The judicial interpretation of patent disputes in China
The revised judicial interpretation became effective from February 1.
The revisions to the judicial interpretation conformed relevant articles in the old version of the judicial interpretation to the current Chinese patent law. According to article 5.2 of the revised judicial interpretation, the place where a party offers to sell a product that uses a patented design amounts to a place where an infringing act takes place.
Articles 8 and 9 relate to a patent right evaluation report, which appeared in the current Chinese patent law, which took effect on October 1, 2009. In practice, the State Intellectual Property Office (SIPO) only issues patent right evaluation reports for utility model patents and design patents that have filing dates (or priority dates) on or after October 1, 2009. For utility model patents with earlier filing or priority dates, SIPO only issues a search report; for design patents with earlier filing or priority dates, no search reports are issued.
Therefore, article 8.1 provides that any plaintiff that takes action against infringement of a utility model patent with a filing date before October 1, 2009 may produce a search report made by SIPO; any plaintiff that takes action against infringement of a utility model patent or a design patent that has a filing date on or after October 1, 2009 may produce a patent right evaluation report made by SIPO.
"The total sales volume of the infringing products on the market multiplied by the reasonable profit of each patented product may be deemed as the losses suffered by the patentee."
According to article 9 of the revised judicial interpretation, in cases of patent infringement disputes regarding utility models or designs that are accepted by the People’s Court, where the defendant files a request for patent invalidation within the period for making its defence, the People’s Court shall suspend the legal proceedings.
However, under any one of the following circumstances, the legal proceedings may not be suspended:
(1) Where no ground has been found in the search report or patent right evaluation report that leads to the invalidation of the utility model patent or design patent;
(2) Where the defendant’s evidence is sufficient to prove that the technology it uses has been known to the public;
(3) Where the evidence or ground the defendant has provided for requesting the invalidation of the patent right is obviously insufficient; or
(4) Any other circumstances where the People’s Court finds that the legal proceedings should not be suspended.
Scope of protection
The revised judicial interpretation changed an improper expression in the old version regarding the determination of the scope of protection. Article 17 provides that the scope of protection of a patent right should be determined by all the technical features (previously it was the necessary technical features) recited in the claim, and include the scope as determined by the features equivalent to these technical features.
It further provides that the equivalent features refer to those that use substantially the same means, perform substantially the same function, and produce substantially the same effect as the recited technical features and which can be envisaged by one skilled in the art without creative work at the time the infringing act takes place.
Article 20 provides for methods of calculating damages. Specifically, the losses suffered by the patentee due to the infringement may be calculated by the total reduction in sales volume of the patented products due to the infringement multiplied by the reasonable profit of each patented product. Where it is difficult to determine the total reduction of the sales volume, the total sales volume of the infringing products on the market multiplied by the reasonable profit of each patented product may be deemed as the losses suffered by the patentee.
The interest the infringer has gained from the infringement may be calculated by the total sales volume of the infringing products on the market multiplied by the reasonable profit of each infringing product.
Article 22 further provides that the People’s Court may award the plaintiff reasonable expenses for stopping the infringing act in addition to the calculated damages award.
Stephen Yang is a partner at Peksung Intellectual Property. He can be contacted at: yyong@peksung.com
