4.3.2 Determination of infringement of invention patents and utility models
With respect to the protection scope of patent rights, Article 64 of the Patent Law stipulates the following: “The protection scope of an invention or utility model patent shall be determined by the contents of its claims, and the description and drawings can be used to interpret the content of the claims.” This provision is clarified by Article 13 paragraph 1 of the Provisions on the Trial of Patent Disputes, which states that “the protection scope of a patent right shall be confined to the scope determined by all technical features recited in the claims, and shall also include the scope determined by features equivalent to those technical features.”
According to these provisions, patent infringement includes two circumstances: first, that the alleged infringing technical solution falls within the protection scope of the patent right defined by “all technical features recited in the claims,” which is a literal infringement; and second, that the alleged infringing technical solution falls within the “scope determined by equivalent features,” which is an infringement under the doctrine of equivalents.
In a retrial of a dispute over utility model patent infringement, Bai Wanqing v. Chengdu Nanxun Commodity Sales Service Center,72 the Supreme People’s Court held that the protection scope of patent rights must be clear. When manifest defects exist in the expressions of the claims of a utility model patent, if the protection scope of the patent right is obviously unclear because the specific meaning of technical terms in the claims cannot be determined by reference to the description and drawings of the involved patent, well-known general knowledge in the art, relevant prior art and so on, then it would be impossible to compare this with the alleged infringing technical solution. As a result, the alleged infringing technical solution cannot be identified as constituting an infringement.
4.3.2.1 Literal infringement
Article 13 paragraph 1 of the Provisions on the Trial of Patent Disputes stipulates the following: “The protection scope of a patent right shall be confined to the scope determined by all technical features recited in the claims.” Article 7 of the Interpretation of Patent Infringement Dispute Cases further stipulates the following:
In determining whether an alleged infringing technical solution falls within the protection scope of the patent right, the people’s courts shall examine all technical features recited in the claims asserted by the right holder.
If an alleged infringing technical solution contains technical features identical or equivalent to all technical features recited in the claims, the people’s courts shall determine that such a technical solution falls within the protection scope of the patent right; if the alleged infringing technical solution lacks one or more technical features recited in the claims, or has one or more technical features that are neither identical nor equivalent, the people’s courts shall determine that the alleged infringing technical solution does not fall within the protection scope of the patent right.
According to these provisions, the “all elements rule” applies in determining the infringement of invention patents and utility models. An alleged infringing technical solution will be determined as constituting a literal infringement only when it contains all of the technical features recited in the claims. Where the alleged infringing technical solution does not contain one or more technical features recited in the claims, it does not constitute infringement. Incorporation of additional technical features into the alleged infringing technical solution, if any, does not, in principle, affect the determination of infringement, provided that, in the case of closed claims, the additional technical features of the alleged infringing technical solution are considered.
In a retrial of a dispute over utility model patent infringement, Zhang Jianhua v. Shenyang Zhilian Highrise Building Heating Technology Co.,73 the Supreme People’s Court held that, if the alleged infringing technical solution lacks a technical feature recited in the claims, which leads to the deterioration of technical effects, it shall be determined as not falling within the protection scope of the patent right.
With respect to dependent claims, Article 1 paragraph 2 of the Interpretation of Patent Infringement Dispute Cases specifically stipulates the following:
Where a right holder asserts that the protection scope of the patent right shall be determined based on dependent claims, the people’s courts shall determine the protection scope thereof based on both the additional technical features recited in such dependent claims and the technical features of the claims being referred.
Article 5 of the Interpretation (II) of Patent Infringement Dispute Cases further stipulates the following: “all technical features, whether recited in the preamble portion and characterizing portion of independent claims or recited in the reference portion and defining portion of dependent claims, have a defining role.” Therefore, the protection scope of dependent claims is defined by technical features of two aspects: the additional technical features that are recited in the dependent claims, and all technical features in the claims being referred to in the dependent claims. If a claim being referred to is still a dependent claim, then it is necessary to further trace it until the independent claim that is referred to in the end is identified.
