By King and Wood Mallesons’ Patent Team
On April 28, 2020, the Supreme People’s Court issued the Provisions on Several Issues Concerning the Trial of Administrative Cases Involving Granting and Confirmation of Patent Rights (I) for public comment by June 15, 2020. This version is the version that the Supreme People’s Court reissued after the old version issued in June 2018. This article highlights the articles in this version of the revised draft that have caused widespread concern as follows.
1.Regarding strengthening of court discretion
Article 2 stipulates that the Court may review and make an adjudication on the findings in the disputed decision that the plaintiff has not claimed but are evident inappropriate. Article 15 stipulates that the Court may make a determination on the inventive step after identification of “the technical problem actually solved” in accordance with law. Article 27 stipulates that the Court may revoke an erroneous part of the disputed decision without making ordering to re-render an administrative decision. Article 28 stipulates that the Court may directly revoke or partially revoke an invalidation decision under the following conditions without ordering to re-render an examination decision: 1) the administration department declared a claim invalid after a comprehensive review of the grounds for invalidation and the evidence for invalidation; and 2) the Court finds that all the grounds for invalidation of the claim cannot be established.
The reason for enacting the above-mentioned articles is that, in accordance with current laws and regulations, in administrative litigation cases of patent rights, if the Court judges that the decision made by the China National Intellectual Property Administration (“CNIPA”) is inappropriate, it can only revoke the decision and order the CNIPA to re-render a decision. This may take a long time, reducing efficiency and hindering some business activities of the parties. In order to avoid the problem that the trial period of cases involving granting and confirmation of patent rights is too long, and balance the relationship between the two, this revised draft conditionally appropriately relaxes the restriction on the discretion of the People’s Court on substantive issues of patent validity.
However, it should be noted that the above provisions vest the Court with room for more comprehensive substantive examination. Under certain conditions, the Court may directly judge the validity of a patent right without remanding it to the administrative organ to order it to re-render an administrative decision, with the ultimate result that the judicial organ exercises the authority originally belonging to the administrative organ. This breaks through the existing principle of power distribution between the administrative organs and the judicial organs, that is, the administrative organs exercise administrative power, and administrative decisions are made thereby; and the judicial organs exercise judicial power and supervise whether administrative acts (administrative decisions) are made in accordance with relevant laws.
2.Article 10 adopts the term “technical features defined by functions or effects”, which has the same meaning as the “functional features” in the “Interpretation (II) of the Supreme People’s Court on Several Issues concerning the Application of Law in the Trial of Patent Infringement Dispute Cases”. The two expressions are slightly different, but in essence belong to the same concept.
3.Regarding supplementary test data that is currently a hot issue, two articles are specifically set up in this revised draft, namely Article 11 and Article 12.
Article 11, Paragraph 1 provides for the review of supplementary test data involving sufficient disclosure of a drug patent. At present, the basic principle established in the procedure of granting and confirmation of patent rights is that, if the relevant technical effect is clearly recorded in the description or those skilled in the art can anticipate the relevant technical effect according to the description, the People’s Court shall review the supplementary test data. However, as to whether these supplementary test data should be accepted and recognized, the Court and the CNIPA adopt a relatively strict standard in accordance with the current practical cases, and often refuse to accept the supplementary test data based on violation of the “prior application” principle.
With respect to Article 11, Paragraph 2, which is basically consistent with the principles grasped in the current procedure of granting and confirmation of patent rights, supplementary test data for the reference document may be submitted to prove that the present invention has an unexpected and excellent technical effect compared with the reference document.
Article 12 adds a stage in which the People’s Court may cross-examine the source and formation process of supplementary test data. This will help to further clarify and verify the facts.
Overall, the Court currently adopts relatively strict standards on the issues of supplementary test data in the pharmaceutical field. In view of the fact that supplementary test data is difficult to be recognized and accepted, for cases in the chemical field, especially those in the pharmaceutical field, it is a must to provide sufficient efficacy test data in the original application documents.
4.Clarification of the factors to be considered when determining the design space
The “Interpretation (II) of the Supreme People’s Court on Several Issues concerning the Application of Law in the Trial of Patent Infringement Dispute Cases” puts forward the concept of the design space and determines the impact of the design space on judgment of infringement, but it does not stipulate how to determine the extent of the design space, and there is no unified standard for identification in the judicial practice.
