January 2024
Yanting Pei and Teresa Huang
In the previous article, we mainly discussed the disputes in patent license contracts. Starting from this article, we will discuss another common type of patent disputes – patent infringement cases.
In terms of patent infringement disputes, there are often two issues involved: first, whether the accused infringing technology/product falls within the scope of patent protection; The second is whether the accused infringing party has committed patent infringement. In addition, in cases involving multiple parties’ conducts, the determination of joint infringement will also be concerned. This article will combine relevant legal provisions and judicial opinions, regarding invention and utility model patents (the term “patent” in this article only refers to invention and utility model patents, and will not be repeated below), to try to explore some judicial rules for such cases.
1. Is it within the scope of protection of the patent?
According to Article 64 of the Patent Law, the scope of protection of an invention or utility model patent right shall be based on the content of its claims, and the specification and drawings may be used to explain the content of the claims As we discussed in the previous article “Introduction to the Scope of Protection of Patent Rights and Patent Layout”[1], the claims are the main basis for determining the scope of patent protection. Therefore, determining whether a patent right has been infringed often starts with whether the accused technical solution falls within the scope of protection of the claims. In practice, courts generally consider the following factors when addressing this issue:
A. Are all technical features the same?
According to Article 7 of the Interpretation of the Supreme People’s Court on Several Issues Concerning the Application of Law in the Trial of Patent Infringement Disputes (Fa Shi [2009] No. 21) (hereinafter referred to as “Judicial Interpretation I”), when determining whether the accused infringing technical solution falls within the scope of patent protection, the people’s court shall examine all technical features stated in the claims claimed by the right holder. If the accused infringing technical solution contains technical features that are identical or equivalent to all the technical features stated in the claims, the people’s court shall determine that it falls within the scope of patent protection; If the technical features of the accused infringing technical solution are missing one or more of the technical features stated in the claims compared to all the technical features stated in the claims, or if there is one or more technical features that are different or not equivalent, the people’s court shall determine that they do not fall within the scope of patent protection. This is also the basis for the so-called “All Elements Rule” in China’s judicial practice.
Generally speaking, when applying the ” All Elements Rule ” to determine whether there is infringement, the court will compare all the technical features stated in the claims with all the technical features corresponding to the accused infringing technical solution one by one[2]. If, after comparison, the following situations exist, it may constitute infringement[3]:
1. The accused infringing technical solution includes technical features that are identical to all technical features stated in the claims;
2. The technical features stated in the claims adopt the upper level concept, while the corresponding technical features of the accused infringing technical solution adopt the corresponding lower level concept;
3. The accused infringing technical solution includes all technical features in the claims, and adds new technical features (except for those explicitly excluded in the patent documents);
4. For the claims containing functional features, the corresponding structure and step features of the accused infringing technical solution are achieved by the same means, achieving the same function and producing the same effect, or although there are differences, achieving the same function and effect with basically the same means, and can be associated by ordinary technical personnel in this field without creative effort on the patent application date, it should be recognized that the corresponding structure and step features are the same as the functional features mentioned above;
5. The subsequent patent rights is an improvement on the prior patent, where a certain claim in the subsequent patent records all the technical features stated in a certain claim of the prior patent, and adds additional technical features;
6. If there are technical features defined by numerical values or continuously changing numerical ranges in the patent claims, and the corresponding technical numerical values or numerical ranges of the accused infringing property fall within the numerical range of the patent technical features, or partially overlap with the numerical range of the patent technical features or have a common endpoint, it shall be deemed to be the same as the patent technical features.
For technical features related to closed claims in the fields of medicine and chemistry, according to Article 7 of the Interpretation of the Supreme People’s Court on Several Issues Concerning the Application of Law in the Trial of Patent Infringement Disputes (II) (hereinafter referred to as “Judicial Interpretation II”), if the accused infringing technical solution has additional technical features, it should not be deemed that the accused infringing technical solution falls within the scope of patent protection. However, this situation does not include the added technical features belong to unavoidable conventional impurities and are not applicable to the claims of traditional Chinese medicine compositions.
B. Are all technical features equivalent?
As stipulated in Article 7 of Judicial Interpretation 1 above, not only the same technical features will constitute infringement, but equivalent technical features will also constitute infringement. This is also a commonly used doctrine of “equivalent” in judicial practice.
According to the “Guidelines for Patent Infringement Judgment” of the Beijing High People’s Court (hereinafter referred to as the “Beijing High Court”), in patent infringement determination, if the same infringement is not established, it should be determined whether it constitutes equivalent infringement[4]. If the accused infringing technical solution has one or more technical features that are literally different from the corresponding technical features in the claims, but are equivalent features, on this basis, the accused infringing technical solution is determined to fall within the scope of patent protection, and it belongs to equivalent infringement.