With respect to the defining role of the title of the subject matter in claims, in a retrial of a dispute over invention patent infringement, Xinghe Industry Co. v. Jiangsu Runde Pipes Industry Co.,74 the Supreme People’s Court held that the title of the subject matter recited in claims should be considered, and its actual defining role in the protection scope of the patent right depends on what impact it has on the subject matter to be protected by the claims.
4.3.2.2 Infringement under the doctrine of equivalents
With respect to infringement under the doctrine of equivalents, Article 13 paragraph 2 of the Provisions on the Trial of Patent Disputes stipulates the following:
Equivalent features are features that adopt basically the same means to perform basically the same functions and achieve basically the same effects as the technical features recited in a claim and a person skilled in the art can think of without creative work when the alleged act of infringement occurs.
The doctrine of equivalents is an important approach for overcoming the limitations of claims in expressions and for realizing the fair protection of patent rights. The doctrine of equivalents is used to compensate for the insufficiency of literal infringement. At the same time, the overly broad and excessive application of this doctrine is prevented through appropriately strict limitations, thereby avoiding the improper expansion of the protection scope of patent rights based on the doctrine, which may limit innovation and damage public interests. Limitations to the doctrine of equivalents are primarily reflected in two aspects. First, the doctrine is applied to the technical features in the claims but not to the technical solution as a whole, and the determination criteria are relatively strict and as objective as possible. Second, the estoppel rule and dedication rule are used to limit the application of the doctrine of equivalents. A determination of infringement under the doctrine of equivalents is made based on the circumstances at the time the alleged act of infringement occurred.
Applying the doctrine of equivalents expands the protection scope literally defined by the claims and adds uncertainty to the determination of the protection scope, which may affect the reasonable expectation of the public on the protection scope of patent rights. Therefore, the determination of infringement under the doctrine of equivalents must adhere to the principle of prudent application in accordance with the laws. In terms of the determination criteria, two conditions must be met simultaneously to permit a finding of equivalent features. First, these features must adopt basically the same means to perform basically the same functions and achieve basically the same effects as the technical features recited in the claims. Second, a person skilled in the art is able to think of these features without creative work (i.e., they are obvious to a person skilled in the art). Article 12 of the Interpretation (II) of Patent Infringement Dispute Cases stipulates that, when expressions like “at least,” “not more than,” and so on are recited in the claims to define numeric features, and a person skilled in the art concludes that the patented technical solution has specifically emphasized the limiting role of such expressions in technical features after reading the claims, the description and drawings, then a right holder’s argument that numeric features different therefrom constitute equivalent features shall be rejected by people’s courts.
In a retrial of a dispute over invention patent infringement, Ningbo Dongfang Movement Plant v. Jiangyin Jinling Hardware Products Co.,75 the Supreme People’s Court held the following:
The patented technical solutions should be ascertained and the space for public to freely make use of technologies to achieve invention-creations should be available, therefore reasonable protection for patentees should be determined along with sufficient legal certainty for the public. In accordance with this principle, the protection scope of an invention patent or utility model includes the scope defined by necessary technical features specifically recited in the claims, and the features equivalent to those being recited.
In a retrial of a dispute over utility model patent infringement, Beijing Jerrat Damping Elastomer Technical Research Center v. Beijing Jinzi Tianhe Buffer Technology Co.,76 the Supreme People’s Court held that, if an alleged infringing technical solution using technical means is opposite to technical features specifically recited in the claims, producing opposite technical effects, and the purpose of the invention is unachieved, then infringement under the doctrine of equivalents is not found.
In a retrial of a dispute over utility model patent infringement, Sun Junyi v. Renqiu Bocheng Water Heating Apparatus Co.,77 the Supreme People’s Court held that, when applying the doctrine of equivalents, the level of technological development at the filing date and at the time of the alleged acts of infringement should be considered so as to prevent technical features in the patented technical solution from simply being replaced by new technologies occurring after the filing date for the purpose of avoiding infringement and so to determine the reasonable boundaries of the protection scope of patent rights.