Article 16 stipulates for the first time the standards for identifying the extent of the design space, namely, “(1) function and use of the product; (2) overall situation of the prior design; (3) customary design; (4) compulsory provisions of laws and administrative regulations; (5) national and industry technical standards; (6) other factors that need to be considered.”
5.Article 24 has excluded the limitation that an invalidation petitioner in terms of conflict of prior rights (Article 23, Paragraph 3 of the Patent Law) must be a holder of prior legal right or interested person, that is, any person can make a request for invalidation on the grounds of conflict of prior rights.
Appendix 1, “Provisions on Several Issues Concerning the Trial of Administrative Cases Involving Granting and Confirmation of Patent Rights (I)” (Draft for Comment)
For the correct trial of administrative cases involving granting and confirmation of patent rights, these Provisions are developed in accordance with the provisions of the Patent Law of the People’s Republic of China, the Administrative Litigation Law of the People’s Republic of China and other laws and in light of the trial practice.
Article 1
The administrative case involving granting of patent right as mentioned in these Provisions refers to a case where the patent applicant brings a lawsuit before a People’s Court due to dissatisfaction with the examination decision on the request for patent reexamination made by the Patent Administration Department of the State Council.
The administrative case involving confirmation of patent right mentioned in these Provisions refers to a case where the patentee or the invalidation petitioner brings a lawsuit before a People’s Court due to dissatisfaction with the examination decision on the request for patent invalidation made by the Patent Administration Department of the State Council.
Article 2
The scope of the People’s Court’s review of administrative acts involving granting and confirmation of patent rights shall generally be determined according to the plaintiff’s claims and reasons. Where the plaintiff does not make a claim in the lawsuit, but the relevant findings of the Patent Administration Department of the State Council are evident inappropriate, the People’s Court may, after the parties have stated their opinions, review and make an adjudication on the relevant matters.
Article 3
In trying an administrative case involving granting and confirmation of a patent right, the People’s Court shall, in general, define the wording of a claim based on the ordinary meaning understood by those skilled in the art and consistent with the purpose of the invention. Where a claim uses self-defining words that are clearly defined or illustrated in the description and drawings, they shall be construed thereupon accordingly.
The ordinary meaning as prescribed in the preceding paragraph can be defined in combination with technical dictionaries, technical manuals, reference books, textbooks, national or industry technical standards and so forth commonly used by those skilled in the art.
When interpreting the terms of a claim, reference may be made to the patent examination file wrapper.
Article 4
Where for obvious errors in grammar, words, numbers, punctuation, graphics, symbols, etc. in the claims, the description and the drawings, those skilled in the art can obtain a unique understanding by reading the claims, the description and the drawings, the People’s Court shall determine based on such unique understanding.
Article 5
Where a patent applicant or patentee, in violation of the principle of good faith, forges or fabricates technical content related to specific implementations, data, diagrams in the description and drawings, thereby the parties claims that the description does not comply with the provisions of Article 26, Paragraph 3 of the Patent Law and the claims related to the technical content shall not be granted or shall be declared invalid, the People’s Court shall grant support thereto.
Where a patent applicant or patentee, based on the forged or fabricated technical content, claims that relevant claims comply with the provisions of the Patent Law, the People’s Court shall not grant support thereto.
Article 6
Where the description and drawings do not sufficiently disclose specific technical content, resulting in that those skilled in the art cannot implement technical solutions defined in the claims, or after limited testing, they still cannot confirm that the technical solutions defined in the claims can solve the technical problem to be solved as recorded in the description, the People’s Court shall determine that the description and its claims do not comply with the provisions of Article 26, Paragraph 3 of the Patent Law.
Where a party claims that the claims comply with the provisions of Article 26, Paragraph 4 of the Patent Law only based on the specific technical content that is not sufficiently disclosed in the description, the People’s Court shall not grant support thereto.
Article 7
Where after reading the description and drawings, those skilled in the art consider that a claim has one of the following circumstances, the People’s Court shall determine that the claim is not in conformity with the provisions of Article 26, Paragraph 4 of the Patent Law that the claims shall clearly define the scope of the patent protection requested:
(1) the type of subject matter of the invention as defined in the claims is not clear or multiple types of subject matter are defined at the same time;
(2) the meaning of the technical features in the claims cannot be reasonably determined;
(3) there is an obvious contradiction between technical features and cannot be reasonably explained.