The so-called equivalent feature, according to Article 17 of the “Several Provisions of the Supreme People’s Court on the Application of Law in the Trial of Patent Dispute Cases (2015 Amendment)” (hereinafter referred to as the “Several Provisions”), refers to those which achieve substantially the same function and generate substantially the same effect by the means substantially the same as the technical features stated in the claim and can be envisaged by a person with ordinary skills in the field without making inventive effort.
It should be noted that, as pointed out both by the Beijing High Court and Jiangsu High Court in their guidelines[5], the replacement of equivalent features should be a replacement between specific and corresponding technical features, rather than a replacement between complete technical solutions. If there are multiple equivalent features between the claim and the accused infringing technical solution, and the superposition of these multiple equivalent features results in the accused infringing technical solution forming a technical solution that is different from the claimed technical concept, or if the accused infringing technical solution achieves unexpected technical effects, it is generally not appropriate to consider it as equivalent infringement.
C. Is the accused infringing technical solution within the scope of protection that the right holder has waived?
In the process of applying the doctrine of equivalents, a problem that may arise is that if the technical features claimed by the right holder constitute equivalence and are actually abandoned by the right holder, the court generally does not support the application of the doctrine of equivalents. This is known as the “principle of estoppel” and “principle of donation” in judicial practice.
Generally speaking, if the accused infringer can prove the following circumstances, it is possible to prove that the technical features have been waived by the right holder[6]:
1. Technical solutions described only in the specification or drawings and not summarized in the claims;
2. The accused infringing technical solution belongs to the technical solution explicitly excluded in the specification, or belongs to the technical solution in the background technology;
3. For non-invention point technical features, modified technical features in invention claims or utility model technical features, if the patentee knew or could foresee the existence of alternative technical features at the time of patent application or modification and did not include them in the scope of patent protection;
4. In patent authorization or invalidation procedures, the scope of protection waived by the patent applicant or patentee through restrictive modifications to the claims, specification, or statement of opinion.
In addition, it should be noted that the application of the doctrine of equivalent and the principle of estoppel both require the parties to actively propose and provide clear evidence, otherwise the court shall not apply them voluntarily.
Furthermore, according to the provisions of Judicial Interpretation I mentioned above, if after comparison, it is found that the technical features of the accused infringing technical solution lack one or more of the technical features stated in the claims, or if one or more of the technical features are neither identical nor equivalent, it does not constitute patent infringement.
The so-called “neither identical nor equivalent”, according to the explanation of the Beijing High Court[7], includes the following situations:
1. This technical feature makes the accused infringing technical solution constitute a new technical solution;
2. The technical feature is significantly superior in function and effect to the corresponding technical feature in the claims, and ordinary technical personnel in the technical field believe that this change has substantial improvement rather than obvious;
3. The accused infringing technical solution omits individual technical features in the claims or replaces the corresponding technical features in the claims with simple or low-level technical features, abandons or significantly reduces the performance and effect corresponding to the technical features in the claims, thereby forming an inferior technical solution.
II. Is there any infringement behavior?
According to Article 11 of the Patent Law, following the grant of patent rights for an invention or a utility model, unless otherwise stipulated in this Law, no organization or individual shall implement the patent without permission from the patentee, i.e. shall not manufacture, use, offer to sell, sell or import such patented products for manufacturing and business operation purposes, or use the patented method and use, offer to sell, sell or import products obtained directly according to the patented method. From this, it can also be seen that in patent infringement disputes, in addition to addressing the issue of whether it falls within the scope of patent protection, it is also necessary to address the issue of actual behavior.
There is currently no specific legal provision for the purpose of manufacturing and business operation, but according to Article 75 of the Patent Law and the infringement judgment guidelines of the Beijing High Court and the Jiangsu Provincial High People’s Court (hereinafter referred to as the Jiangsu High Court)[8], the act of implementing a patent under the following circumstances should not be considered as “implementation for manufacturing and business operation purposes”:
1.where the relevant patent is used in the device and equipment of foreign transportation vehicles which temporarily pass through China’s territorial land, territorial waters and airspace for the needs of the transportation vehicles according to an agreement entered into between their home country and China or an international treaty participated by both their home country and China or under the principle of mutual benefits;
2. Using relevant patents exclusively for scientific research and experimentation;
3. Manufacturing, use or importation of patented drugs or patented medical devices for the purpose of providing information required for administrative examination and approval, and manufacturing or importation of patented drugs or patented medical devices specifically for them.
