Wanhuida Intellectual Property - China
On 10 September 2020 the Supreme People's Court (SPC) promulgated the Provisions on Several Issues Concerning the Application of Laws in Adjudicating Administrative Cases Involving Granting and Affirmation of Patent Rights, which is the first judicial interpretation concerning the trial of patent administrative cases related to reexamination of patent applications or invalidation of patent rights. The judicial interpretation entered into force on 12 September 2020 and is the first, but definitely not the last, of the SPC's endeavours to shape the landscape of China's patent administrative proceedings.
This article summarises the judicial interpretation's main points.
Claims should be interpreted under the usual meaning perceived by those skilled in the art after reading the relevant claims, descriptions and drawings. Where there are special definitions in the descriptions and drawings, they should be followed. Where the preceding approach is followed but the claims still cannot be defined, the courts may resort to technical dictionaries and manuals, reference books, textbooks and technical standards commonly used in the field for reference.
Influence of infringement cases on administrative cases
In administrative cases related to invalidation of patent rights, the patentee's pertinent statements adopted by effective judgment in the patent infringement case may serve as a point of reference in the interpretation of the claims.
Corrective explanation of errors
If there is only one interpretation to be obtained according to the claims, specification and drawings (despite obvious errors or ambiguities in the grammar, words, numbers, punctuation, graphics and symbols in patent documents), such interpretation should be adopted.
Restrictions on malicious fraudulent patents
If there is evidence to prove that a patent applicant or patentee violated the principle of good faith or fabricated specific implementation methods, technical effects, data, diagrams and other related technical content in the specification and drawings, it can be claimed that such a claim does not comply with the Patent Law.
Sufficient disclosure of specification
A patent specification will be deemed to not have been sufficiently disclosed, provided that any of the following scenarios arises on filing date:
- The technical solution defined by the claim cannot be implemented.
- Implementing the technical solution defined in the claim cannot solve the technical problem to be resolved.
- The technical solution defined in the claim can solve the problems that it intends to solve but requires excessive effort.
In the above cases, such claims are usually not supported by the patent specification either.
With reference to the description and drawings, it should be deemed that a patent claim does not clearly limit the scope of protection in any of the following cases:
- The type of invention is unclear.
- The meaning of the claim's technical features cannot be reasonably determined.
- There are obvious contradictions between technical features which cannot be reasonably explained.
Claims supported by specification
If a person skilled in the art cannot obtain or reasonably generalise, on filing date, the technical solution defined by the claim after reading the specification and drawings, the claim will be deemed not to be supported by the specification.
With regard to functional features in claims, if claims, descriptions and drawings disclose no specific embodiment that can achieve said function or effect, it should be deemed that the claims and the relevant description of such technical features have not been sufficiently disclosed.
Supplementary drug experiment data
Where supplementary experimental data relating to a drug patent is submitted after the filing date to prove that a patent application has been sufficiently disclosed or is non-obvious, the court will review such data.
If the parties dispute the authenticity of the experimental data, the party which submits the experimental data must provide evidence to prove the source and formation process of said data. The court may notify the person in charge of the experiment to make a statement as regards the experiment's raw materials, procedures, conditions, environment and parameters.
Technical problems actually solved by claims
If specifications and drawings do not clearly record the technical effects that can be achieved by distinguishing technical features in the claims, the court may ascertain that those skilled in the art could determine the technical problem actually solved by the claim according to the relationship between the distinguishing technical features and other technical features in the claims and the role played by the distinguishing technical features in the technical solution defined by claims, with reference to common knowledge in the field. If the decision at issue fails to determine or erroneously determines the technical problem actually solved by the claim, the court may determine of its own accord the inventive step of the claim.
For designs with a larger design space, it is usually difficult for ordinary consumers to notice the small differences between different designs; conversely, when a design space is small or ordinary, consumers are usually more likely to notice the small differences between different designs.
