On April 21 this year, the Supreme People’s Court of the People’s Republic of China (SPC) released its Annual Report on the Application of Law in IP Cases by Courts Nationwide. The report summarises judicial practices from 2024 and distils a series of legal application issues by citing representative cases.
Eleven key issues were highlighted for patent cases, covering typical procedural and substantive matters in infringement and validity disputes. Among these, the following points are particularly noteworthy.
The role and nature of the patent evaluation report in infringement disputes
The patent evaluation report originates from Article 66, paragraph 2 of the Patent Law of the People’s Republic of China (formerly Article 61(2), prior to the 2020 revision), which specifies that such a report serves as evidence in the trial or handling of patent infringement disputes.
Further clarification is provided by Article 8 of the Interpretation (2020 Amendment) of the Supreme People’s Court on Several Issues Concerning the Application of Law in the Trial of Patent Dispute Cases, which states: “Where necessary for case adjudication, the people’s court may require the plaintiff to submit a search report or patent evaluation report. If the plaintiff fails to submit it without justified reason, the court may rule to suspend the litigation or order the plaintiff to bear any adverse consequences.”
These provisions make it clear that the evaluation report is merely a reference for judicial review, not a prerequisite for case filing. In some jurisdictions, local courts have required the report for filing purposes to reduce caseload pressure, or for other reasons. The SPC, through a retrial case, reiterated that the evaluation report is only for aiding judicial review, not for determining patent validity, which must be established by the administrative patent authorities. Thus, the report should not be examined as a filing requirement.
Handling executed patent infringement judgments after invalidation of the patent
This issue concerns Article 65 of the Supreme People’s Court Provisions on Several Issues Concerning the Enforcement Work of People's Courts, which states that: “If, during or after enforcement, the legal instrument on which enforcement is based is revoked or modified by the people’s court or other competent authority, the original enforcement agency shall, upon application by the parties or ex officio, issue a reversal enforcement ruling according to Article 233 of the Civil Procedure Law, and order the return of the property and any proceeds obtained. If the party refuses, compulsory enforcement shall be applied.”
In this context, if a patent is later invalidated, it is deemed to have never existed. Reversal enforcement allows the enforcement body to restore the property status to its pre-enforcement condition, thus protecting the original respondent’s substantive rights and correcting enforcement errors. The case cited provides an important remedy for parties adversely affected by wrongful enforcement based on an invalid patent.
Interpretation and infringement analysis of ‘use environment features’
The concept of ‘use environment features’ was first introduced by the SPC in the Shimano Co. v Ningbo Riheng Industry and Trade Co. case and later codified in the Interpretation (II) of the Supreme People’s Court on Several Issues Concerning the Application of Law in the Trial of Patent Infringement Cases, as well as in infringement determination guidelines issued by the Beijing High Court.
In the latest annual report, the SPC cited a judgment from the Shanghai Intellectual Property Court to reaffirm that it is not necessary for the accused product to inherently possess components corresponding to the use environment features. It suffices that the accused product can be applied in the usage environment defined by such features.
The CNIPA shares a similar view in validity assessments. In an invalidation case handled by the author, the panel held that if a cited reference discloses a similar structure and there is no evidence indicating technical barriers to applying the structure in a specific environment, it would have been obvious for a skilled person to adapt it accordingly. This balances patent enforcement and validity examination.
Acceptance of deletion-type amendments in oral invalidation proceedings
Amendments during invalidation proceedings are strictly regulated under current Chinese practice, and the scope of acceptance varies across different panels. If a patentee makes an amendment that does not meet the formal requirements, they risk losing the chance to amend again and having the claims reverted to their original state, leaving them in a vulnerable position.
A case cited in the SPC report corrected such overly rigid practices by permitting patentees to retain compliant amendments during oral hearings, without requiring immediate reversion to the original claims. It also clarified that patentees may delete a claim or technical solution at the hearing without strict formal constraints. This ruling grants the patentee more flexibility during invalidation proceedings.
Other noteworthy issues
In addition to the four main issues above, the SPC cited seven additional cases to provide judicial guidance on:
The coordination of infringement determinations in related cases;
Conditional judgments requiring specific performance;
How to handle declarations made by generic drug applicants prior to patent information registration;
The handling of changes in pharmaceutical technical solutions in patent linkage disputes;
Inventor attribution for use patents;
The determination of violations under Article 5(1) of the Patent Law; and
The determination of whether a design patent clearly defines its scope of protection.
