Revision to the Guidelines for Patent Infringement Determination by the Beijing High People’s Court

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(Author: Mr. GAO Dong & Ms. GU Xueni; Source: WAN HUI DA)

On April 20, 2017, the Beijing High People’s Court issued a newly revised “Guidelines for Patent Infringement Determination” (“the Guidelines”) in three languages (i.e. Chinese, English and Japanese). The Guidelines has six sections, including determination of protection scope of invention and utility model, determination of infringement of invention and utility model, determination of protection scope of design patent, determination of infringement of design patent, determination of patent infringement activities, and defense of patent infringement. In addition to the comprehensive rules on patent interpretation, determination of patent infringement and defense of patent infringement, for the first time the Guidelines provides rules on some hotly discussed issues like standard essential patent and graphical user interface (GUI) design. The revision also follows the Supreme People’s Court Interpretation on Several Issues Concerning the Application of Law in Adjudication of Patent Infringement Dispute Cases (II) (“the Judicial Interpretation II”). This article provides a preliminary summary of the major revision in the Guidelines, with reference to an introduction by Beijing High People’s Court published on Beijing Court website.

Ⅰ. Exploring Rules over Claim Interpretation

1. The fairness principle

Notes: This principle is newly provided in Article 2. To determine the protection scope of the claims, according to the “fairness principle”, it should not only consider the contribution of the patent to protect the right holder’s interest, but also to consider the public’s interest to avoid including prior art or technical defect to be overcome by the patent into the claims’ protection scope.

2. The principle of interpretation in compliance with the objective of the invention

Notes: This principle is newly provided in Article 4. In the patent prosecution proceedings, the patent to be granted shall comply with the objective of the invention and solve the technical problem of the invention. In the patent infringement proceedings, on the presumption that the patent is effective, technical solutions incapable of achieving the objective of the invention shall not be interpreted into the protection scope of the claims. This principle also accords with the fairness principle. Meanwhile, it should be noted that the Supreme People’s Court also discussed this issue in the cases related to patent prosecution. Nonetheless, since the purposes of claim interpretation in patent prosecution and patent infringement proceedings are different, applications of the principle in the two proceedings are different as well.

3. The construction of different claims

Notes: This method is newly added as Article 17. Generally, it can be presumed that the protection scope of an independent claim is different from that of its dependent claims, unless there is contrary evidence to overturn such presumption.

4. The ways of claim interpretation are not limited to the listed

Notes: Article 13 revises the expression of “include” to “include but not limited to”, which believes to remove the misunderstanding that claim interpretation has to be interpreted according to the rules listed only. In practice, claim interpretation can be done throughout the whole infringement analysis process, and is not limited to the three ways listed in Article 13.

5. Interpretation related to environment feature and subject title

Notes: Article 25 newly introduces the definition of subject title, and Article 24 revises the meaning of environment feature and further clarifies the difference between them, avoiding that subject title is improperly understood as environment feature in practice. Article 24provides that the infringement determination involving environment features depends on whether the environment features recited in claims are applicable to the accused technical solution, rather than whether they are actually applied in the accused technical solution. This article further details the exceptions.

6. The interpretation method for the patentee’s lexicography

Notes: Article 28 newly introduces the “lexicographer rule.” Unless the description of a patent provides no definition, a term with special definition should generally be interpreted according to the definition in the description. This article further provides that the term shall be interpreted to “best reflect the goal of the invention” when there is no definition for the lexicography in the description.

7. Interpreting claims according to drawings

Notes: Article 30 is newly added to provide how to use drawings to interpret claims, “only the technical content that can be directly and unambiguously determined from the drawings by a person with ordinary kills in the art after reading the claims and description can be used to interpret the technical features in the claim.”

8. Interpreting claims by embodiments

Notes: Article 32 is newly added to provide that apart from statutory exceptions, “the protection scope of a patent shall not be limited to the particular embodiments disclosed in the description.” Therefore, the claims should not be directly interpreted as the embodiments.

Ⅱ. Interpretation of Functional Claim and the Doctrine of Equivalents

1. Interpretation of functional claim

Notes: In Article 18, the definition of functional feature is amended according to the Judicial Interpretation II.