4.3.2.3 Judgment on infringement of functional features
With respect to judgments on infringement related to functional features, Article 8 paragraph 2 of the Interpretation (II) of Patent Infringement Dispute Cases stipulates the following:
Where comparing with the technical features that are indispensable to achieve the functions or the effects mentioned in the preceding paragraph as recited in the description and drawings, the corresponding technical features of the alleged infringing technical solution adopt basically the same means to perform the same functions and achieve the same effects, and can be thought of by a person skilled in the art without creative work upon the occurrence of the alleged act of infringement, the people’s courts shall then determine that the said corresponding technical features are identical or equivalent to the functional features.
In this provision, “the said corresponding technical features [determined to be] identical or equivalent to the functional features” are different from the “equivalent features” stipulated in Article 13 paragraph 2 of the Provisions on the Trial of Patent Disputes. First, the bases of comparison are different: the former involves the technical features recited in the description and drawings that are indispensable for achieving the functions or the effects, while the latter involves the features recited in the claims. Second, the criteria are different: the former requires the functions and effects to be the same, while the latter requires the functions and effects to be basically the same.
In a retrial of a dispute over utility model patent infringement, Linhai Linong Machinery Plant v. Lu Jie,78 the Supreme People’s Court held that the identification of equivalent features (in a case of infringement under the doctrine of equivalents) is not the same as the identification of “the corresponding technical features [determined to be] equivalent to the functional features” according to Article 8 paragraph 2 of the Interpretation (II) of Patent Infringement Dispute Cases. Although both require “basically the same means” and “can be thought of without creative work,” they have essential differences in two main aspects. First, they have different objects of application and different bases of comparison. “Equivalent features,” as stipulated in Article 13 of the Provisions on the Trial of Patent Disputes, applies to a broader range of objects, involving technical features other than “functional features,” and the bases of comparison are the technical features recited in the claims. By contrast, Article 8 paragraph 2 of the Interpretation (II) of Patent Infringement Dispute Cases applies to the “functional features” stipulated, and the bases of comparison are the “technical features” recited in the description and drawings “that are indispensable” for achieving the functions or effects of the functional features. Second, the identification criteria are different. The “equivalent features” stipulated in Article 13 of the Provisions on the Trial of Patent Disputes are identified against the criteria of “performing basically the same functions” and “achieving basically the same effects,” while “the corresponding technical features [determined to be] equivalent to the functional features” according to Article 8 paragraph 2 of the Interpretation (II) of Patent Infringement Dispute Cases has stricter identification criteria because these features must “perform the same functions and achieve the same effects.”
4.3.2.4 Estoppel
The estoppel rule, as a necessary limitation to the doctrine of equivalents, aims to oblige parties to act in good faith during litigation activities and avoid interpreting claims in infringement litigation in ways different from those in related administrative patent-granting and confirmation procedures. The estoppel rule thus ensures that the protection scope of patent rights is determined in a reasonable manner and that the interests among patentees, alleged infringers and the public are balanced. Article 6 of the Interpretation of Patent Infringement Dispute Cases stipulates the following: “Where the patent applicant or the patentee surrenders a technical solution by observation or amendments to the claims and description during the patent-granting or invalidation procedure, the right holder’s argument to regain the surrendered technical solution in a patent infringement lawsuit shall not be upheld by people’s courts.” Therefore, patent examination files are not only the basis for claim interpretation but also involve the application of the estoppel rule in determining infringement.
With respect to the understanding of “surrendered technical solution,” Article 13 of the Interpretation (II) of Patent Infringement Dispute Cases stipulates the following:
Where the right holder has proved that the narrowing amendments to the claims, description, and drawings or observation made by the patent applicant or the patentee are specifically denied in patent granting and confirmation procedures, the people’s courts shall determine that no technical solution is surrendered by such amendments or observation.
In this provision, the phrase “specifically denied” includes being denied by the CNIPA during the patent examination procedure and being denied by a people’s court in administrative litigation. According to this provision, a right holder bears the burden of proving that the narrowing amendments have been “specifically denied”; otherwise, the surrender of a technical solution results in the application of the estoppel rule.
