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30 September 2014PatentsYin Xintian and Duan Xiaoling

Patents in China: new approach under consideration

The draft judicial interpretation concerning patent infringement litigation has attracted wide interest, as these rules are likely to have a great impact on the trial of patent disputes in China. Yin Xintian and Duan Xiaoling unpick some of the draft’s salient points.

The Supreme People’s Court issued, on August 1, 2014, a draft for comment of a judicial interpretation concerning patent infringement litigation. The draft, which contains a total of 37 articles, has attracted broad attention both in China and abroad, as the promulgation and implementation of these rules is likely to have a great impact on the judicial trial of patent infringement disputes in China.

One of the difficulties, which the courts have always faced, is how to determine the amount of damages for a patent infringement dispute. Patentees often complain about “winning the case while losing money”. With regard to this problem, Article 33 of the draft proposes a rule inspired by the recently revised Trademark Law: provided that the patentee has fulfilled its obligation to supply evidence, the court may order the infringer to disclose its relevant account books and materials.

Where the infringer refuses without any justified reason or provides false evidence, the court may determine the amount of damages based on the claims and the evidence submitted by the patentee. This proposed change should undoubtedly have a positive impact in terms of defending the legitimate interests of patentees and effectively restraining patent infringements.

Further points

Article 4 of the judicial interpretation promulgated in 2009 by the Supreme People’s Court on patent infringement issues already describes how to interpret “functional features” in patent claims. However, the definition was too broad and the actual implementation of this article encountered some problems.

Article 10 of the draft proposes a narrower definition of the functional feature, and at the same time a definition of what does and does not constitute a functional feature. For example, if, when reading the claims of a patent, a person skilled in the art can directly and without doubt determine that a technical term is generally accepted by common practice, then the term is not considered “functional”. This proposal should resolve the above-mentioned problems raised by the current judicial interpretation.

"Article 5 proposes that where the meaning of the wording in the claims is clear but fundamentally conflicts with the description, the court should determine the scope of protection according to the claims."

Article 17 of the draft proposes to prescribe that, in a design patent case where an alleged infringing product does not reproduce all the features which distinguish the patented product from prior designs, the court may infer that the alleged infringing product is not similar to the patented product, unless proven otherwise by the evidence submitted by the patentee. This proposed article is questionable. Indeed, there may be different opinions as to what constitutes the “features that distinguish the patented design from prior designs”. Therefore, different conclusions can be made on the basis of different prior designs. This method seems not to be in conformity with Article 59 of the Chinese Patent Law, which provides that “the scope of protection of a design patent shall be determined by the design of the product as shown in the drawings or photographs”.

Article 6 of the draft suggests that the interpretation of the claims should be in line with the purpose of the invention, and where the alleged infringing technical solution possesses the defects that the patent intends to overcome, it should be determined that the technical solution does not fall into the scope of protection of the patent right. This is also controversial as someone may consider that it will give too much importance to the purpose of the invention described by the specification in the determination of the patent infringement. It will also raise the difficulty of drafting the patent application.

Furthermore, Article 5 proposes that where the meaning of the wording in the claims is clear but fundamentally conflicts with the description, the court should determine the scope of protection according to the claims. If this proposal is so promulgated and implemented, it could have serious consequences. If the scope of protection is determined only on the basis of the claims in such a situation, while the claims are obviously contradictory to the description, there is a risk that the technical solution covered by the patent will be distorted, which will obviously impact the determination of the patent infringement.

All sectors of society are currently preparing their feedback opinions with regard to the draft, in order to contribute to its improvement. We also trust the finalised new judicial interpretation will promote the further development of the Chinese patent system. 

Yin Xintian is the director general of the Intellectual Property Right Center. He can be contacted at:  yinxintian@bjiprc.org

Duan Xiaoling is a senior partner at Wan Hui Da Law Firm & Intellectual Property Agency. She can be contacted at:  duanxiaoling@wanhuida.com

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