Articles 42 and 56 are newly added articles which respectively stipulate the determination methods of literal infringement and equivalent infringement for claims involving functional features. Nevertheless, these articles have difference with the Judicial Interpretation II regarding the specific determination rules of identical and equivalent infringement. The Judicial Interpretation II provides the literal or equivalent infringement shall be determined based on the time when infringing behavior occurs, while the above two articles provided literal infringement shall be determined based on the time of patent filing date.

2. The doctrine of equivalents

Notes: Article 44 explicitly provides that the right holder has the burden of proof for equivalent infringement, that is, “evidence shall suffice to prove that the accused technical solution constitutes equivalent infringement.” We think this article intends to limit the application of equivalent infringement.

Articles 45-48 further improve the three elements for determining equivalent infringement, namely “basically the same means,” “basically the same function” and “basically the same effect.” Article 49 provides rules on how to determine the technical feature that “can be anticipated without inventive effort.” These articles provide guidance for judicial trial and production of evidence.

Article 57 further regulates the determination of equivalent infringement involving numerical range features following the Judicial Interpretation II.

Article 60, as a newly added article, explicitly provides that “if the right holder knows or is able to foresee the existence of alternative technical features at the time of filing or amending the patent application but doesn’t incorporate the alternative technical features into the protection scope,” the allegation that the alternative technical features constitute equivalent infringement shall not be supported in infringement determination. This article is similar to the “foreseeability limitation on the application of the doctrine of equivalents” in the US patent practice, aiming at prompting the patentee to clearly define the protection scope as early as possible. This article also reflects the rationale why Articles 42 and 56 provide different times for determining identical and equivalent infringement (the patent filing date is an important time).

Ⅲ. Design Patent Rules and GUI Rules

Notes: Article 66 emphasizes the “overall comparison principle,” which is similar to the “all elements rule” regarding invention and utility model, and it requires that in the determination of the protection scope of a design patent, it is not allowed to consider only some of the design features and ignore others. Besides, this article for the first time provides an explicit definition for the “design feature,” which is not clearly defined in the Guidelines for Patent Examination of the State Intellectual Property Office (SIPO). Therefore, it can be understood that, during the design patent prosecution proceeding, the new definition of “design feature” will be important reference for determining the validity of a design patent.

Articles 82 and 83 are newly added articles that emphasize the impact brought by “design space” on determining whether the designs are identical or similar, and further provide some detailed provisions following the Judicial Interpretation II.

Article 73 newly introduces the relevant provisions of GUI design protection. This article is the same as that in the Guidelines for Patent Examination revised by SIPO. They emphasize what’s protected is still a product’s design, not the GUI itself independently. This article further articulates a principle that the protection scope of a dynamic GUI design shall be “jointly determined by product design views that can determine the dynamic change process.”

Articles 86 and 87 are newly added articles which provide more detailed rules on the infringement determination method of static and dynamic GUI designs.

Ⅳ. Contributory Infringement

Notes: Articles 118-122 provides, except for those in the Interpretation II, several typical examples of abetting and aiding another’s direct infringement. It should be noted that all the examples of abetting and aiding infringement require the actor “knowingly” commits the contributory behavior.

Ⅴ. Abuse of Patent Right and Standard Essential Patent

Notes: Article 126 articulates that if the patentee obtained the patent in bad faith, the court may reject the plaintiff’s claim. Since the Guidelines focus on the determination of patent infringement, it doesn’t provide provisions over issues of counterclaim, compensation for damages and so forth.

Article 127 supplements several typical circumstances of acquiring patent in bad faith, which will be good reference for the judicial practice.

Articles 149-153 are newly added articles. These articles mainly relate to whether injunction should be issued in the standard essential patent dispute cases. Article 149 follows the Judicial Interpretation II and provides that licensing of recommended national, local or industrial standard shall comply with the FRAND rule. It further provides that licensing of other standards drafted by international standard organizations or other organizations shall also follow the FRAND rule.

Article 150 provides that both negotiating parties shall be in good faith, namely the relevant obligations shall be performed bilaterally rather than unilaterally.

Article 151, regarding the allocation of burden of proof, articulates that the patentee shall bear the burden to prove the specific content of its fair, reasonable and non-discriminatory terms committed in formulating the standard.

Article 152 provides that the general principle is to not issue the injunction in the standard essential patent dispute cases, and it lists the circumstances under which the patentee willfully violates its obligation for licensing on fair, reasonable and non-discriminatory terms.

Article 153 provides more detailed rules on when the accused party shall be found to have clear fault.

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