In a retrial of a dispute over utility model patent infringement, Shen Qiheng v. Shanghai Shengmao Traffic Engineering Co.,79 the Supreme People’s Court held the following:
In determining whether there is an infringement under the doctrine of equivalents, even though the alleged infringer does not assert the application of the estoppel rule, the people’s courts may apply the estoppel rule to impose necessary limitation to the scope of equivalents based on facts that have been found, to determine the protection scope of the patent right in a reasonable manner.
In a retrial of a dispute over utility model patent infringement, Zhongyu Electronics (Shanghai) Co. v. Shanghai Jiuying Electronic Technology Co.,80 the Supreme People’s Court held that, if an independent claim is declared invalid whereas the dependent claims remain valid, and the patentee does not surrender the claim, then the estoppel rule shall not be applied to those dependent claims and the application of the doctrine of equivalents shall not be limited.
In a retrial of a dispute over invention patent infringement, Cao Guilan v. Chongqing Lifan Automobile Sales Co.,81 the Supreme People’s Court held that, in judging whether observations made by right holders are “specifically denied,” the people’s courts shall consider whether the narrowing statements with respect to the technical solution made by right holders are finally accepted by the decision-makers and whether, in that case, the patent was granted or was declared valid.
4.3.2.5 Issues related to process patent infringement
4.3.2.5.1 Determination of sequence of steps in process claims
Process patents are mainly defined by steps, a sequence of steps, process parameters and conditions and so on. With respect to the sequence of steps of a process patent, Article 11 of the Interpretation (II) of Patent Infringement Dispute Cases stipulates the following:
Where specific sequence of technical steps is not explicitly recited in process claims but can be directly and specifically concluded by a person skilled in the art after reading the claims, description, and drawings, then the people’s courts shall determine that such a sequence of steps has a defining role with respect to the protection scope of the patent right.
In a retrial of a dispute over invention patent infringement, OBE – Werk Ohnmacht and Baumgartner GmbH v. Zhejiang Kanghua Glasses Co.,82 the Supreme People’s Court held that, for a process invention with sequences of steps, both the steps and their sequences have a defining role in the protection scope of the patent right. The sequences of steps in the claims should not be ignored on the ground that the sequences are not recited in the claims. Instead, whether the steps are performed in a particular sequence should be determined from the perspective of a person skilled in the art by reference to the description and drawings, examination files, the overall technical solution recited in the claims and the logical relations between the steps.
In a retrial of a dispute over invention patent infringement, Zhejiang Lexueer Household Supplies Co. v. Chen Shundi,83 the Supreme People’s Court held that, in determining whether the sequence of steps of a process patent has a defining role in the protection scope of the patent right, which can limit the application of the doctrine of equivalents in the case of interchangeable step exits, the key is to consider whether those steps must be performed in a particular sequence and whether the interchangeable steps can bring about substantial differences in technical functions or technical effects.
4.3.2.5.2 Product-by-process claims
All features recited in the claims have a defining role in determining the protection scope of patent rights. According to Article 10 of the Interpretation (II) of Patent Infringement Dispute Cases, with respect to a technical feature in the claims in which a product is defined by its manufacturing method and where the manufacturing method of the alleged infringing product is neither identical nor equivalent to that method recited in the claim, then the people’s court shall determine that the alleged infringing technical solution does not fall within the protection scope of the patent right. Thus, for a product claim containing a technical feature in the form of a manufacturing method, it is necessary to consider whether the alleged infringing product has a technical feature identical or equivalent to that manufacturing method.
4.3.2.5.3 Protection scope of process patents and infringement judgment
According to Article 11 of the Patent Law, acts of infringement with respect to process patent include “using the patented process” and “using, offering to sell, selling, and importing products obtained directly from the patented process.”
The understanding of “products obtained directly from the patented process” has a direct impact on the protection scope of a process patent. In this respect, Article 13 of the Interpretation of Patent Infringement Dispute Cases further stipulates the following:
Where a product is originally obtained from a patented process, the people’s courts shall determine it as “the product directly obtained from the patented process,” as stipulated in Article 11 of the Patent Law. Where a subsequent product is obtained from further processing or treatment of the original product, the people’s courts shall also determine such processing or treatment as “using products obtained directly from the patented process,” as stipulated in Article 11 of the Patent Law.
