The Provisions of the Supreme People’s Court on Several Issues Concerning the Application of Law in the Trial of Administrative Cases Involving Patent Grant and Confirmation (I), adopted at the 1810th meeting of the Judicial Committee with the Supreme People’s Court on August 24, 2020, are hereby promulgated, and will come into effect as of September 12, 2020.
     
For the correct trial of administrative cases involving patent grant and confirmation, these Provisions are formulated in accordance with the Patent Law of the People’s Republic of China, the Administrative Litigation Law of the People’s Republic of China and other laws, and in consideration of the trial practice.
 
 
Article 1 The “administrative cases involving patent grant” mentioned in these Provisions refer to cases filed by patent applicants with the people’s court because they disagree with decisions on requests for patent reexamination made by the patent administration department under the State Council.
 
The “administrative cases involving patent grant” mentioned in these Provisions refer to cases filed by patentees or invalidation petitioners with the people’s court because they disagree with decisions on requests for declaring patents invalid made by the patent administration department under the State Council.
 
The decisions in dispute mentioned in these Provisions refer to decisions on requests for patent reexamination and decisions on requests for declaring patents invalid made by the patent administration department under the State Council.
 
Article 2 The people’s court shall define the term of a claim based on the usual meanings understood by those skilled in the art after they read the claims, specification and drawings. Where the term of a claim is clearly defined or explained in the specification and drawings, the definition or explanation shall apply.
 
A term of a claim that cannot be defined in accordance with the provision in the preceding paragraph may be defined in consideration of technical dictionaries, technical manuals, reference books, textbooks, and national or industry technical standards, among others commonly used by those skilled in the art.
 
Article 3 In defining the term of a claim in an administrative case involving patent confirmation, the people’s court may refer to the relevant statement of the patentee that has been adopted by an effective ruling of a civil case involving patent infringement
 
Article 4 Where there are obvious errors or ambiguities in the grammar, words, numbers, punctuations, graphics, symbols, etc. in the claims, specification and drawings but those skilled in the art can arrive at a sole understanding by reading the claims, specification and drawings, the people’s court shall make a determination based on that sole understanding.
 
Article 5 Where a party has evidence that the patent applicant or patentee violated the principle of good faith, fabricating or imagining the embodiments, technical effects and data, and charts, among other technical contents in the specification and drawings, and claims, based on the evidence, that the relevant claim does not comply with the relevant provisions of the Patent Law, the people’s court shall support the party.
 
Article 6 Where the specification does not sufficiently disclose specific technical contents, resulting in one of the following circumstances on the filing date, the people’s court shall determine that the specification and a claim related to the specific technical contents do not comply with paragraph 3, Article 26 of the Patent Law:
(1) The technical solution defined by the claim cannot be implemented;
(2) The implementation of the technical solution defined by the claim cannot solve the technical problem to be solved by the invention or utility model; and
(3) It is confirmed that the technical solution defined by the claim can solve the technical problem to be solved by the invention or utility model, but undue effort must be made.
 
Where a party claims that a claim related to the specific technical contents that are not sufficiently disclosed as stipulated in the preceding paragraph complies with the provision in paragraph 4, Article 26 of the Patent Law that “the claims shall be supported by the specification,” the people’s court does not support the party.
 
Article 7  Where those skilled in the art believe that a claim has one of the following problems, based on the specification and drawings, the people’s court shall determine that the claim does not comply with the provision in paragraph 4, Article 26 of the Patent Law that the claims shall define the extent of the patent protection sought for in a clear manner:
(1) The type of the subject matter of the invention is not clear;
(2) The meanings of the technical features in the claim cannot be reasonably determined; and
(3) The technical features apparently contradict, which cannot be reasonably explained.
 
Article 8  Where after reading the specification and drawings, those skilled in the art could not arrive at or derive by generalization the technical solution defined by a claim on the filing date, the people’s court shall determine that the claim does not comply with the provision in paragraph 4, Article 26 of the Patent Law that “the claims shall be supported by the specification.”
 
Article 9  A technical feature defined by a function or effect refers to a technical feature such as structure, component, step, and condition, or a relationship between technical features that is defined using its function or effect in the invention-creation, except one for which the embodiment of its function or effect can be determined by those skilled in the art directly and clearly after reading the claim.
 
For the technical feature defined by a function or effect specified in the preceding paragraph, where the claims, specification and drawings do not disclose any specific embodiment that can achieve the function or effect, the people’s court shall determine that the specification and the claim having the technical feature do not comply with paragraph 3, Article 26 of the Patent Law.
 
Article 10  Where an applicant for a drug patent submits supplementary experimental data after the filing date, and claims that the data proves that the patent application complies with paragraph 3, Article 22 and paragraph 3, Article 26 of the Patent Law, among other provisions, the people’s court shall examine the claim.
 
