BJ Issued New“Guidelines for Patent Infringement Determination”

On April 20, 2017, Beijing High People’ Court issued new “Guidelines for Patent Infringement Determination”.

The newly issued “Guidelines for Patent Infringement Determination” made revisions based on the “Guidelines for Patent Infringement Determination” issued in 2013 in order to solve outstanding problems in judgment, unify judgment standards, combine summaries of the judgment experience by Beijing High People’ Court and adapt to the latest laws, regulations and judicial interpretations.

The new “Guidelines for Patent Infringement Determination” includes 153 articles and about 21, 000 Chinese characters, which relate to six parts, including determination of protection scope of the patent for invention or utility model, determination of infringement on the patent for invention and utility model, determination of protection scope of the patent for design, determination of infringement of patent for design, determination of acts of patent infringement, and defense of patent infringement. It systematically and completely makes provisions on principles, objects and methods for claim interpretation as well as rules for infringement determination, determination of acts of infringement and defense of infringement, and makes provisions for the first time on hot issues like standard essential patent and graphical user interface in current patent judicial practice in China. In addition to the Chinese version, the Beijing High People’s Court also issued an English version and a Japanese version of the Guidelines for Determination.

We combed the newly issued determination guidelines, and, by generalization according to the six aspects of the new determination guidelines, arrived at the following notable information.

I. Determination of Protection Scope of the Patent for Invention or Utility Model

Articles 2 and 4 respectively stipulate fairness principle and the principle of compliance with the object of invention, indicating the contents ineligible for the protection scope include a technical solution containing a technical defect to be overcome by the patent, a technical solution, which, in its entirety, belongs to the prior art, technical solutions incapable of solving the technical problem of the patent or realizing the technical effect of the patent.
Article 10 stipulates where the patent right is declared invalid during a second instance, the first-instance judgment generally shall be revoked, but alternatively, the trial of the second-instance case may also be suspended.

Article 24 stipulates a delimiting role of usage environment features in a claim.

II. Determination of Infringement on the Patent for Invention and Utility Model

Articles 42 and 56 stipulate the meaning of equivalent features of functional features in a claim and the time point for the determination thereof.
Article 57 stipulates where the claim adopts such terms as “at least” or “no more than” to limit the numerical feature, the principle of equivalent is not adaptive.

III. Determination of Protection Scope of Patent for Design

Article 66 stipulates in the determination of the protection scope of a design, the overall comparison principle is adopted.

Article 67 stipulates the right holder may submit written material explaining the essential feature of the design patent, and explaining the part of innovation of the design and the design contents thereof; where the brief description states the essential feature, it can be used for reference; an essential feature refers to the design feature distinguishing the design from the prior design and that can produce notable visual influence on a normal consumer.
Article 73 stipulates the protection scope of a graphical user interface design shall be determined by the product design views in combination with the essential feature; the protection scope of a dynamic graphical user interface design shall be jointly determined by product design views that can determine the dynamic change process in conjunction with a description of the dynamic change process by the brief description.

IV. Determination of Infringement of Patent for Design

Article 77 stipulates the category of a graphical user interface design product shall be determined by a product using the graphical user interface.

Article 83 stipulates upon judgment of whether the design is the same or similar, the party concerned may be requested to submit evidence to prove the design space and the prior design condition of the relevant design feature. Moreover, the meanings of design space and the prior design condition are specifically defined in said article.

Articles 86 and 87 respectively stipulate the principle for the determination of infringement of a static graphical user interface design and a dynamic graphical user interface design.

V. Determination of Acts of Patent Infringement

Article 117 stipulates an entrusting party with a supervision act clearly knowing the entrusted party’s infringement is a joint infringer.

Article 121 stipulates where, one, for production or business purposes, actively induces another party to implement a specific technical solution, with the actual occurrence of the commitment of patent infringement by the another party, the actor is a joint infringer that shall bear a joint responsibility.

VI. Defense of Patent Infringement

Articles 126-127 stipulate cases of acquisition of a patent in bad faith, and that in case of acquisition of the patent in bad faith, the plaintiff’s claim may be rejected.

Articles 149-153 stipulate in a case where a standard essential patent is concerned, obligations of the patentee and the accused infringer and consequences of breach of the obligations.