Provisions (I) of the Supreme People’s Court on Several Issues Concerning the Trial of Patent Grant and Invalidation Administrative Cases

(Draft for Public Comments)

For the proper trial of patent grant and invalidation administrative cases, the Provisions is formulated according to the Patent Law of the People’s Republic of China (the “Patent Law”), the Administrative Procedure Law of the People’s Republic of China (the “Administrative Procedure Law”) and other laws and regulations, and on the basis judicial practices.

Article 1Patent grant administrative cases in the Provisions refer to cases filed by patent applicants with the People’s Court where the patent applicants are not satisfied with the re-examination decisions made by the Patent Re-examination Board of the Patent Administrative Department under the State Council (the “PRB”).

Patent invalidation administrative cases in the Provisions refer to cases filed by patentees or petitioners of patent invalidation requests with the People’s Court where the patentees or petitioners of patent invalidation requests are not satisfied with the patent invalidation decisions made by the PRB.

Article 2The scope of adjudication by the People’s Court in patent grant and invalidation administrative cases shall generally be determined based on the claims and reasons of the plaintiff. Where relevant determinations of the PRB are obviously inappropriate but is not claimed by the plaintiff in the lawsuit, the People’s Court may examine the relevant issues and make a judgement after hearing all parties’ opinions.

Article 3When adjudicating patent grant administrative cases, the People’s Court should generally construe the claim terms based on common understanding of the person skilled in the art. Where the claims use self-defined terms and the specification and drawings have clear definitions or explanations, such definitions or explanations shall be used in claim construction.

When adjudicating patent invalidation administrative cases, the People’s Court may use the claims, specification and drawings to construe the claim terms. Where the specification and drawings provide specific constructions for the claim terms, such construction shall be used. The file wrapper may be used to construe the claim terms. Where the claim terms cannot be defined by the above approaches, technical dictionaries, technical manuals, reference books, textbooks, and national or industry technical standards commonly used by the person skilled in the art may be referred to for claim construction.

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(Option Two: The People’s Court generally shall construe the claim terms based on common understanding of the person skilled in the art. Where the claims use self-defined terms and the specification and drawings have clear definitions or explanations, such definitions or explanations shall be used in claim construction.)

Article 4When construing the claim terms, the People’s Court may refer to statements on the claims by the patentees in patent infringement proceedings.

Article 5With respect to obvious errors in the grammar, character, number, punctuation, figure, symbol etc. in the claims, specification and drawings, where the person skilled in the art can come to a unique understanding after reading the claims, specification and drawings, the People’s Court shall determine based on the unique understanding.

Article 6Where there is evidence showing that the patent applicant or patentee violates the principle of good faith and maliciously forges or alters the embodiments, data, figures and tables, and other technical contents in the specification and drawings, and a party claims that the specification does not comply with Article 26.3 of the Patent Law thus relevant claims shall be declared invalid, the People’s Court shall uphold such claim by the party.

Article 7Where the specification and drawings do not fully disclose the specific technical contents, and the person skilled in the art is unable to carry out the technical solutions defined by the claims or unable to confirm whether the technical solutions defined by the claims can solve the technical problems to be solved by the patent after limited number of tests, the People’s Court shall determine that the specification does not comply with Article 26.3 of the Patent Law. However, an exception exists where the technical contents not fully disclosed by the specification are not substantially related to the technical solutions of the claims.

Article 8Under any one of the following circumstances, the People’s Court shall determine that the claims do not comply with Article 26.4 regarding clearness of the claims:(a) The type of the invention subject matter of the claims is not unique or definite;(b) The meaning of the technical features in the claims cannot be determined;(c) There are obvious conflicts between the technical features which cannot be reasonably explained.

Article 9

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Where the person skilled in the art cannot directly obtain or reasonably summarize the technical solutions of the claims after reading the specification and drawings, the People’s Court shall determine that such claims do not comply with Article 26.4 of the Patent Law regarding claims being based on the specification.

Where after reading the specification and drawings, the person skilled in the art cannot reasonably anticipate that all the embodiments covered by the claims can solve the technical problem described in the specification, the People’s Court shall determine that this belongs to the aforementioned circumstance where the person skilled in the art cannot reasonably summarize the technical solution of the claims.

