The Interpretation of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Disputes over Infringement of Patent Rights (II), which was adopted at the 1676th meeting of the Judicial Committee of the Supreme People's Court on January 25, 2016, is now promulgated and shall come into force on April 1, 2016. 

The Supreme People's Court
March 21, 2016

For the purpose of adjudicating appropriately disputes over the infringement of patent rights, this Interpretation is formulated in accordance with the Patent Law of the People's Republic of China, the Tort Liability Law of the People's Republic of China, the Civil Procedure Law of the People's Republic of China and other relevant legal provisions, in combination with trial practices. 

Article 1 Where there are two or more claims in the Claim Set, the right holder shall state in the Complaint the claims based on which he or it accuses the infringer for infringing upon its patent right.  Where there is no statement in the Compliant or thestatement is not clear in the Compliant, the courts shall require the right holder to make a clarification.  If the right holder refuses to do so after being notified, the courts may rule to dismiss the lawsuit.

Article 2 Where the claim alleged by the right holder in a patent infringement lawsuit is declared invalid by the Patent Reexamination Board, the courts adjudicating patent infringement disputes may rule to dismiss the lawsuit brought by the right holder based on the invalidated claim.

Where there is evidence proving that the decision to declare the above claim invalid is revoked by a binding administrative judgment, the right holder may file a lawsuit separately.

Where the patentee files a lawsuit separately, the time limit of action shall be counted from the date of service of the administrative judgment stated in Paragraph 2 of this Article.

Article 3 Where the patent right is requested to be declared invalid because its obvious violation against Paragraph 3 or Paragraph 4 of Article 26 of the Patent Law causes the Description impossible to interpret the claims and does not belong to circumstances prescribed under Article 4 of this Interpretation, the courts adjudicating patent infringement lawsuit generally shall rule to suspend the lawsuit; where no request for declaring the patent right invalid is filed within a reasonable period, the courts may determine the scope of protection of the patent right based on the claims.

Article 4 Where grammar, letter, punctuation, figure, symbol, etc. in the Claim Set, Description and appended Drawings are ambiguous, but those ordinary in the art may derive a sole understanding by reading the Claim Set, Description, and appended drawings, the courts shall make determination according to the sole understanding.

Article 5 When the courts determine the scope of protection of the patent right, technical features recorded in the preamble portion and characterizing portion of an independent claim and the reference portion and characterizing portion of dependent ones all have limiting function. 

Article 6 The courts may explain the claims of the patent involved using another patent, between which and the patent involved there is a divisional-application-relationship, and patent prosecution history thereof, the binding official documents for judging patent granting and the verification of patent right.

The patent prosecution history comprises the written materials filed by the patent applicant or patentee; and office actions, meeting records, oral hearing records, and binding decisions of the reexamination and invalidation issued by the Patent Administrative Department under the State Council and the Patent Reexamination Board in the course of patent examination, reexamination and invalidation. 

Article 7 Where an alleged infringing technical solution has additional technical features on the basis of all technical features of a close-ended composition claim, the courts shall determine the alleged infringing technical solution as not falling within the protection scope of the patent right, except that the additional technical features are of unavoidable impurities that are present in normal amounts.

The close-ended composition claim as mentioned in the preceding paragraph generally does not include the claim of traditional Chinese medicine composition.

Article 8 A functional feature refers to a technical feature in which the structures, compositions, steps, conditions or the relations therebetween are defined by their functions or the effects achieved in the invention-creation, except that a specific embodiment for achieving the above functions or effects can be directly and specifically determined by those ordinary in the art only by reading the claims.

Where comparing with the technical feature that is necessary to achieve the functions or the effects mentioned in the preceding paragraph as recorded in the Description and appended Drawings, the corresponding technical feature of the accused infringing technical solution can adopt substantially the same means to perform the same functions and achieve the same effects, and can be contemplated by those ordinary in the art without creative efforts upon occurrence of the accused infringing act, the courts shall find that said corresponding technical feature is identical or equivalent to the functional feature.  

Article 9 Where an accused infringing technical solution can not be adapted for the use environment defined by the use environment features in a claim, the courts shall find that the accused infringing technical solution does not fall into the scope of protection of the patent right.

Article 10 Regarding a technical feature, in which a product is defined by the preparation method, in a claim, where the preparation method of the accused infringing product is neither identical nor equivalent to it, the courts shall find that the accused infringing technical solution does not fall within the scope of protection of the patent right.

Article 11 Regarding the sequence of the technical steps is not explicitly recorded in a method claim, where those ordinary in the art directly and definitely hold that these technical steps shall be carried out in accordance with a particular sequence after reading the Claim set, Description and appended Drawings, the courts shall find that the sequence of steps has limitation to the scope of protection of the patent right.

Article 12 Where a claim uses words like "at least", "not more than" to define a numerical feature, and those ordinary in the art hold that the patent technical solution especially emphasizes the limitation of said words to a technical feature after reading the Claim set, Description and appended Drawings, while the right holder alleges that a numerical feature not identical to it is of an equivalent feature, said allegation shall not be supported by the courts.

