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02 December 2013
The Beijing High People’s Court has issued Guidelines for Determining Patent Infringement. Consisting of 133 articles and over 15,000 words, the Guidelines provide comprehensive and practical guidance on the scope of patent protection, determination of infringement, defense for patent infringement and other topics.
“The Guidelines have clarified many issues on patent scope at infringement proceedings, which in my view will be very helpful to the Chinese patent practice,” says Toby Mak, a patent attorney at Tee & Howe Intellectual Property Attorneys in Beijing.
Richard Wang, a partner and patent attorney at Panawell & Partners in Beijing thinks that the issuance of the Guidelines would have an impact to the rest of China. He says it “should get more attention among the IP practitioners around the world.”
The official website of Beijing courts – bjgy.chinacourt.org – said that the introduction of the Guidelines has a positive impact on protecting patent owners’ rights, encouraging innovation and unifying justice standards.
Highlights of the Guidelines include rules on the determination of equivalent features; the determination of functional features infringement; the timing for claim construction; requirements for the determination of design patent infringement; specifications of infringing activities; inclusion of indirect infringement to joint infringement; and rules on defence of patent infringement.
Wang says that having detailed rules on determining equivalent features will help patent attorneys better handle the doctrine of equivalents in litigation while confining judges’ use of discretion. It is the first time that there is comprehensive stipulation on the infringement of functional features. “The guidelines settle part of the relevant dispute in the field and help to reach a consensus in judicial adjudications. In the meantime, the summary of various infringement activities is more practical as it is based on many years’ mature experience in trial,” says Wang.
In 2001, the court formulated the Opinions Concerning the Determination of Patent Infringement. As the number of patent dispute has risen, a number of new problems evolved to be resolved and regulated. Taking the past experience of the Beijing courts handling patent cases, the new Guidelines have deleted some contents that are no longer practical in the Opinions.
Compared with the Opinions, Mak tells Asia IP that the guidelines would have new impact on the patent practice in Beijing. In terms of invention patents and utility models, Mak says that a notable change in the Guidelines is the abolishment of the redundant designation principle.
“It is necessary for the alleged action to contain all features in a claim to establish infringement. Otherwise, as the Guidelines specify, lacking one or more features recited in a patent claim will result in non-infringement.” He says that it is important that the Guidelines also define some key terms in patent practice, such as functional limitation and the notion of substantially the same.
The Guidelines specify various tests on determination of design infringement. “For example, for 3D products, the Guidelines specify that the shape is a more important factor than patterns and colours. In contrast, for 2D products, the Guidelines specify that the latter are more influencing,” Mak says.