Article 10Where part of the embodiments described in the specification cannot solve the technical problem to be solved by the patent, but after reading the specification and drawings, the person skilled in the art can reasonably anticipate, without excessive effort, on the application date that all the other embodiments covered by the claims can solve the technical problem to be solved by the patent and achieve the same technical results, and a party claims that such claims comply with Article 26.4 of the Patent Law regarding claims being based on the specification, the People’s Court generally shall uphold such claim by the party.

Article 11Where the technical contents described in the specification are in conflict with each other and the person skilled in the art is unable to confirm whether they can solve the technical problem to be solved by the patent, and a party claims that, on the basis of such technical contents, the relevant claims comply with Article 26.4 of the Patent Law, the People’s Court shall not uphold such claim by the party.

Article 12For technical features of the claims limited by functions or effects, where the specification and drawings do not describe any specific embodiment achieving such functions or effects, and the person skilled in the art are unable to determine their meanings solely on basis of the claims, specification and drawings, and a party claims that such claims do not comply with Article 26.4 of the Patent Law, the People’s Court shall uphold such claim by the party.

Article 13Where the applicants or patentees of the chemical invention patents submit the experimental data after the application date to further prove that the technical results described in the specifications have been fully disclosed and the technical results can be confirmed by the person skilled in the art according to the specification, drawings and common knowledge on the application date, the People’s Court shall generally examine such data.

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Where the applicants or patentees of the chemical invention patents submit the experimental data after the application date to prove that the patent applications or patents have the technical results different from those in prior art documents, and the technical results can be confirmed directly and unambiguously by the person skilled in the art from disclosed contents in the patent application document on the application date, the People’s Court shall generally examine such data.

Article 14Where a party submits the experimental data, the People’s Court may ask the party to submit evidence and prove the source and forming process of the experimental data, including the experimental raw materials and their sources, steps, conditions or parameters of the experiment, persons and places conducting the experiment and other factors which can affect authenticity of the data.

Where a party have disputes over authenticity of the experimental data, the People’s Court may entrust a qualified appraisal center to conduct appraisal.

Article 15Where the amendments on the specification and drawings by the patent applicants are clearly described in the original specification, drawings and claims, or where such amendments are contents which the person skilled in the art is able to determine directly and unambiguously, the People’s Court shall determine that such amendments comply with Article 33 of the Patent Law.

Article 16Where the patent applicant amends the claims, and the amended claims are in compliance with Article 26.4 of the Patent Law regarding claims being based on the specification, the People’s Court shall determine that such amendments comply with Article 33 of the Patent Law.

Article 17The background technology described in the specification is generally not regarded as the prior art referred to in Article 22.2 of the Patent Law, unless there is evidence proving that it was disclosed before the application date.

The contents disclosed in prior art documents include technical contents clearly described in such documents, and technical contents which the person skilled in the art is able to determine directly and unambiguously.

Article 18The People’s Court shall generally determine the technical field according to the contents of the claims, in combination with the preamble of the patent, and the technical function and use to be achieved by the technical solution and also referring to the most specific classification of the patent in the International Patent

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Classification.

Article 19The People’s Court shall determine the actual technical problem to be solved by the claims based on the claims described in the specification and drawings, and technical effects generated by the distinguishing technical features of the closest prior art, in combination with the overall understanding of the technical solution by the person skilled in the art. Where the specification and drawings do not clearly describe the technical effects generated by the distinguishing technical features, the People’s Court may combine common knowledge in the art, the relationship between the distinguishing technical features and other technical features, and effect of the distinguishing technical features in the technical solutions of the patent etc.

Where the actual technical problem to be solved by the claims is to provide alternative solution for the prior art, it is not required to have a better technical effect over the prior art.

Article 20Where the prior art as a whole provides technical inspiration for the actual technical problem to be solved by the claims, the People’s Court shall determine that such claims do not comply with Article 22.3 of the Patent Law.

The People’s Court may determine that the aforementioned technical inspiration exists under one of the following circumstances:(a) The prior art discloses the distinguishing technical features and that such distinguishing technical features are able to solve the actual technical problem to be solved by the claims;(b) The distinguishing technical features belong to common knowledge in the art, unless there is contradictory evidence proving that it is not easy for the person skilled in the art to think of applying such common knowledge to the closes prior art;(c) Select the part not clearly mentioned in the prior art from the scope disclosed by the prior art, but there is no unpredictable technical result.