Article 8
Where after reading the description and drawings, those skilled in the art cannot directly obtain or reasonably generalize the technical solution as defined in a claim, the People’s Court shall determine that the claim is not in conformity with the provisions of Article 26, Paragraph 4 of the Patent Law that the claims shall be based on the description.
Where within the scope of protection defined by a claim, in addition to the specific implementations that can be clearly excluded by those skilled in the art, those skilled in the art cannot reasonably predict that all other specific implementations within the scope of protection can solve the technical problem to be solved by the technical solution defined in such claim as recorded in the description, the People’s Court shall determine that it belongs to the situation “cannot reasonably generalize” as prescribed in the preceding paragraph.
Article 9
Where the technical content recorded in the description and drawings are in conflict, resulting in that those skilled in the art cannot confirm whether the technical solution defined in a claim can solve the technical problem to be solved thereby as recorded in the description, a party, based on the conflicting technical content, claims that the relevant claims are in conformity with the provisions of Article 26, Paragraph 4 of the Patent Law that the claims shall be based on the description, the People’s Court shall not grant support thereto.
Article 10
Where for technical features defined by functions or effects in a claim, the description and drawings do not record any specific implementation realizing the functions or effects, thereby a party claims that the claim is not in conformity with Article 26, Paragraph 4 of the Patent Law that the claims shall be based on the description, the People’s Court shall grant support thereto.
Where the description records a specific implementation corresponding to the technical features defined by functions or effects, but fails to sufficiently disclose it, resulting in that those skilled in the art cannot realize the specific implementation, the description and the claims with the technical features shall be deemed not in conformity with the provisions of Article 26, Paragraph 3 of the Patent Law.
The technical features defined by functions or effects refer to the technical features that define the structure, components, steps, conditions or the relationship between them through their functions or effects in the invention, but the technical features that those skilled in the art can directly and clearly determine the specific implementations for achieving the above-mentioned functions or effects only by reading the claims are excluded.
Where in addition to the technical features of functions or effects, a claim further defines technical features with specific implementations such as structures and interrelationships that are sufficient to achieve the functions or effects, such technical features do not belong to the technical features defined by functions or effects as prescribed in the preceding paragraph.
Article 11
Where drug patent applicants and patentees submit experimental data after the date of filing to further prove that the technical content related to the specific technical effect in the description is sufficiently disclosed, and those skilled in the art can confirm the technical effect based on the description, drawings and common knowledge on the date of filing, the People’s Court shall grant review thereto.
Where drug patent applicants and patentees submit experimental data after the date of filing to prove that the patent application or the patent has a different technical effect than the reference document, and those skilled in the art can confirm it based on the description, drawings and common knowledge on the date of filing, the People’s Court shall grant review thereto.
Article 12
Where a party submits experimental data, the People’s Court may require it to adduce evidence to prove the source and formation process of the experimental data, including factors such as experimental materials and their sources, experimental steps, conditions, environment or parameters, as well as the personnel and institutions that completed the experiment, which are sufficient to affect their authenticity, relevance and probative force.
Where the parties dispute the authenticity of the experimental data, the People’s Court may entrust an institution with appropriate qualifications or a third party recognized by the parties to test or verify the experimental data.
Article 13
The background art recorded in the description is not regarded as the prior art referred to in Article 22, Paragraph 5 of the Patent Law, except that there is evidence to prove that it was known to the public before the date of filing in China or abroad.
The content disclosed in the description and that disclosed by the reference document includes the content explicitly recorded therein and the content that can be directly and unambiguously determined by those skilled in the art.
Article 14
In determining the technical field of the technical solution defined in a claim, the People’s Court shall comprehensively consider the subject name and content of the claim, the content recorded in the “technical field” in the description, and the functions and uses achieved by the technical solution, and refer to the international patent classification number of the patent.
Article 15
Where the description and drawings do not clearly record the technical effect that the distinguishing technical features can achieve in the technical solution defined by a claim, the People’s Court may determine the technical problem actually solved by the claim in combination with common knowledge, relationship between the distinguishing technical features and other technical features in the claim, and the role of the distinguishing technical features in the technical solution defined in the claim, etc.
Where the disputed decision fails to determine the “technical problem actually solved” or the determination is erroneous, the People’s Court may make a determination on the inventive step after determining “the technical problem actually solved” in accordance with law.
Article 16
When the People’s Court determines the knowledge level and cognitive ability of the general consumer on a design, it shall generally consider the design space of the design patent product on the date of filing.