The so-called manufacturing, according to the guidelines of Beijing High Court and Jiangsu High Court[9], generally refers to the realization of the product technical solution stated in the claims, and the quantity and quality of the product do not affect the recognition of manufacturing behavior. If products are manufactured using different manufacturing methods, except the product claims qualified by method, they will generally be recognized as infringing. The act of assembling components into patented products is usually considered infringement, unless such products are usually sold as complete sets of components and assembled by the seller or user themselves.
The so-called use generally refers to the application or realization of the technical functions or effects of the patented technical solution[10]. If a product that infringes on the patent right of an invention or utility model is used as a component of another product to manufacture that other product, according to Article 12 of Judicial Interpretation I mentioned above, it should be recognized as being used; Selling the other product should be recognized as sales. For method patents, according to the guidelines of the Beijing High Court, the use of patented methods refers to the realization of every step of the patent method technical solution stated in the claims, and the result of using this method does not affect the determination of whether it constitutes infringement of patent rights.
The so-called promised sales refer to the act of the accused infringer making an intention to sell products that infringe on the patent rights of others before the actual act of selling such products occurs. Therefore, if the intention to sell products that infringe other‘s patent rights is expressed through advertising, display in store windows, online or at trade shows, it can be considered as an offer to sell.[11]
The so-called sales refer to the paid transfer of the property rights of patented products to others. Sales generally involve both parties reaching an agreement, entering into a contract, and transferring the subject matter, including not only cash transactions, but also credit purchases and sales through barter. Adding outer packaging to bare patented products for sale still constitutes the sale of patented products. The ownership of patented products has not actually been transferred, but if the sales contract has been legally established, it also constitutes the sale of patented products. In addition, offering products that infringe patent rights for rental, tying up or transferring ownership of infringing products in other ways, obtaining commercial benefits in disguise, and gifting infringing products for manufacturing and business operation purposes are all considered sales. Furthermore, if a product that infringes an invention or utility model patent is used as a component or intermediate product in another product which is manufactured and sold, it should also be considered as sales of the patented product, except for cases where the physical and chemical properties of the intermediate product substantially changed during the manufacturing process.[12]
The so-called import refers to the importation of patented products or items containing patented products into China without the permission of the patentee. Imported products must be protected by patent law in the importing country, otherwise they cannot constitute the act of importing patented products. Import behavior, like manufacturing behavior, is the primary step in making patented products appear within their effective geographical scope. If the product has been sold by the patentee or a licensed unit or individual and then imported, it does not constitute infringement.[13]
The so-called products obtained directly by patented methods refer to the original products obtained by processing raw materials and items according to all the step features stated in the method patent claims, resulting in substantial changes in the structure or physical and chemical properties of the raw materials and items. The subsequent products obtained by further processing the above-mentioned original products, that is, using the original product as an intermediate component or raw material, processing it into other subsequent products, shall be recognized as products directly obtained by using the patented method. Further processing of the subsequent product does not constitute the use of the product directly obtained according to the patented method.[14]
In summary, if the accused infringing party has the above-mentioned circumstances, it will generally be recognized as having actual infringement behavior. But in practice, the behavior of merchants is always intertwined with upstream and downstream merchants, which will involve the issue of joint infringement.
III. Determination of joint infringement
According to Article 1168 of the Civil Code, if two or more people jointly commit an infringement and cause damage to others, they shall bear joint and several liabilities. In addition, according to Article 1169 of the Civil Code, those who solicit or assist others in committing infringement shall bear joint and several liabilities with the infringer. Therefore, in patent infringement cases, if the parties jointly commit the infringement, they also need to bear the liability of joint infringement. Specifically, in judicial practice, if the following situations occur, it is generally recognized as joint infringement[15]:
A. Two or more people conspire or collaborate with each other to carry out patent infringement;
B. If the principal knows that the acts made by others constitute infringement of patent rights, and entrust others to manufacture or indicate “supervision” or similar participation behaviors on the product, the principal and the trustee constitute joint infringement;
C. Where a party, clearly knowing that a certain product is a raw material, intermediate product, component or equipment specially used for implementing the technical solution of a patent in suit, without the permission of the patentee, for manufacturing or business operation purposes, provides said product to another party who commits an act of patent infringement, the party’s act of providing the specially used product constitutes the act of assisting another party in committing the act of patent infringement, however, where the another party is exempted from liability according to relative provisions , the party shall bear civil liability solely;
D. Knowingly providing convenient conditions such as venue, storage, transportation, etc. for the other party’s infringement of patent rights;
E. Without the permission of the patentee, the infringer actively induces others to implement specific technical solutions for manufacturing and business operation purposes by providing drawings, product manuals, imparting technical solutions, conducting product demonstrations, etc., and the others actually engage in patent infringement behavior;
F. If the transferee of a technology transfer contract acquires and implements the technology in accordance with the provisions of the contract, and infringes the patent rights of others, the transferee shall bear the liability for infringement. But if the transferor knowingly transfers the technology in question that infringes the patent rights of others, it can be deemed that the transferor’s transfer behavior constitutes solicitation for others to commit patent infringement.
