Patent infringement
Interpreting patent infringement
Judicial interpretations of patent infringement issued by the Supreme People’s Court have
proven vital in trials in China. Yin Xintian of Beijing Wan Hui Da Intellectual Property
Agency analyses how they affect the rights of patent holders
P
atent legislation in every country shares a
common characteristic: there are always detailed
and specific provisions on granting patent
rights, but only general provisions on protecting those
patent rights. This is not because the former is more
important. Firstly, the substantive and procedural
conditions for granting patents can only be prescribed
by patent law. However, conditions for the protection
of patent rights, particularly the procedural aspects
of patent infringement litigation, can be dealt with
in various degrees by other applicable laws and may
not necessarily be reflected in patent law. Secondly,
the principles and standards for determining patent
infringement involve a number of complex issues. This
makes it difficult for law makers in all countries to
provide for it in clear-cut statutes. This situation would
create many difficulties in patent infringement trials if
the court concerned has recourse to nothing but patent
law provisions.
In China, such problems are dealt with chiefly
through judicial interpretations, issued by the Supreme
People’s Court, as guidelines for courts at all levels to
conduct patent trials. Following the enactment of the
Patent Law in 1984, the Court handed down a Notice
on Patent Trials in February 1985. The Court’s Answers
to Some Questions Relating to Patent Trials came out
in December 1992, soon after the Patent Law was
amended for the first time in the same year. After the
Patent Law underwent its second amendment in 2000,
the Court issued Provisions on the Application of Laws
in the Trial of Patent Disputes in June 2001. The third
amendment of the Patent Law in 2008 was followed
by the Interpretation Concerning the Application of
Laws in Patent Infringement Trials issued by the Court
in December 2009. All of these should be regarded as
judicial interpretations of the Court, and have proved
indispensable to trial practices. They have played
an important role in ensuring the proper operation
of China’s patent system by complementing and
adding detail to the Patent Law and the Rules for the
Implementation of the Patent Law.
A review of the Court’s patent-related judicial interpretations can show how the courts have deepened their
understanding of the patent system and made progress
in patent trials - a meaningful mark of development in
the protection of intellectual property in China.
The 2009 Judicial Interpretation
The Judicial Interpretation promulgated in 2009 consists
of 20 articles which can be divided into four parts. Part
I, articles 1 to 7, covers the principles for determining
the scope of protection and how to determine infringement of inventions or utility models patents. Part II, articles 8 to 11, deals with the principles for determining
the scope of protection and how to determine infringement of industrial designs patents. Part III, articles 12 to
18, focuses on specific provisions on patent infringement
trials. Part IV, articles 19 and 20, covers the interim arrangement for implementing the Interpretation and the
relationship of the Interpretation to the previous ones.
Deciding which claims to rely upon
Patent claims for inventions or utility models include at
least one independent claim and often several dependent claims. Article 59 paragraph 1 of the Patent Law
states that “the extent of protection of the patent right
for invention or utility model shall be determined by the
terms of the claims”, but it does not specify which claim
or claims take precedence. It was thought before that
since independent claims establish the largest scope of
protection, patent rights should be asserted on the basis
of independent claims. Some people argue that a patentee can only assert their patent right on the basis of
independent claims.
Article 1 of the Interpretation has resolved this
problem by stating that the patentee may choose which
claims to depend on, either independent or dependent,
to assert his rights. Before the conclusion of court dew w w. m a n a g i n g i p. c o m C h i n a I P F o c u s 2 0 1 1 35
Patent infringement
bate at first instance, the patentee may also change the
claims he wishes to rely upon.
The above provision is of practical significance to
patentees seeking patent protection. Since there is no
amendment procedure after the grant of a patent in
China’s patent system, patentees usually have no chance
to amend their patent documents after the granting of
patent rights. In practice, when a patentee intends to
accuse an infringer, the patentee quite often finds the
scope of protection demanded by his independent claim
too broad and so the claimed invention or utility model
may be considered to lack novelty or an inventive step.
The patentee therefore runs the risk of invalidation or
partial invalidation of his patent right. If the trial court
in such a case were to follow the rigid standpoint that
the patentee may only rely on his independent claims
for protection, the patentee would have the problem
that if he fails to file suit for patent infringement, the
infringing activities will not be stopped and the value of
his patent will not be realized. But if he does file suit, he
knows that employing inadequate independent claims
to seek protection will only create difficulties. The Interpretation solves this problem by giving the patentee
leeway in his choices. A patentee who opts to use his
dependent claims is in effect voluntarily narrowing the
scope of protection - a sensible act that merits encouragement rather than restriction.
