4.5.1 Dispute cases over declarations of patent non-infringement
A dispute over the declaration of patent non-infringement refers to a lawsuit filed by an actor – whose interest is affected by a specific patent right against the right holder – to request a declaration that its act does not infringe the patent right. “Affected by a specific patent right” generally means that the actor has received a patent infringement warning from a specific patentee, but the right holder has not requested a people’s court to resolve the dispute within a reasonable period, in accordance with statutory procedure. Through the (2001) Civil 3rd Requestion for Instruction No. 4 Reply dated July 12, 2002, the Supreme People’s Court specified the non-infringement declaration system in the intellectual property field.
Further regulating and improving the non-infringement declaration litigation system, Article 18 of the Interpretation of Patent Infringement Dispute Cases stipulates the specific conditions for filing such lawsuits: where a right holder sends a patent infringement warning to others and neither withdraws the warning nor files a lawsuit within one month upon receiving a written reminder in which the warned person or interested party urges the right holder to exercise the right of action, or within two months since the issuance of the written reminder, then the people’s courts shall accept the case if the warned person or interested party files a lawsuit requesting a declaration of non-infringement. “Others,” in this provision, includes specific persons and nonspecific persons. “Interested party” is understood in a broad sense to include distributors and so on. To “file a lawsuit” means to file a lawsuit against patent infringement in a people’s court. A right holder’s request to a department in charge of patent administration work to handle the infringement dispute within a certain period after the issuance of the written reminder cannot prevent the warned person or the interested party from filing a lawsuit for a declaration of non-infringement. However, to file such a lawsuit for a declaration of non-infringement, the concerned party must also meet the conditions for filing a lawsuit stipulated in Article 108 of the Civil Procedure Law in addition to the conditions stipulated in Article 18 of the Interpretation of Patent Infringement Dispute Cases.
If a dispute between the parties over whether the relevant act constitutes patent infringement has entered a statutory dispute resolution procedure (e.g., the right holder has filed a lawsuit against infringement or has applied to a people’s court for temporary measures like pre-litigation act preservation etc.), and if the relevant procedure is ongoing, then the concerned party cannot file a lawsuit for a declaration of intellectual property non-infringement.
In an appeal of a dispute over patent non-infringement declaration, VMI Holland BV v. Safe-Run Machinery (Suzhou) Co.,110 the Supreme People’s Court held that, in respect of the lawsuit for a declaration of patent non-infringement, the scope of the trial was to determine whether the technical solution implemented by the plaintiff fell within the protection scope of the defendant’s patent right – thereby eliminating the plaintiff’s uncertainty as to whether the technical solution implemented thereby fell within the protection scope of others’ patent rights – to facilitate its operational decision-making. In a patent infringement dispute, the patentee can choose whether the dispute should be handled by a patent administration department or tried by a people’s court. However, in either circumstance, the key lies in determining whether the alleged infringing product or process falls within the protection scope of the involved patent right.
In an appeal of a dispute over an objection to jurisdiction over design patent infringement, Honda Motor Co. v. Shijiazhuang Shuanghuan Automobile Co.,111 the patent non-infringement declaration held that, with respect to a lawsuit for a declaration of patent non-infringement and a patent infringement lawsuit involving the same fact, the two cases shall be subject to transfer of jurisdiction and trialed concurrently to avoid the repeated trial of cases involving the same fact by different courts. The transfer of jurisdiction is determined as per the provisions on territorial jurisdiction and on jurisdiction by court level. If territorial jurisdiction is involved, then the cases will be transferred according to the temporal sequence of case acceptance: the court accepting the case later transfers the case to the court accepting the case first. If jurisdiction by court level is involved, then, generally, the inferior court will transfer the accepted case to the superior court.