Article 20 of the Interpretation (II) of Patent Infringement Dispute Cases further stipulates the following:
Where a subsequent product, obtained from processing or treatment of a product that is directly obtained from the patented process, is further processed or treated, the people’s courts shall determine that the act does not constitute “using products obtained directly from the patented process,” as stipulated in Article 11 of the Patent Law.
In an appeal of a dispute over invention patent infringement, Shenzhen Dunjun Technology Co. v. Shenzhen Jixiang Tengda Technology Co.,84 the Supreme People’s Court held that, if an alleged infringer solidifies the substantial contents of a patented process in the alleged infringing product for production and operation purposes, and this act or the result thereof plays an irreplaceable and substantial role in covering all technical features of the patent claims so that end users can naturally reproduce the patented process during normal use of the alleged infringing product, then the alleged infringer shall be determined as having exploited the patented process and thus as having infringed the right of the patentee.
4.3.2.5.4 Burden of proof in product-manufacturing process invention patent infringement cases
With respect to a patent for the invention of a manufacturing process for a new product, Article 66 paragraph 1 of the Patent Law stipulates, regarding the burden of proof, the following:
Where a patent infringement dispute involves a patent for an invention for a manufacturing process of a new product, the entity or individual manufacturing the identical product shall provide evidence to prove that the manufacturing process used in the manufacture of its or his product is different from the patented process.
This provision corresponds to Article 34 of the TRIPS Agreement.
Determination of whether an alleged infringing product constitutes a “new product” directly affects on which party the burden of proof rests. Article 17 of the Interpretation of Patent Infringement Dispute Cases stipulates the following: “Where a product or the technical solution for manufacturing the product is known to the public in China or abroad before the filing date, the people’s courts shall determine that the product is not a new product as stipulated in Article 61 of the Patent Law.” This provision is co-opted from the novelty provisions of the Patent Law, according to which, if either a product or the technical solution for manufacturing the product is known to the public in China or abroad before the filing date, then the product does not constitute a new product.
In a retrial of a dispute over invention patent infringement, Yiwu Beige Plastic Products Co. v. Air-Paq Composite Material (Shanghai) Co.,85 the Supreme People’s Court held that, if the right holder provides preliminary evidence to prove that a product manufactured from the patented process is a new product, then the preliminary evidence should be able to show that the involved product is significantly different to the same type of products existing before the filing date in terms of components and structure, or quality, performance and function.
In a retrial of a dispute over invention patent infringement, CSPC Ouyi Pharmaceutical Co. v. Zhang Xitian,86 and in an appeal of a dispute over invention patent infringement, Eli Lilly Co. v. Hansoh Pharma,87 the Supreme People’s Court held that, for a new product-manufacturing process invention patent, prerequisites should be met to place the burden of proof on the alleged infringer to prove that the process for manufacturing the alleged infringing product is different from the patented process, and the right holder should be able to prove that the product manufactured from the patented process is a new product and is identical to the product manufactured by the alleged infringer. It was further pointed out in CSPC Ouyi Pharmaceutical that, to determine whether a process patent is a patent for the invention of a manufacturing process for a new product, the “product obtained directly from the patented process” – which refers to a product originally obtained from the patented process rather than a product subsequently obtained by further treatment of the product originally obtained – shall be considered.
If a product manufactured from a patented process is not a “new product,” Article 66 paragraph 1 of the Patent Law does not directly apply to place the burden of proof on the alleged infringer to prove that their process for manufacturing the alleged infringing product is different from the patented process. However, when the evidence produced by the patentee meets particular requirements, the corresponding burden of proof may be placed on the alleged infringer. In this respect, Article 3 of the Provisions on Evidence in Civil Procedures involving Intellectual Property Rights stipulates the following:
the plaintiff of a patent infringement dispute case shall produce evidence to prove the following facts:
- (1) the product manufactured by the defendant is identical to the product manufactured from the patented process;
- (2) the probability of manufacturing the alleged infringing product from the patented process is relatively high; and
- (3) the plaintiff has made reasonable efforts to prove that the defendant has used the patented process.