• The People’s Court may resort to the description and
drawings, the relevant claims and the prosecution
history to interpret the claims. Where a terminology
in the claims is specifically defined in the specification, the definition shall prevail. If the meaning of
the claims can not be determined by the above-mentioned means, it may be interpreted in consideration
of public known literature such as reference books,
textbooks and the like as well as the ordinary understanding by those skilled in the art.
It can be seen from this provision that internal evidence should be considered first. This conforms to the
essence of the patent system and provides an important
guideline on how to conduct patent infringement trials.
Rules on the interpretation of claims
The doctrine of equivalents
Article 59 paragraph 1 of the Patent Law also states:
“The description and appended drawings may be used
to interpret the content of the claims.” It should be noted that this is not an exhaustive clause as, in addition
to the patent description and appended drawings, other
relevant evidence is allowed. Evidence used in claim in-
The doctrine of equivalents is generally adopted
throughout the world as it is conducive to patentees’
safeguarding of their rights and interests, and the proper management of the patent system. The doctrine was
introduced in China through article 17 of the Supreme
People’s Court’s Provisions on Application of Laws in
Patent Infringement Trials issued on June
19 2001.
Xintian YIN
terpretation can be classified into internal and external
evidence. The former includes descriptions, appended
drawings, relevant statements in other claims, and patent application files, and the latter refers to dictionaries, textbooks and common knowledge in the public domain. In some cases, different classes of evidence used
to interpret claims may result in different conclusions
about the scope of patent protection. This prompts an
important question: when two classes of evidence are
involved and lead to different interpretations, which
one should take precedence?
Article 3 of the Interpretation states:
Yin Xintian is a senior partner at Wan Hui Da. Before his retirement
in March 2010, he was the spokesman and director-general of the
Legal Affairs Department of the State Intellectual Property Office
(SIPO).
Yin served SIPO for almost thirty years. During his tenure of office as the head of SIPO’s Legal Affairs Department, he was responsible for preparing the draft for the second and third revision of
China’s Patent Law and the Implementing Regulations of the Patent
Law on behalf of SIPO, and took part in the approval process of the
State Council and the People’s Congress of China. He also presided over the meetings of
the Standing Committee on the Law of Patents (SCP) and the Working Group on the Reform
of the PCT organized by WIPO as vice chairman.
Yin has written several books on patents. He has also had scores of papers and articles
in various intellectual property periodicals published both home and abroad, with a total
word count of over 4 million.
In recognition of his remarkable achievements, Yin was granted the Special subsidy for
a high-level expert by the State Council of China in 2005.
36 C h i n a I P F o c u s 2 0 1 1 w w w. m a n a g i n g i p. c o m
Restraining the doctrine of equivalents
To balance the interests of patentees and
those of the public however, the doctrine
of equivalents has to be restrained where
necessary. The Interpretation sets out
three measures of restraint.
1. All element principle
Before applying the doctrine, one must ascertain whether it refers to the equivalence
between the corresponding technical features of the allegedly infringing solution
and those of the patented solution, or the
equivalence between the two solutions as
a whole. If the latter approach is adopted,
the discretionary power to decide whether
equivalence exists should be increased.
Patent infringement
The Supreme People’s Court on
patent claims
In August 2005, in response to a retrial request made
against a second instance judgment handed down
by Liaoning Provincial Higher People’s Court, the
Supreme People’s Court stated:
Firstly, all the technical features written into
the independent claims by the patentee are
indispensable technical features that should not be
ignored and should be brought into technical feature
comparison. We object to indiscreet use of the socalled ‘principle of superfluity limitation’. Secondly,
since patent claims are designed to circumscribe the
scope of patent protection, they inform the public of
all the technical features of a technical solution that
constitutes a patented invention or a utility model to
warn the public what technology, when implemented,
will infringe the patent. This is to provide valid
protection for the patentee on the one hand, and
give the public the freedom to use other technologies
on the other. Only if all the contents of the patent
claims are fully and adequately respected could the
public avoid being at a loss due to unforeseeable
changes made during the procedure of the trial of
patent infringement, and could the definitiveness of
legal rights and the operation and value of the patent
system be guaranteed.
Article 7 paragraph 1 of the Interpretation states:
• Where the accused infringing technical solution includes the features that are identical or equivalent
with all the technical features defined in a claim,
the People’s Court shall determine that the accused
infringing technical solution falls into the extent of
protection of the patent right; where compared with
all the technical features of a claim, the accused infringing technical solution lacks one or more technical features of the claim, or one or more technical
features in the technical solution and the asserted
claim are neither identical nor equivalent, the People’s Court shall determine that the accused infringing technical solution doesn’t fall into the extent of
protection of the patent right.
This provision has not only elevated the Supreme
People’s Court judgment (see box) to the height of a judicial interpretation, but also extended its application.