Article 21Where determining knowledge level and cognitive capability of a normal consumer of a design patent, the People’s Court shall generally consider the design space of the product incorporating the design patent.

the People’s Court may comprehensively consider the following factors to determine the design space:(a) Function and use of the product;(b) density of prior design;(c) Usual design;(d) Mandatory provisions of laws and administrative regulations;

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(e) National and industry technical standards.

Article 22Design features solely determined by technical functions generally has no influence on the overall visual effect of the design patent, except the position relationship between such design feature and other design features.

Such design feature includes:(a) Unique or non-optional design feature for achieving a technical function;(b) Although the design feature for achieving the technical function is not unique or non-selectable, the selection and switch among them are not based on visual effects.

Article 23Where the pictures or photos of the design patent are contradictory or blurred and a normal consumer is not able to determine the design to be protected based on the pictures, photos and brief explanation, the People’s Court shall determine that such design does not comply with Article 27.2 of the Patent Law.

Article 24If when compared with a prior design on the same or similar types of products, the design patent has identical overall visual effect or is substantial similar with prior design except minor differences etc., the People’s Court shall determine such design “belong to prior design” as provided in Article 23.1 of the Patent Law.

If when compared with a prior design on the same or similar types of products, the difference of the design patent and prior design does not have substantial influence on the overall visual effect, the People’s Court shall determine that such design does not have “obvious difference” with the prior design as provided in Article 23.2 of the Patent Law.

Article 25If when compared with another design patent on the same type of product filed on the same application date, the overall visual effect of the design patent is identical or is substantial similar with the other design except minor differences etc., the People’s Court shall determine that such design does not comply with Article 9 of the Patent Law regarding “only one patent right shall be granted for the same invention and innovation”.

Article 26If when compared with another design patent document on the same or similar types of products filed before the application date but published after the application date, the design patent has identical overall visual effect or is substantial similar with the other design patent document except minor differences etc., the People’s Court shall determine that such design constitutes “same design” provided in Article 23.1 of the

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Patent Law.

Article 27If based on the design inspiration provided by prior design as a whole, it is easy for a normal consumer to think of transforming, combining or substituting the design features to obtain the design patent with identical overall visual effect or with only minor differences, and without any unique visual effect, the People’s Court shall determine that the design patent does not have significant difference with combination of prior designs’ design features.

The People’s Court may determine that the aforementioned design inspiration exists under the following circumstances:(a) Directly transform the feature of a single natural object to the products incorporating the design patent;(b) The prior design discloses the transformation of the design feature of a specific type of products to the patented products;(c) Simply combine or substitute the design features in different parts of the same type of products;(d) The prior design discloses simple combination of design features of a specific type of products;(e) Directly apply the prior single pattern to the products incorporating the design patent.

Article 28When determining the unique visual effect provided in Article 27 of the Provisions, the People’s Court may comprehensively consider the following factors:(a) Overall situation of prior designs;(b) Design space;(c) Degree of relevance of product types;(d) Number and difficulty of combined design features;(e) Influence of transformation, combination, or substitution on the function of products;(f) Whether there exists difficulty which is hard to overcome.

Article 29Legitimate rights provided in Article 23.3 of the Patent Law include works, trademarks, geographical indications, company names, trade names, portraits, and unique names, packaging, or decoration of famous products.

Where the evidence submitted by the petitioner of the invalidation request can prove there exists conflict of rights as stipulated in Article 23.3 of the Patent Law, and the patentee claims that the petitioner is not entitled to raise such invalidation request because the petitioner is not the owner or interested party of the prior legitimate right, the People’s Court shall not uphold such claim by the patentee.

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(Option Two of the above paragraph: Where the evidence submitted by the petitioner of the invalidation request cannot prove that the petitioner is the owner or interested party of the prior legitimate right stipulated in Article 23.3 of the Patent Law, and the patentee claims that the petitioner is not entitled to raise the invalidation request, the People’s Court shall uphold such claim by the patentee.)