After the plaintiff has produced evidence to prove the above, the people’s courts may require the defendant to produce evidence to prove that the process for manufacturing its product is different from the patented process.
In a retrial of a dispute over invention patent infringement, Weifang Henglian Pulp and Papermaking Co. v. Yibin Changyi Pulp Co.,88 the Supreme People’s Court held that, where a patentee can prove that the alleged infringer has manufactured an identical product but cannot prove that the alleged infringer has used the patented process after reasonable efforts, and if it is highly probable that the identical product is manufactured from the patented process based on the specific circumstances of the case, known facts and daily life experience, and the alleged infringer refuses to cooperate in the collection or preservation of evidence by the people’s courts, then it can be presumed that the alleged infringer has used the patented process.
4.3.2.5.5 Filed process and actual manufacturing process of alleged infringing pharmaceutical products
In an appeal of a dispute over invention patent infringement, Eli Lilly Co. v. Changzhou Watson Pharmaceuticals Co.,89 the Supreme People’s Court held that, in a pharmaceutical product manufacturing process patent infringement dispute, in the absence of any evidence to the contrary, the manufacturing process of the alleged infringing pharmaceutical product filed to the medical product regulatory department will be presumed to be the actual manufacturing process thereof. If there is evidence to prove that the filed process of the alleged infringing pharmaceutical product is unauthentic, then the technological source, manufacturing procedures, batch manufacturing records, documents filed to the medical product regulatory department and so on of the alleged infringing pharmaceutical product shall be fully examined to determine the actual manufacturing process thereof according to law. With respect to complicated technical facts like the manufacturing process of the alleged infringing pharmaceutical product, technical investigators, expert assistants, judicial appraisal and technological expert consultancy may be comprehensively employed.
4.3.2.6 Dedication rule
Article 5 of the Interpretation of Patent Infringement Dispute Cases stipulates the following: “For a technical solution that is solely described in the description or drawings but is not recited in the claims, the right holder’s assertion to capture it in the protection scope of the patent right in a patent infringement dispute case shall not be supported by the people’s courts.” A technical solution that is recited in the description but not in the claims will be deemed as having been donated to the public by the patentee and thus cannot be recaptured into the protection scope defined by equivalent features in a patent infringement lawsuit. The dedication rule is, in essence, a limitation to the application of the doctrine of equivalents.
4.3.2.7 Impact of declaration of patent invalidity
In a civil case involving patent infringement, if the involved patent is declared invalid by the CNIPA, the effect of the administrative invalidation decision should be decided according to the enforcement or performance status of related civil judgments or written mediation documents regarding the patent infringement. Article 47 of the Patent Law stipulates the following:
Any patent right that has been declared invalid is deemed to be non-existent from the beginning.
The decision on declaring the patent right invalid shall have no retroactive effect on any judgment or mediation statement on patent infringement which has been made and enforced by the people’s court, on any decision concerning the handling of a dispute over patent infringement which has been performed or compulsorily executed, or on any patent exploitation licensing contract or patent right transfer contract which has been performed–prior to the declaration of the invalidation of the patent right; however, the damage caused to other persons in bad faith by the patentee shall be compensated.
Where the monetary damage for patent infringement, the royalties for patent exploitation or the fees for the transfer of the patent right is not refunded pursuant to the provisions of the preceding paragraph, but such non-refund is obviously contrary to the principle of fairness, refund shall be made fully or partly.
“The decision on declaring the patent right invalid” described in Article 47 includes two circumstances: first, the concerned party fails to file an administrative lawsuit against the decision within the statutory period; and second, although an administrative lawsuit was filed, the administrative decision is not revoked by an effective administrative judgment or ruling. Therefore, whether the administrative invalidation decision has retroactive effect on any relevant administrative punishment decision, judgment, ruling, written mediation or contract should be determined based on the administrative judgment or ruling if the concerned party has filed an administrative lawsuit against an administrative invalidation decision.
Article 2 of the Interpretation (II) of Patent Infringement Dispute Cases stipulates the following:
Where a claim asserted by the right holder in a patent infringement lawsuit is declared invalid by the patent administration department under the State Council, the people’s court trying the patent infringement dispute case may rule to dismiss the lawsuit based on the invalidated claim.