Under the provision, it is not permissible to ignore the
technical features in the independent claims, nor is it
allowed, when the patentee seeks patent protection on
the basis of the dependent claims, to ignore those in the
dependent claims.
2. The principle of estoppel
The so-called principle of estoppel is reflected in article 6 of
the Interpretation:
• Where the patent applicant or patentee has abandoned a technical solution through amendment to
claims and/or description or observations during
the prosecution or invalidation process, if the patentee asserts in a patent infringement lawsuit that
the extent of protection of the patent right should
include the abandoned technical solution, the People’s Court shall not allow this.
The principle of estoppel was established to exclude
from protection those technical solutions that were
abandoned in patent granting or invalidation, but that
are intended to rejoin the scope of protection through
the application of doctrine of equivalents. The logical
conclusion of this principle is that the abandoned solutions were originally outside the scope of protection
expressed by the wordings of the patent claims. This
means that the principle of estoppel is suitable only in
infringement cases under the meaning of the doctrine,
but not in literal infringement cases such as identical
infringement.
3. Dedication to the public
Article 5 of the Interpretation states: “For a technical
solution which is described only in the description or
appended drawings but not disclosed in patent claims,
and which the patentee wishes to incorporate into the
scope of protection during a patent infringement suit,
the court will not lend its support.” This provision is
the so-called doctrine of dedication to the public which
was created when the United States Court of Appeals
for the Federal Circuit, with the participation of all
of its judges, handed down an important judgment on
Johnson & Johnston v RE Service Co, Inc in 2002.
This established the doctrine of dedication to the public
to limit the application of the doctrine of equivalents.
This doctrine originated from a question on the
application of the doctrine of equivalents: should the
doctrine be applicable only to include the technical solution adopted by the accused infringer to implement
the patented invention, which the patentee is able to establish at the stage of filing his application, in the scope
of protection? The US Court of Appeals for the Federal
Circuit held that if the answer to such a question was in
the affirmative, the limit on the application of doctrine
of equivalents would be too harsh to be reasonable. The
doctrine of dedication to the public, however, only relates to a specific case of predictability, where the patentee wrote into the patent description a certain implementing model which the accused infringer chosen to
implement the patented invention, but never claimed it,
thus providing evidence of the patentee’s anticipation of
such implementing model when the application docuw w w. m a n a g i n g i p. c o m C h i n a I P F o c u s 2 0 1 1 37
Patent infringement
mentation was drafted. In this case, if the patentee does
wish to cover the implementing model within his scope
of protection, there will not be any barriers to prevent
him from doing so. There are only two reasons why
the patentee would refrain from doing so: one, he does
so inadvertently (but this would be barely believable)
or; two, the patentee intends to fully disclose various
implementing models in the description but only draft
claims corresponding to a small scope of protection,
so as to obtain the patent right more easily, with the
aim of enlarging the scope of protection by means of
the doctrine of equivalents later on. The US Court of
Appeals for the Federal Circuit held that the patentee
was to blame under either of the two circumstances,
and therefore, it was reasonable to adopt the doctrine
of dedication to the public under which the patentee
dedicates his specific implementing model to the public
free of charge.
In Article 5 of the Interpretation, the Court takes
virtually the same attitude as the US Court of Appeals
for the Federal Circuit.
Product manufacturing processes
For a patent for a manufacturing process, Article 11
of the Patent Law provides that after the granting of
a patent, no one may, without the authorization of the
patentee, use, offer for sale, sell or import any product
directly obtained by the patented process. The patent
granted relates only to the method of manufacturing
the product; the product itself is not patented. This
means that the protection granted by the above provi-
38 C h i n a I P F o c u s 2 0 1 1 w w w. m a n a g i n g i p. c o m
sion is extended protection for a product manufacturing process patent.
A critical question arises in the application of the provision which is, to what degree can the protection scope
be extended? The understanding of the word directly is
important here and patent practices around the world
show that different countries do not take the same approach.
Article 13 of the Interpretation represents China’s approach
to this subject. It states:
• An original product obtained by making use of a
patented process will be regarded by the court as a
product obtained directly by the patented process in
the sense of Article 11 of the Patent Law. The conduct of processing such an original product into a
subsequent product will be deemed by the court as
the use of a product obtained directly by the patented process in accordance with Article 11 of the
Patent Law.
Take a patent for the method of producing ethylene
for example. Mr X, who produces ethylene by a patented process without the patentee’s permission, commits
an act of infringement on account of using the patented
process. Mr Y, who produces PVC with the ethylene
produced by Mr X, commits an act of infringement on
account of using a product directly obtained by the patented process. As the PVC produced by Mr Y is no longer a product directly obtained by the patented process,
anyone who subsequently uses or deals with the PVC in
whatever manner will infringe no patent rights.