Article 11  Where parties have a dispute over the authenticity of experimental data, the party submitting the experimental data shall provide evidence of the source and formation process of the experimental data. The people’s court may notify a person in charge of the experiment to come to court and give explanations on the raw materials, procedures, conditions, environment, or parameters of the experiment, as well as the personnel and institutions that completed the experiment.
 
Article 12  In determining the technical field of a technical solution defined by a claim, the people’s court shall comprehensively consider all the contents of the claim such as the subject-matter name, the description of the technical field and background technology in the specification, and the functions and uses achieved by the technical solution, among others.
 
Article 13 Where the specification and drawings do not clearly describe the technical effect that a distinguishing technical feature can achieve in the technical solution defined by the claim, the people’s court may determine the technical problem that the claim actually solves and is determinable by those skilled in the art, in consideration of common knowledge in the art, the relationship between the distinguishing technical feature and other technical features in the claim, and the role of the distinguishing technical feature in the technical solution defined by the claim, among others.
 
Where the decision in dispute fails to determine or incorrectly determines the technical problem that the claim actually solves, this failure does not an impact on the people’s court making a determination as to whether the claim is inventive in accordance with the law.
 
Article 14  In determining the level of knowledge and cognitive ability of ordinary consumers of a product of a design patent, the people’s court shall consider the design space of the product of the design patent on the filing date. Where the design space is large, the people’s court may determine that it is usually difficult for ordinary consumers to notice small differences between different designs; where the design space is small, the people’s court may determine that it is usually easy for ordinary consumers to notice differences between different designs.
 
In determining the design space mentioned in the preceding paragraph, the people’s court may comprehensively consider the following factors:
(1) The function and use of the product;
(2) The overall status of the prior design;
(3) Customary designs;
(4) Mandatory provisions of laws and administrative regulations;
(5) National and industry technical standards; and
(6) Other factors that need to be considered.
 
Article 15  Where there are contradictions, missing sections, or ambiguities in the drawing or photograph of a design, which cause ordinary consumers to be unable to determine the design to be protected based on the drawing or photograph and the brief description, the people’s court shall determine that the design does not comply with the provision in paragraph 2, Article 27 of the Patent Law that “the relevant drawings and photographs shall clearly show the design of the product for which patent protection is sought.”
 
Article 16  In determining whether a design complies with Article 23 of the Patent Law, the people’s court shall comprehensively judge the overall visual effect of the design.
 
A design feature that is indispensable for the achievement of a specific technical function or has to be chosen from among a limited options in order to achieve the specific technical function has no significant influence on the overall observation and comprehensive judgment of the visual effects of the design patent.
 
Article 17  Where a design has an overall visual effect that is the same as, or is essentially the the same as but slightly differs from, the overall visual effect of one existing design of a product of the same or similar type, the people’s court shall determine that the design “be a prior design,” stipulated in paragraph 1, Article 23 of the Patent Law.
 
Except the circumstance specified in the preceding paragraph, where the difference between a design and one existing design of a product of the same or similar type does not have a significant impact on the overall visual effect, the people’s court shall determine that the design does not “significantly differ,” stipulated in paragraph 2, Article 23 of the Patent Law.
 
The people’s court shall determine whether the type of the product of a design is the same as or similar to that of an existing design based on the use of the product of the design. In determining the use of the product, the people’s court may refer to the brief description of the design, the product classification table of of the product of the design, the function, sales and actual use of the product, and other factors.
 
Article 18 Where a design patent has an overall visual effect that is the same as, or is essentially the the same as but slightly differs from, the overall visual effect of another design patent filed on the same day for a product of the same type, the people’s court shall determine that it does not comply with the provision in Article 9 of the Patent Law that “for any identical invention-creation, only one patent right shall be granted.”
 
Article 19 Where a design has an overall visual effect that is the same as, or is essentially the the same as but slightly differs from, the overall visual effect of another design that is filed before the filing date and announced after the filing date, and is of the same or similar type, the people’s court shall determine that it constitutes “the identical design,” stipulated in paragraph 1, Article 23 of the Patent Law.
 
Article 20 Where a design is derived from use conversion, combination, or replacement of design features that ordinary consumers can easily think of, according to a design hint provided by the prior design as a whole, but the design has an overall visual effect that is the same as, or is essentially the the same as but slightly differs from, the overall visual effect of a design patent and does not have a unique visual effect, the people’s court shall determine that the design patent does not “significantly differ from” the combination of prior design features, stipulated in paragraph 2, Article 23 of the Patent Law.
 
Where any of the following circumstances exists, the people’s court may determine that there is a design hint mentioned in the preceding paragraph:
(1) Design features of different parts of a product of the same type can be combined or replaced;
(2) The prior design discloses that design features of a product of a specific type can be converted and used to the product of the design patent;
(3) The prior design discloses that design features of different products of a specific type can be combined;
(4) A pattern in the prior design can be used in the product of the design patent directly or after the pattern is slightly changed;
(5) A feature of a single natural object is converted and used to the product of the design patent;
(6) The design can be derived from only basic geometric shapes, or from only basic geometric shapes after they are slightly changed; and
(7) All or part of designs of buildings, works, and logos, among other that are known to ordinary consumers are used.
 