For the determination of the design space referred to in the preceding paragraph, the People’s Court may comprehensively consider the following factors:
(1) function and use of the product;
(2) overall situation of the prior design;
(3) customary design;
(4) compulsory provisions of laws and administrative regulations;
(5) national and industry technical standards;
(6) other factors that need to be considered.
Article 17
Design features that must be possessed or have only limited choices in order to achieve a particular technical function have no significant impact on the overall visual effect of a design patent.
Article 18
Where pictures or photos of a design patent are contradictory or ambiguous, so that the general consumer is unable to determine the design to be protected based on the pictures, the photos and the brief description, the People’s Court shall determine that it is not in conformity with the provisions of Article 27, Paragraph 2 of the Patent Law.
Article 19
Where a design patent, compared with a prior design of the same or similar category of product, has the same or substantially the same overall visual effect, the People’s Court shall determine that it constitutes “belong to the prior design” as prescribed in Article 23, Paragraph 1 of the Patent Law.
Except for the circumstances as prescribed in the preceding paragraph, where the difference between the design patent and a prior design of the same or similar category of product has no significant impact on the overall visual effect, the People’s Court shall determine that it does not have the “significant difference” as prescribed in Article 23, Paragraph 2 of the Patent Law.
Article 20
Where a design patent, compared with another design patent filed on the same category of product on the same day, has the same or substantially the same overall visual effect, the People’s Court shall determine that it is not in conformity with the provisions of Article 9 of the Patent Law that “for any identical invention-creation, only one patent right shall be granted”.
Article 21
Where a design patent, compared with a design patent, filed before the date of filing and issued after the date of filing, of the same or similar category of product, has the same or substantially the same overall visual effect, the People’s Court shall determine that it constitutes “identical design” as prescribed in Article 23, Paragraph 1 of the Patent Law.
Article 22
Where, according to a design inspiration given by the prior design as a whole, it is easy for the general consumer to envisage converting, splicing or replacing design features of the prior design to obtain a design with the same or substantially the same overall visual design as the design patent without a unique visual effect, the People’s Court shall determine that the design patent does not significantly differ from the combination of the prior design features.
In any of the following circumstances, the People’s Court may determine that the design inspiration referred to in the preceding paragraph exists:
(1) converting features of a single natural object to a design patent product;
(2) the prior design discloses converting design features of other specific categories of products to patent products;
(3) splicing or replacing design features of different parts of products of the same category;
(4) the prior design discloses splicing design features of different specific categories of products;
(5) directly applying a pattern in the prior design to a design patent product;
(6) a design obtained by simply adopting basic geometric shapes or only making slight changes thereto;
(7) using all or part of the design of buildings, works or signs that are well known to the general consumer.
Article 23
When determining the unique visual effect referred to in Article 22 of these Provisions, the People’s Court may consider the following factors in a comprehensive manner:
(1) overall state of the prior design;
(2) design space;
(3) relevance of product categories;
(4) number and difficulty of splicing prior design features;
(5) impact of converting, splicing or replacing on product functions;
(6) other factors to be considered.
Article 24
The legal rights referred to in Article 23, Paragraph 3 of the Patent Law includes the legal rights or interests enjoyed in respect of works, trademarks, geographical indications, portraits and, to a certain extent, commodity names, packaging, decoration and enterprise names, etc.
Where the evidence submitted by an invalidation petitioner can prove the presence of the instance of conflicting rights as prescribed in Article 23, Paragraph 3 of the Patent Law, the patentee claims that the invalidation petitioner has no right to raise the invalidation request for not being a holder of prior legal right or an interested person, the People’s Court shall not grant support thereto.
Article 25
Where the Patent Administration Department of the State Council has any of the following circumstances in the examination procedure of patent reexamination and invalidation request, the parties claim that it belongs to “violation of statutory procedures” as prescribed in Article 70, Item (3) of the Administrative Litigation Law, the People’s Court shall grant support thereto:
(1) omitting the reasons and evidence presented by the parties and having a substantial impact on the rights of the parties;
(2) failing to notify the parties that should participate in the examination procedure in accordance with law, which has a substantial impact on the rights of the parties;
(3) failing to inform the parties of the members of the collegial panel, and there are statutory reasons for disqualification of the members of the collegial panel who fail to be disqualified.