Article 13 Where the right holder proves that the restrictive amendments or statements to the Claim set, Description and appended Drawings by the patent applicant or the patentee are definitely denied in the procedures of patent granting and patent right verification, the courts shall find that such amendments or statements do not cause the abandonment of the technical solution.

Article 14 When determining the knowledge level and cognitive ability of the general consumer about a design, the courts generally shall take into consideration the design space of the products with the identical or similar category to patented designs incorporating products upon occurrence of the accused infringing act.  Where there is a relatively large design space, the courts may find that it is generally not easy for the general consumer to notice a relatively minor difference between different designs; wherein there is a relatively small design space, the courts may find that it is generally easy for the general consumer to notice a relatively minor difference between different designs. 

Article 15 Regarding the patent of designs incorporating a set of products, where the accused infringing design is identical or similar to one of the designs, the courts shall find that the accused infringing design falls within the scope of protection of the patent right.

Article 16 Regarding a design patent of an assembled product with only one option of assembly, where the accused infringing design is identical or similar to the design in the state of combination, the courts shall find that the accused infringing design falls within the protection scope of the patent right. 

Regarding a design patent of a combination product needless of assembly among the components or a design patent of an assembled product with more than one option of assembly among the components, where the accused infringing design is identical or similar to the designs of all of the individual components, the courts shall find that the accused infringing design falls within the protection scope of the patent right; where the accused infringing design lacks the design of one of the individual components, or is neither identical nor similar thereto, the courts shall find that the accused infringing design does not fall within the protection scope of the patent right. 

Article 17 Regarding a design patent of a product having variable states, where the accused infringing design is identical or similar to the designs in every usage state shown in the figures of variable states, the courts shall find that the accused infringing design falls within the protection scope of the patent right; where the accused infringing design lacks the design in one of the usage states, or is neither identical nor similar thereto, the courts shall find that the accused infringing design does not fall within the protection scope of the patent right. 

Article 18 Where a right holder claims, pursuant to Article 13 of the Patent Law, appropriate fees from an entity or an individual implementing the invention during the period from the publication date of the invention patent application to the announcement date of patent issuance, the courts may determine the fees reasonably in reference to relevant patent licensing fees. 

Where the protection scope claimed by the applicant at the time of the publication of an invention patent application is different from the protection scope of the patent right at the time of the announcement of invention patent issuance, if the accused technical solution falls within both of aforesaid scopes, the courts shall find that the defendant has practiced the invention during the period stated in the preceding paragraph; if the accused technical solution only falls within one of said foregoing scopes, the courts shall find that the defendant has not practiced the invention during the period stated in the preceding paragraph. 

Where a party, without the authorization of the patentee and for production and business purposes, uses, offers for sale or sells products already manufactured, sold or imported by another party during the period mentioned in Paragraph 1 of this Article after the announcement of patent issuance, and where the another party has already paid or promised in written form to pay appropriate fees as provided in Article 13 of the Patent Law, the courts shall not uphold the claim by the right holder that the aforesaid using, offering for sale and selling acts infringe upon the patent right. 
 
Article 19 Where a product sales contract is established according to law, the courts shall find that it belongs to the sales prescribed in Article 11 of the Patent Law. 

Article 20 Where a subsequent product, obtained from further processing or treatment of a product that is directly obtained from the patented process, is re-processed or re-treated, the courts shall find that the re-processing or re-treatment act does not belong to "using a product that is directly derived from the patented process" as prescribed in Article 11 of the Patent Law. 
 
Article 21 Where a party, clearly knowing that certain product is a raw material, equipment, component or intermediate specially used for implementing a patent, provides, without the authorization of the right holder and for production and business purposes, such product to another party who commits an act of patent infringement, if the right holder claims that the provider’s act belongs to contributory infringement as prescribed in Article 9 of the Tort Liability Law, the courts shall uphold such claim.

Where a party, knowing that a product or a process has been granted a patent right, actively induces, without the authorization of the right holder and for production and business purposes, another party to commit an act of patent infringement, if the right holder claims that the inducer’s act belongs to the act of abetting another party to commit infringement as prescribed in Article 9 of the Tort Liability Law, the courts shall uphold such claim.

Article 22 Regarding the prior art defense or prior design defense asserted by the accused infringer, the courts shall define the prior art or prior design based on the Patent Law that was in effect at the time of the application date of the patent. 

Article 23 Where the accused infringing technical solution or design falls within the protection scope of a preceding patent right, and the accused infringer makes a non-infringement defense of the patent right on the ground that his or its technical solution or design is granted a patent right, the courts shall not uphold such defense. 

Article 24 Where recommended national, industrial or local standards explicitly disclose information on an essential patent that is relevant to such standards, if the accused infringer makes a non-infringement defense of the patent right on the ground that no license from the right holder is required for implementing such standards, the courts generally shall not uphold such defense. 