Article 30Where a party claims that the following circumstances of the PRB belong to “violation of due process” as stipulated in Article 70(3) of the Administrative Procedure Law, the People’s Court shall uphold such claim:(a) Omit the facts and grounds submitted by the parties, which significantly influence the right of the parties;(b) Fail to notify members of the collegial panel in the same re-examination procedure or invalidation procedure, and after examination there does exist ground for recusing, but no recusing occurred. (c) Fail to notify the eligible party to participate in the same re-examination procedure or invalidation procedure, and the party clearly raises an objection.

Article 31Where the PRB examines the case beyond the facts and grounds raised by the petitioner of the invalidation request or re-examination, and it does not belong to the examination ex officio, and a party claims that this belongs to “exceeding authority” as stipulated in Article 70(4) of the Administrative Procedure Law, the People’s Court shall uphold such claim.

Article 32Under one of the following circumstances, the People’s Court may make a judgment to revoke the mistaking part in the decision made by the PRB according to Article 70 of the Administrative Procedure Law:(a) In the decision, the determination is incorrect on part of the claims, while the rest is correct;(b) In the decision, the determination is incorrect on part of the designs in the design patent application as stipulated in Article 31.2 of the Patent Law, while the rest is correct.

Article 33Where the PRB decides to declare a patent invalid after examining all the invalidation grounds and evidence of the case concerned, and the People’s Court determines that none of the grounds for determining the invalidity of the patent can be established, the People’s Court shall make a judgment to revoke the decision, without ordering the PRB to re-make a decision. Where such patent right is transferred, pledged or licensed by patentees after receipt of the afore-said decision or effective judgment, and the party involved claims that such actions have no foundation of rights, the People’s

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Court shall not uphold such claim.

Article 34Where the relevant facts and application of laws have been clearly determined by the People’s Court in an effective judgement, if a party does not agree with the decision re-made by the PRB based on the effective judgement and files a new lawsuit, the People’s Court shall not accept the case according to the laws and shall dismiss the case if the case has been accepted.

Article 35Where the PRB is errored in the determination of facts or application of laws but correct in the conclusion of patent validity in the decision, the People’s Court may make a judgement to dismiss the claims by the plaintiff according to Article 69 of the Administrative Procedure Law, but not revoke the decision.

Article 36Where adjudicating the patent grant and invalidation administrative cases, the People’s Court may determine the time limit for the parties to submit evidence based on claims by the parties and examination progress of the case. Where a party submits the evidence beyond the time limit, the People’s Court shall order the party to provide an explanation or refuse to accept the evidence if the party refuses to provide an explanation or such an explanation cannot be established.

Article 37Where a party claims that the relevant technical contents belong to common knowledge in the art, or the relevant design features belong to the usual design of the products incorporating the design patent, the People’s Court shall ask the party to submit evidence or sufficient explanation.

Article 38Where the PRB introduces the common knowledge or usual design ex officio and listens to the opinion of the parties regarding the common knowledge or usual design in the patent grant procedure, if a party claims that this violates due process, the People’s Court generally shall not uphold such claim.

Where the PRB proactively introduces common knowledge or usual design not mentioned by the parties without any hearing in the patent invalidation procedure, if a party claims that this violates due process, the People’s Court generally shall uphold such claim.

Article 39Where the patentee submits new evidence in the proceeding of the patent invalidation administrative case to prove that the claims declared to be invalid by the PRB shall be

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maintained valid, the People’s Court generally shall examine such new evidence.

Where the petitioner submits new evidence in the proceeding of the patent invalidation administrative case to prove the patent shall be declared invalid, the People’s Court generally shall not accept such new evidence, except that:(a) The evidence is used to prove common knowledge or usual design which has been already raised in the invalidation procedure;(b) The evidence is used to prove the knowledge level and cognitive capability of a normal consumer of the products incorporating the design patent;(c) The evidence is used to strengthen the credibility of the evidence which has already been taken by the PRB;(d) The evidence is used to rebut the new evidence submitted by the patentee mentioned above.

Article 40After coming into force, the Provisions shall apply in the first and second instance cases being adjudicated by the People’s Court.

With respect to the cases which have been determined in the final instance before the Provisions come into force, the cases in which a party applies for a re-trial and the cases where a re-trial is granted according to the laws after the Provisions come into force, the Provisions shall not apply.

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