Article 26
Where the Patent Administration Department of the State Council goes beyond the grounds and evidence presented by the invalidation petitioner and it does not belong to the circumstances where it can examine according to its power, the parties claim that it belongs to “overstepping of power” as prescribed in Article 70, Item (4) of the Administrative Litigation Law, the People’s Court shall grant support thereto.
Article 27
Under any of the following circumstances, the People’s Court may, in accordance with the provisions of Article 70 of the Administrative Litigation Law, make a judgment to revoke an erroneous part of the disputed decision:
(1) the disputed decision is erroneous in identification of a part of claims in the claims, and the rest is correct;
(2) the disputed decision is erroneous in identification of a part of designs in one application for a design patent as prescribed in Article 31, Paragraph 2 of the Patent Law, and the rest is correct;
(3) other circumstances where a judgement may be made to revoke a part of the disputed decision without ordering the administrative organ to re-render an administrative decision on the revoked part.
Article 28
Where the Patent Administration Department of the State Council invalidates a claim after review of all the reasons and evidence for invalidation asserted by a party, and the People’s Court considers that the reasons identifying the claim invalid in the disputed decision are all untenable, the People’s Court shall revoke or partially revoke the decision by judgment, and no longer make a judgment ordering the Patent Administration Department of the State Council to re-render an examination decision on the claim.
Article 29
Where a People’s Court has made a clear determination of relevant facts and application of laws in an effective adjudication, a party is not satisfied with an examination decision re-rendered by the Patent Administration Department of the State Council according to the determination of the effective adjudication and institutes a lawsuit, the People’s Court shall issue a ruling not to accept the case; and where a case has been accepted, the People’s Court shall rule to dismiss the lawsuit. However, the cases where the finding that exceeds the finding of the facts and the application of laws in the examination decision has a new adverse impact on the rights of the parties shall be accepted.
Article 30
Where there is an error in the disputed decision in terms of fact finding or application of laws, but the conclusion declaring the patent right invalid or partially invalid is correct, the People’s Court may, on the basis of correcting the relevant fact finding and the application of laws, confirm the illegality of the disputed decision but not to revoke it.
Article 31
Where a party claims that the relevant technical content is common knowledge, or that the relevant design features are customary design of a design patent product, the People’s Court shall require it to fully explain or submit proof of evidence.
Article 32
Where the Patent Administration Department of the State Council actively introduces common knowledge or customary design not claimed by the parties in the procedure involving granting and confirmation of patent rights, fails to listen to the opinions of the parties and has a substantive impact on the rights of the parties, and the party claims that it violates statutory procedures, the People’s Court shall grant support thereto.
Article 33
Where a patentee submits new evidence in an administrative case involving confirmation of a patent right to prove that the claims declared invalid in the disputed decision should remain valid, the People’s Court shall generally grant examination thereto.
Article 34
Where an invalidation petitioner submits new evidence in a trial process of an administrative case involving confirmation of a patent right to prove that the patent right should be declared invalid, the People’s Court shall generally not accept it, except for the following evidence that:
(1) is used to prove the common knowledge or customary design claimed by a party in the invalidation procedure, and does not belong to the case where the Patent Administration Department of the State Council requires it to submit in accordance with law in the administrative procedure but fails to submit;
(2) is used to prove the knowledge level and cognitive ability of those skilled in the art or the general consumer;
(3) is used to prove the design space of design patent products;
(4) is used to reinforce the authenticity or probative force of the evidence that has been accepted by the Patent Administration Department of the State Council;
(5) is used to refute the new evidence submitted by the patentee referred to in the preceding article.
The People’s Court may require the parties to provide or supplement the evidence as prescribed in the preceding paragraph.
Article 35
These Provisions, after the implementation thereof, shall apply to cases of first instance and second instance being tried by the People’s Courts.
These Provisions shall not apply to cases that have been finalized before the implementation thereof and where the parties apply for a retrial or a retrial is granted in accordance with law after the implementation of these Provisions.
Article 36
These Provisions shall come into force on __________.
Appendix 2, the Administrative Litigation Law of the People’s Republic of China
Article70
Where the administrative action falls under any of the following circumstances, a People’s Court shall enter a judgment to entirely or partially revoke the administrative action, and may enter a judgment to require the defendant to re-render an administrative action:
(1) insufficiency in primary evidence;
(2) erroneous application of laws or regulations;
(3) violation of statutory procedures;
(4) overstepping of power;
(5) abuse of power;
(6) evident inappropriateness.