Article 21 In determining the unique visual effect mentioned in Article 20 of these Provisions, the people’s court may comprehensively consider the following factors:
(1) The design space of the product of the design patent;
(2) The degree of relevance between types of the products;
(3) The number and difficulty of the design features that are subjected to the use conversion, combination, or replacement; and
(4) Other factors that need to be considered.
 
Article 22 The “legitimate rights” referred to in paragraph 3, Article 23 of the Patent Law include legitimate rights, or legitimate rights and interests, to works, trademarks, geographical indications, names, business names, portraits, and product names, packages and decorations that have certain influence.
 
Article 23 Where a party claims that the following circumstances in the procedures of the patent reexamination or the examination of a request for declaring a patent invalid constitute “violation of legal procedures” stipulated in item 3, Article 70 of the Administrative Litigation Law, the people’s court shall support:
(1) Omission of the grounds and evidence presented by the party, which has a substantial impact on the rights of the party;
(2) Failure to notify the patent applicant, patentee, and invalidation petitioner who should participate in the examination procedures in accordance with the law, which has a substantial impact on their rights;
(3) Failure to inform the party of a member of the collegial panel, and the member of the collegial panel should have recused himself/herself in accordance with the law but did not recuse;
(4) Failure to provide the party to whom the decision in dispute was unfavorable with an opportunity to state his/her opinions on the grounds, evidence, and facts on which the decision in dispute is based;
(5) Voluntarily introducing common knowledge or customary designs that the party did not claim, without listening to the party’s opinions, which has a substantial impact on the rights of the party; and
(6) Any other circumstance in violation of the legal procedures that may have a substantial impact on the rights of the party.
 
Article 24 Where the decision in dispute falls under any of the following circumstances, the people’s court may, in accordance with Article 70 of the Administrative Litigation Law, make a ruling to partially revoke the decision:
(1) The decision in dispute is incorrect in identifying some of the claims, and correct in identifying the others of them;
(2) The decision in dispute is incorrect in identifying part of the designs regarding “an application for a patent for design” stipulated in paragraph 2, Article 31 of the Patent Law, and correct in identifying the other of them; and
(3) Any other circumstance where a ruling to partially revoke the decision may be made.
 
Article 25 Where the decision in dispute has commented on all the grounds and evidence for the invalidation that are claimed by a party, and declares a claim to be invalid, but the people’s court considers that none of the grounds on which the decision in dispute identifies the claim as being invalidated is justified, it shall make a ruling to revoke or partially revoke the decision, and may decide that the defendant should make a new decision on the claim as appropriate.
 
Article 26 Where an examination decision is made directly on the basis of an effective ruling without introducing new facts and grounds, and a party files a lawsuit against the decision, the people’s court shall decide that the lawsuit shall not be accepted, and shall decide that the lawsuit shall be dismissed if it has already been accepted.
 
Article 27 Where the decision in dispute is indeed incorrect in fact ascertainment or law application, but is correct in identifying the conclusion concerning the patent grant and confirmation, the people’s court may make a ruling that that the plaintiff’s lawsuit should be dismissed upon correcting the fact ascertainment and law application.

Article 28 Where a party claims that the relevant technical content belongs to common knowledge or the relevant design feature is a customary design, the people’s court may require the party to provide evidence or make an explanation.
 
Article 29 Where a patent applicant or patentee provides new evidence in an administrative case involving patent grant and confirmation to prove that the patent application should not be rejected or that the patent right should remain valid, the people’s court should generally review the evidence.
 
Article 30 The people’s court generally does not review new evidence that the invalidation petitioner provides in an administrative case involving patent confirmation, with the exception of evidence:
(1) of common knowledge or a customary design that has been claimed in the procedure of the examination of a request for declaring a patent invalid;
(2) for the level of knowledge and cognitive ability of those skilled in the art or ordinary consumers;
(3) for the design space of the product of the design patent, or the overall status of the prior design;
(4) to reinforce the evidence that has been accepted in the procedure of the examination of a request for declaring a patent invalid; and
(5) against the evidence provided by the other parties in the litigation.
 
Article 31 The people’s court may require a party to provide the new evidence stipulated in Articles 29 and 30 of these Provisions.
 
Where evidence that a party provides to the people’s court is evidence that was required to be provided in the procedures of the patent reexamination or the examination of a request for declaring a patent invalid but that was not provided without justified reasons, the people’s court generally does not accept the evidence.
 
Article 32  These Provisions shall come into force on September 12, 2020.
 
After coming into force, these Provisions apply to cases at first instance and second instance that are being tried by the people’s court; these Provisions do not apply to a retrial of a case for which an effective ruling has been made before these Provisions come into effect.
 

 

Sharing page