proof of common knowledge or customary design that has been asserted in the examination proceedings of the request for invalidation of the patent;

(ii) proof of the level of knowledge and cognitive ability of the technicians in the technical field to which it belongs or of the general consumers;

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

(D) to strengthen the proof of the evidence that has been admitted in the examination procedure of the request for invalidation of the patent;

(E) to refute the evidence provided by other parties in the litigation.

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

If the evidence provided by the parties to the people's court is required by law to be provided in the patent reexamination, invalidation request review proceedings, but has not been provided without justifiable reasons, the people's court shall generally not be adopted.

Article 32 These provisions shall come into force on September 12, 2020, after the implementation of these provisions. After the enforcement of these provisions, the people's courts shall apply these provisions to the cases of first and second instance under trial; the provisions shall not be applied to the retrial of the cases in which an effective decision has already been made before the enforcement of these provisions.