Where there is evidence to prove that the decision declaring the abovementioned claim invalid is revoked by an effective administrative judgment, the right holder may file another lawsuit.
Where the patentee files another lawsuit, the statute of limitations shall be counted from the date of service of the administrative judgment stated in paragraph 2 of this Article.
This provision is made to improve the trial efficiency of civil cases involving patent infringement and avoid unnecessary extension of the trial period. In judicial practice, only a relatively small ratio of administrative invalidation decisions is revoked in administrative cases. Therefore, after the CNIPA has made a decision declaring a patent right invalid, the people’s court trying the civil case involving patent infringement may rule to dismiss the lawsuit without waiting for the final result of the administrative case. If the administrative invalidation decision is eventually revoked, the right holder may file another lawsuit.
If the CNIPA makes the administrative decision declaring a patent invalid during the second instance trial, the court of second instance may determine whether to rule to dismiss the lawsuit based on the circumstances of the case.
If, after the administrative invalidation decision is made and an effective civil judgment on infringement has not been fully enforced, a concerned party petitions for retrial in accordance with the administrative invalidation decision, the people’s court may rule to suspend the examination of the retrial and the enforcement of the effective judgment in accordance with Article 29 of the Interpretation (II) of Patent Infringement Dispute Cases, taking into account whether the concerned party has filed an administrative lawsuit against the administrative invalidation decision. If the concerned party does not file an administrative lawsuit, or the administrative invalidation decision is not revoked by an effective administrative judgment, the people’s court shall retrial the civil judgment or written mediation on infringement that has not been fully enforced.
In a retrial of a dispute over utility model patent infringement, Shaanxi Dongming Agricultural Technology Co. v. Shaanxi Qinfeng Agricultural Machineries (Group) Co.,90 the Supreme People’s Court held that the point in time at which a patent is declared invalid in accordance with Article 47 paragraph 2 of the Patent Law is the date of decision as indicated in the written decision on the examination of the request for a declaration of patent invalidity.
4.3.2.8 Temporary protection of invention patents
An invention patent application needs to go through procedures like early publication and substantive examination before the patent can be granted. Once the invention patent application is published, its technical contents will be known to the public. According to Article 11 of the Patent Law, acts of exploiting the technical solution of a patent before the patent is granted do not constitute acts of infringement. Therefore, the issue of temporary protection between the publication of the invention patent application and the announcement of the granting of the patent arises.
Article 13 of the Patent Law stipulates the following: “After the publication of an invention patent application, the applicant may require the entity or individual exploiting the said invention to pay an appropriate amount of royalties.” These royalties can only be claimed after the invention patent is granted. Article 85 paragraph 2 of the Rules for the Implementation of the Patent Law also stipulates that a party’s request to a patent administration department for mediation on the payment of the “appropriate amount of royalties” shall only be filed after the patent is granted. Article 18 paragraph 1 of the Interpretation (II) of Patent Infringement Dispute Cases specifies that the specific amount of the royalties can be reasonably determined by reference to royalties for the patent license.
As it is usually necessary to amend claims before granting, the protection scope claimed by the applicant on the publication date of the invention patent application may be different from the protection scope of the patent right once granted. In accordance with Article 18 paragraph 2 of the Interpretation (II) of Patent Infringement Dispute Cases, where the alleged infringing technical solution falls within both protection scopes, the people’s court shall determine that the defendant has exploited the patent, in which case the right holder’s request for an “appropriate amount of royalties” is supported. Where the alleged infringing technical solution falls within only one of the scopes, the assertion is rejected.
During the temporary protection period, the manufacturing, selling and importing of the product do not constitute acts of infringement, and the concerned party only bears the obligation to pay an “appropriate amount of royalties.” Article 18 paragraph 3 of the Interpretation (II) of Patent Infringement Dispute Cases stipulates the following:
where the appropriate amount of royalties stipulated in Article 13 of the Patent Law has been paid or a promise to pay has been made in writing, the right holder’s assertion that the acts of using, offering for sale, and selling constitute infringement shall not be supported by the people’s courts.