The courts may determine design space with reference to the following factors:
- a product's function and purpose;
- the overall status of the existing design;
- customary design;
- mandatory provisions of law and administrative regulation;
- national and industry technical standards; and
- other factors that merit consideration.
Functional design features
Design features dictated by the need to achieve specific technical functions or that have only a limited selection will have no significant bearing on the overall comprehensive judgment of the visual effects of a design patent.
Where a design patent is based on the teaching of a prior design as a whole and obtained through the conversion, combination or replacement of design features, which is obvious to ordinary consumers, so that the design patent, devoid of unique visual effects, has an overall visual effect identical to or substantively identical to a prior design, except for partial nuances, it should be determined that such a design patent is not "significantly different" from the combination of the prior design features.
In the following circumstances, the courts may determine that there is teaching in prior designs:
- There is a combination or replacement of design features from different parts of the same types of product.
- The prior design discloses that the design features of a specific type of product are transferred to a product with a patented design.
- The prior design discloses that the design features of different specific types of product have been combined.
- The pattern in the prior design is used directly or after merely making minor changes in the design patent product.
- Applying the characteristics of a single natural object to the product of a design patent.
- The design is obtained by simply adopting basic geometric shapes or after merely making minor changes.
- Designs using all or part of buildings, works or logos that are known to ordinary consumers.
Prior rights that can be cited to block a design patent application include works, trademarks, geographical indications, names, corporate names, portraits and the legal rights or rights enjoyed by the names of commodities, packaging and decorations that have certain influence.
The following circumstances in patent re-examination proceedings and invalidation proceedings should be found to be a "violation of legal procedures":
- An omission of the grounds and evidence presented by the parties, which has a substantial impact on the rights of the parties.
- Failing to notify the patent applicants, patentees and invalidation petitioner that should participate in the examination procedure, which has a substantial impact on their rights.
- Failing to inform the parties of the members of the collegial panel and where the members of the collegial panel have statutory reasons for recusal and fail to do so.
- Failure to give the party, to whom a decision is unfavourable, an opportunity to state their opinions on the reasons, evidence and facts on which the decision is based.
- Taking the initiative to introduce common knowledge or customary designs not asserted by the parties, failing to listen to the opinions of the parties, which has a substantial impact on their rights.
- Other circumstances breaching legal procedure may have a material impact on the rights of the parties.
Partial revocation of decisions
The courts may revoke part of a decision at issue where:
- the decision made an erroneous determination with regard to some of the claims, but the rest were correct; and
- the decision at issue made an erroneous determination in assessing part of the designs that included multiple embodiments.
Relationship between litigation and administrative proceedings
Where all of the grounds and evidence for invalidating a claim have been reviewed and the claim has been invalidated in the decision at issue, if the courts find that all of the grounds are not tenable, they will at least partially revoke the decision and may order the defendant to make a new decision on the claim.
Where a decision is made directly based on an effective judgment without introducing new facts and grounds and the parties file a lawsuit against said decision, it will be dismissed, even if it has already been accepted by the courts.
If a decision is flawed with regard to fact finding or the application of the law, but the conclusion of the decision is correct, the court may dismiss the plaintiff's claim on the basis of correcting the relevant flaws.
Submission of new evidence
If the parties claim that the relevant technical content is common knowledge or that the relevant design features are customary, the court may require them to provide evidence or make explanations.
In an administrative case related to invalidation of patent rights, where a patent applicant or patentee provides new evidence to prove that the patent application should not be rejected or the patent right should remain valid, in principle, the courts should review it.
The courts do not generally review new evidence provided by the invalidation petitioner in administrative cases related to invalidation of patent rights, except for:
- evidence proving the common knowledge or customary design that has been asserted in the examination procedure for the patent invalidation request;
- evidence proving the knowledge level and perception of those skilled or the ordinary consumers in relevant field;
- evidence proving the design space of the patented product or the overall status of the existing design;
- evidence reinforcing the weight of the evidence that has been adopted in the examination procedure of the patent invalidation request; or
evidence refuting the evidence provided by other parties in the lawsuit.