Where recommended national, industrial or local standards explicitly disclose information on an essential patent that is relevant to such standards, and the patentee is intentionally in breach of its licensing obligations on "fair, reasonable and non-discriminatory" terms as promised in the process of formulating the standards when the patentee and the accused infringer negotiate about the patent licensing conditions, thereby resulting in failure to reach a patent licensing contract and the alleged infringer has no obvious faults in the negotiations, the courts generally shall not uphold the right holder’s claim for stopping the act of implementing the standards.

Licensing conditions as stated in Paragraph 2 of this Article shall be determined through negotiation between the patentee and the accused infringer.  If no agreement is reached after sufficient negotiation, the parties may request the courts to determine such conditions.  The courts in determining such licensing conditions shall take into comprehensive consideration on the factors such as the degree of innovation and the role of patent in standards, the technical field which technical standards belong to, the nature of the standards, the application scope of the standards and relevant licensing conditions according to the "fair, reasonable and non-discriminatory" principle.

Where any law and administrative regulation sets forth provisions on the implementation of patents in standards otherwise, such provisions shall prevail.

Article 25 Where a party, for production and business purposes, uses, offers for sale or sells a patent-infringing product without knowing that such product is produced and sold without authorization of the patentee, and the legitimate source of the product can be proved by evidence, the courts shall uphold the right holder’s claim of ordering the party to stop aforesaid using, offering for sale or selling the patent-infringing product, unless the user of the accused infringing product proves by evidence that the reasonable consideration for such product has been paid.

"Without knowing" in Paragraph 1 of this Article means neither actually know nor should know.

"Legitimate source" in Paragraph 1 of this Article means the product is obtained through a normal commercial manner such as legitimate sales channel and an ordinary sales contract.  Regarding the legitimate source, the person who uses, offers for sale or sells the product shall adduce relevant evidence proving that his or its act complies with the trading customs.

Article 26 Where the defendant constitutes infringement on the patent right, the right holder’s request for stopping the infringing act shall be upheld by the courts.  However, in consideration of the national or public interests, the courts may not order the defendant to stop the alleged acts, but order the defendant to pay reasonable fees.

Article 27 Where it is difficult to determine the actual losses suffered by the right holder from infringement, the courts shall require the right holder to adduce the evidence to prove the profits gained by the infringer from infringement according to Paragraph 1 of Article 65 of the Patent Law; if the right holder has adduced preliminary evidence to prove the profits gained by the infringer, while account books or materials relating to patent infringing acts are mainly controlled by the infringer, the courts may order the infringer to provide the account books or materials; if the infringer refuses to provide the account books or materials without justifiable reasons, or provides false ones, the courts may determine the profits gained by the infringer from infringement according to the claims of and evidence provided by the right holder.

Article 28 Where the right holder and the infringer agree, according to law, on the amount of damages or the calculation method of the damages of patent infringement, and claim, during a patent infringement lawsuit, that the amount of damages shall be determined in accordance with such agreement, the courts shall uphold such claim. 

Article 29 Where, after the issuance of a decision of declaring a patent right invalid, a party applies, based on the decision and according to law, for a retrial, and requests for the revocation of the patent infringement judgment or the consensual judgment which has been issued by the courts before the declaration of invalidation of the patent right but has not been executed, the courts may rule to stay the rehearing review and to stay the execution of the previous judgment or the consensual judgment. 

Where the patentee provides sufficient and effective guarantee to the courts requesting continuous execution of the judgment or the consensual judgment in the preceding paragraph, the courts shall continue the execution; where the infringer provides sufficient and effective counter guarantee to the courts requesting for staying the execution, the courts shall approve the request of the infringer.  Where the effective judgment of the courts does not revoke the decision of declaring the patent right invalid, the patentee shall compensate for the loss caused by the continued execution to the infringer; where the decision of declaring the patent right invalid is revoked by the effective judgment of the courts and the patent right is still valid, the courts may execute the counter guarantee property directly in accordance with the judgment or the consensual judgment in the preceding paragraph. 

Article 30 Where no appeal is made before the courts with respect to the decision of declaring a patent right invalid within the statutory period or an effective judgment after the appeal does not revoke the decision, if a party applies, based on the invalidation decision and according to law, for a retrial, and requests for the revocation of the patent infringement judgment or the consensual judgment which has been issued by the courts before the declaration of invalidation of the patent right but has not been executed, the courts shall rehear the case.  If a party applies, based on the invalidation decision and according to law, for terminating the execution of the patent infringement judgment or the consensual judgment which has been issued by the courts before the declaration of invalidation of the patent right but has not yet been executed, the courts shall rule to terminate the execution. 

Article 31 This Interpretation shall enter into force on April 1, 2016.  Where there is discrepancy between relevant Interpretations promulgated previously by the Supreme People’s Court and this Interpretation, this Interpretation shall prevail.