On December 21 2009, the Supreme People's Court issued its Interpretation of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Patent Infringement Dispute Cases (Judicial Interpretation No. 21 [2009]), which is the latest judicial interpretation promulgated by the country's top court based on years of IP trial-related practice and the third amendment to China's Patent Law.

This new judicial interpretation, which came into force from January 1 2010, will have an important impact on patent litigation in China. This article highlights three of the most significant impacts that the Judicial Interpretation will have on patent lawsuits in China.

Technical features defined by functionality

Article 4 of the Judicial Interpretation prescribes that, where a technical feature in claims is expressed by way of functions or effects, the People's Court shall determine the content of the technical feature in consideration of the detailed embodiments of the functions or effects described in the specification and drawings and equivalents thereof.

This provision offers a compromise solution to the long-running debate about how to interpret a technical feature defined by functionality or effects. In the past, one theory was that a technical feature defined by functionality or effects should cover all possible embodiments that can achieve the said functionality or effects, while another theory said that such a technical feature should be restricted strictly to the embodiments recorded in the specifications.

According to the above provision, a technical feature defined by functionality or effects is neither restricted to the recorded embodiments, nor broadened to all possible embodiments with such functionality or effects. This provision is inconsistent with relevant regulations in the new examination guidelines that came into force on February 1 2010. Section 3.2.1 of Chapter II of Part Two of the Guidelines for Examination says that a technical feature defined by functionality contained in the claim shall be deemed as covering all embodiments that may achieve the functionality. Obviously, the Judicial Interpretation reduces the scope of a claim containing technical features defined by functionality compared with the Guidelines. Moreover, whether or not there is an embodiment equivalent to the embodiments recorded in the description and drawings is something that should be proved by the patentee, which increases the burden on the patentee during litigation. Therefore, this provision in the Judicial Interpretation restricts the patentee's rights to some extent.

On the other hand, we note that this new provision is closely related to Article 17 of Several Provisions of the Supreme People's Court on Issues Concerning Applicable Laws to the Trial of Patent Controversies [Interpretation No. 21 (2001)] issued by the Supreme People's Court in 2001, according to which the scope of a claim shall cover sections identified by technical features equivalent to the claim's essential feature(s).

Accordingly, under the two interpretations, for same technical solution, it is quite possible that the scope of a claim defined employing functionality limitation can be the same as a corresponding claim defined employing non-functionality limitation finally approved by the court. In contrast, in patent examination, the same prior art may have different results on the two different kinds of claims. For example, one piece of prior art with the same defining functionality will damage the novelty of the claim defined employing functionality limitation, but not of the claim defined employing non-functionality limitation. In invalidation process, the possibility of being invalidated is also different.

Proving the existence of equivalent employments requires a combination of application documents and/or prior art, which is relatively difficult to achieve. To avoid having to bear such a burden of proof during potential future litigation, we suggest that the applicant add some expression in the description following the most preferred embodiment along the lines of: "All technical means that may achieve this functionality can be employed to implement the present invention", accompanied by a brief or detailed description of as many embodiments (at least three) as possible.

Design patents

Article 8 of the Judicial Interpretation prescribes that, where a design which is identical with or similar to the patented design is used on a product which is of an identical or similar type to the design product, the People's Court shall determine that the accused infringing design falls into the extent of protection of design patent right as prescribed in Paragraph 2, Article 59 of the Patent Law.

Article 9 of the Judicial Interpretation prescribes that the People's Court shall determine whether the identical or similar type of product based on the usage of the design product. The usage of a product may be determined with reference to the brief description of the design patent, the International Classification for Industry Design, function of the product as well as the product's sales and actual usage and so on.

Article 11 of the Judicial Interpretation prescribes that, the People's Court shall make a comprehensive judgment in view of the overall visual effects of the design based on the design feature(s) of the patented design and the allegedly infringing design when determining the identity or similarity of designs. The design features that are mainly determined by the technical function and the features that do not affect the overall visual effects such as product material, internal structure and so on shall not be considered.

The following factors usually have more impact on the overall visual effects of a design:

1. Parts that are easily observed in the ordinary use state of the product versus other parts of the product;
2. Design features of the patented design distinguishing from the prior designs versus other design features.

The People's Court shall find the accused infringing design and the patented design identical in the absence of difference in overall visual effects; and find them similar in the absence of substantial difference in overall visual effects.

Welcome clarification

Following the publication of the third amendment to the Patent Law, it appeared that the protected object of a design patent was to be the design itself, rather than the product using the design. This clarification helped resolve long-debated questions, such as those relating to vehicles versus vehicle models. But from Article 8 of the Judicial Interpretation, when interpreting Article 59 (2) of the Patent Law, the People's Court emphasises the design "of the product", thereby limiting infringement of a design to the types of product identical or similar to the design patent product. This again raises questions about the vehicle versus vehicle model, that is, whether a vehicle using the same design of a model design patent could still be deemed not to infringe the model design patent.

The phrase "design features of the patented design distinguishing from the prior designs versus other design features" in Article 11 of the Judicial Interpretation should receive particular attention. According to the new Patent Law, a design patent application must include a brief description that includes the major points alleged for the design. If, in litigation, the "design features of the patented design distinguishing from the prior designs versus other design features" are determined mainly based on the "main points alleged for the design", then the specific main points alleged in the brief description may have a significant effect on the judgment of a lawsuit on the infringement of the design patent. Therefore, more attention should be paid to the main points alleged for the design in the brief description when filing the design application.

Products obtained using a patented process

Article 13 of Judicial Interpretation prescribes that the People's Court shall determine that the original product obtained by using a patented process is a product directly obtained by the patented process prescribed in Article 11 of the Patent Law. For the act of obtaining a follow-up product by further processing or treating the above-mentioned original product, the People's Court shall determine the act as using the product directly obtained by the patented process prescribed in Article 11 of the Patent Law.

Extension of protection

This provision provides a firm conclusion to a much-argued topic: whether a product obtained using a patented process should be limited to products directly obtained by the patented process or should extend to follow-up products as well. The rights of the patentee of a process patent are strengthened, and the patentee will be able to strengthen monitoring over infringement actions related to the use of follow-up products obtained by further processing or treating the above-mentioned original product. Due to the extension of the scope of infringement actions, this provision also gives the patentee more flexibility in choosing jurisdictional areas for filing a lawsuit against an alleged infringer.

However, this provision does not clearly define the extent of use of products obtained by using the patented process. For example, it is not determined whether rubber made from a patented process, a tyre made from the rubber and an automobile using the tyre will all be deemed as infringing the process patent, or only the tyre made of the rubber. This still needs to be clarified by future judicial practice.

This article sets out our personal views on the new rules, and we await to see the exact impact of the new Judicial Interpretation on judicial practice.

Shenping YANG

Shenping Yang is one of the managing partners of Beijing Tongdaxinheng IP Agency. He is in charge of the general operation of the firm's international business. With more than nine years of engineering experience in the railway, power generation and transmission, and metallurgical sectors followed by 10 years of IP service experience, Yang has developed significant capabilities advising on IP strategy, patent prosecution and litigation. His particular expertise is in helping clients to employ their intellectual property strategically.

Zhongkui LI

Li is a partner of Beijing Tongdaxinheng IP Agency and leads the firm's chemical and biotech group. Before joining the firm, Li was managing partner at another IP firm for six years, helping to develop it from a new organisation into a well-established operation. Li's particular strength is in patent prosecution and litigation. His experience working in the Chinese Academy of Sciences plus his time as a member of the Judicial Appraisal Center of Intellectual Property, has given Li a thorough understand of intellectual property.