Based on the above, this article mainly summarizes some basic principles for determining patent infringement. In practice, the determination of infringement still needs to be clarified in more details based on specific cases. Due to space limitations, this article will not go into detail here. If specific questions need to be answered, it is recommended to seek professional consultation.
[1] Series Articles of Patent Protection Practice (1) ─ Introduction to the Scope of Protection of Patent Rights and Patent Layout (Mainland China)
[2] As stated in the ” Guidelines for Patent Infringement Judgment of Beijing High People’s Court “(hereinafter referred to as the “Guidelines for Patent Infringement Judgment of Beijing High Court”), this requirement is made; The Guidelines for the Trial of Patent Infringement Disputes by the High People’s Court of Jiangsu Province also pointed out that the basic principle for determining whether there is patent infringement is “comprehensive coverage and one – to – one correspondence”.
[3] Please refer to Articles 38-43 of the Guidelines for Patent Infringement Judgment of Beijing High Court, as well as Article 3.2.1.2 of the Guidelines for the Trial of Patent Infringement Disputes by the High People ‘ s Court of Jiangsu Province.
[4] Please refer to Article 44 of the Guidelines for Patent Infringement Judgment of Beijing High Court.
[5] Please refer to Article 51 and 55 of the Guidelines for Patent Infringement Judgment of Beijing High Court, as well as Article 3.2.2.2 of the Guidelines for the Trial of Patent Infringement Disputes by the High People’s Court of Jiangsu Province.
[6] Refer to Articles 58-61 of the Guidelines for Patent Infringement Judgment of Beijing High Court; Guidelines for the Trial of Patent Infringement Dispute Cases by the High People’s Court of Jiangsu Province 3.2.2.3; 3.2.2.4
[7] Please refer to Article 129 of the Guidelines for Patent Infringement Judgment of Beijing High Court.
[8] Please refer to Articles 134,135, and 136 of the Guidelines for Patent Infringement Judgment of Beijing High Court, as well as Articles 5.4, 5.5, and 5.6 of the Guidelines for the Trial of Patent Infringement Dispute Cases issued by the High People’s Court Jiangsu Province.
[9] Please refer to Article 99 of the Guidelines for the Patent Infringement Judgment of Beijing High Court and Article 6.1 of the Guidelines for the Trial of Patent Infringement Disputes by the High People’s Court of Jiangsu Province.
[10] Refer to Article 101 of the Guidelines for Patent Infringement Judgment of Beijing High Court; Article 6.2 of the Guidelines for the Trial of Patent Infringement Dispute Cases by the High People’s Court of Jiangsu Province.
[11] Refer to Article 107 of the Guidelines for Patent Infringement Judgment of Beijing High Court; Article 6.3 of the Guidelines for the Trial of Patent Infringement Dispute Cases by the High People’s Court of Jiangsu Province.
[12] Refer to Articles 105,106, and 108 of the Guidelines for Patent Infringement Judgment of Beijing High Court; Article 6.4 of the Guidelines for the Trial of Patent Infringement Dispute Cases by the High People’s Court of Jiangsu Province.
[13] Please refer to Article 6.5 of the Guidelines for the Trial of Patent Infringement Dispute Cases by the High People’s Court of Jiangsu Province.
[14] Please refer to Article 111 of the Guidelines for Patent Infringement Determination by the Beijing High Court, Article 13 of Judicial Interpretation 1, and Article 20 of Judicial Interpretation2.
[15] Please refer to Article 116-122 of the Guidelines for Patent Infringement Determination issued by the Beijing High Court and Article 21 of Judicial Interpretation II.
Related Articles
- Series Articles of Patent Protection Practice (1) ─ Introduction to the Scope of Protection of Patent Rights and Patent Layout (Mainland China)
- Series Articles of Patent Protection Practice (2) ─ Brief Analysis of the Attribution of Patent Rights in Service Invention and Cooperative Development (Mainland China)
- Series Articles of Patent Protection Practice (3) ─ A Brief Analysis of Disputes in Patent License Contract (Mainland China)
- Series Articles of Patent Protection Practice (5) ─ Defense of Patent Infringement (Mainland China)
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