China: New Judicial Interpretation On Patent Infringement

Last Updated: 25 July 2016
Article by Dr. Weili Ma
Most Popular Article in China, July 2016

The Supreme Court of China (SPC) has recently published a new judicial interpretation with regards to the applicability of relevant laws when patent infringement cases are handled, which took effect from April 1, 2016. It is a further development of SPC's judicial interpretation on the trial of patent infringement cases. The first part of the interpretation has been implemented since January 1st, 2010, and has been an important source of authority for lower courts in dealing with patent infringement cases. This second part covers more aspects of the patent litigations and would likely produce significant impacts on patent litigation practice.

In this new judicial interpretation, the SPC provides guidance on issues related to claim construction, determination of infringement and tests for defense, contributory liability, standard essential patents, which may be applicable to all invention, utility model and design patents. Some of the provisions were drawn from the judicial practice of guiding cases in recent years, some have been heavily debated since the amendment of the current Patent Law, and some others are new rules, e.g., those dealing with standard essential patents, which may cause some controversies.

The major issues covered by the new judicial interpretation are summarized as follows.

1. Procedural issues

First of all, a plaintiff has to state explicitly which claim is being infringed in the submitted complaint. The court will request the plaintiff to indicate the allegedly infringed claims if no such information is available. If the plaintiff still does not make a clear statement under such circumstances, the court may reject the suit.

If a claim that the patentee tries to assert rights thereof has been invalidated by the Patent Reexamination Board (PRB), the competent court can reject the case. However, if there is evidence showing that the invalidation decision by PRB is overruled by an effective administrative decision, the patentee may file another suit.

If the patent at issue is being challenged based on Arts. 26.3 and 26.4 of the Chinese patent law, i.e. the description is allegedly not clear or enabling, or the claims are allegedly not clear or not being supported by the specification, the court may stay the proceedings. In case the validity of such a patent is not challenged, the court may determine the scope of protection based on the claims.

2. Claim construction

In constructing a claim, both the preamble part and feature part of an independent claim and the reference part and limitation part of a dependent claim will be considered.

A divisional or parent application of the patent at issue and the related file wrapper and binding decisions regarding the validity of the patent at issue may be considered during claim construction. The file wrapper includes documents submitted by relevant parties, decisions and communications, interview meeting minutes, oral hearing records issued or made by SIPO and PRB during the prosecution, re-examination and invalidation proceedings.

3. Determination of Infringement

When the alleged infringing composition includes all features of a closed-mode composition claim and additional features, the court shall decide that the claim is not infringed, unless the additional features are impurities that are always inevitably included.

For claims characterized by functional features, features in the alleged infringing technical solution which use substantially the same technical means to realize the same function and achieve the same technical effect, and which can be envisaged by one skilled in the art without creative work at the time the infringing act takes place, will be considered the same as or equivalent to the functional features.

In case an alleged infringing technical solution is not applicable to the application environment as defined by claims at issue, the alleged infringing technical solution is considered not to fall within the scope of protection of the claims at issue.

For a product defined by a claimed process feature, products made by a process different from or not equivalent to the claimed process are considered not to fall within the scope of protection of the product by process claim.

4. Prosecution history

In case a patentee evidences that restrictive amendments or statements made during prosecution were not accepted, the court shall decide that amendments or statements do not give up relevant technical solutions.

5. Infringement determination with regards to designs

The concept of "freedom of design" is introduced for the first time in Article 14 of the new judicial interpretation, which provides that when determining the knowledge level and capability of a common consumer of a design, the freedom of design of products of the category the same as or close to that of the design patent at issue when the infringing act takes place shall be considered.

For a design patent covering a set of products, the design patent is considered infringed as long as the design of one of the products is infringed.

For a design of an assembled product with a fixed assembly relationship, the design patent is considered infringed when the alleged infringing product is the same as or similar to the design under its assembled state.

For a design of an assembled product without assembly relationships or with no fixed assembly relationships, the design patent is considered infringed only if each and every part of the alleged infringing product is the same as or similar to the parts of the design at issue. Otherwise, the court shall determine that the design patent is not infringed.

6. Indirect liability

Criteria for finding contributory and inducement liabilities are defined. Specifically, if a party knows that relevant products are raw materials, intermediate materials, parts or equipment specially used to exploit a patent, but still—without the authorization of the patentee and for production or business purposes—provides such a product to another party that conducts patent infringing acts, the party shall be held liable for contributory infringement. If a party knows relevant products or methods are patented products or methods but still, without the authorization of the patentee and for production or business purposes, induces another party to conduct patent infringing acts, the party shall be held liable for abetting others to conduct infringement.

7. Non-infringement defense

In prior art/design defense test, the courts shall determine prior arts/designs in accordance with the patent law being in force before the application date of the patent at issue.

Non-infringement defense against a patent granted at an earlier date by using a patent owned by the alleged infringer granted at a later date is not supported.

8. Standard essential patents

The SPC allows the courts not to issue injunctions against a patent infringer, if the patentee violates the FRAND principle and negotiates in bad faith. However, the rules are not clear enough, which arguably may expose legitimate patent owners to the risks of reverse patent hold-up. The SPC also allows the standard implementers to ask the courts to determine the patent royalty if the patentees and the licensees fail to reach agreements. The industries are concerned whether this will open the door for the potential licensees to convert any licensing negotiations into lawsuits.

9. Permanent injunction

Permanent injunction may not be issued by the court in case such injunction will damage the state or public interest. Instead, the court may decide that a reasonable royalty fee shall be paid by the infringer.

10. Damage calculation

In case the actual loss suffered by the patentee is difficult to determine, the patentee shall provide evidence to prove the profit made by the infringer. When the patentee supplied preliminary evidences and account books and information related to the infringement activities are under the control of the infringer, the court can order the infringer to provide such account books and information. If the infringer refuses to comply with the request by the court, the court can determine the profit made by the infringer based on the patentee's claim and evidences.

11. Preliminary protection after publication

When a patentee requests a third party implementing the technical solution of the patent application after it is published and before the allowance for compensation, the courts may decide an appropriate compensation with reference to royalty fees.

However, the new judicial interpretation also provides that if the granted patent has a scope different from that of the published patent application, the courts will only decide that the alleged infringer employs the patent application after publication and before allowance when the alleged infringing technical solution falls into both the scope of the issued patent and the published patent application.

The above summaries major issues covered by the new judicial interpretation, which will hopefully streamline the patent litigation procedures to come.

(This article was originally published in the INTA Special of Asia IP)

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Mondaq Advice Centre (MACs)
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.