Beijing Wei Chixue Law Firm--The Official Reply of the Supreme People’s Court on How to Handle the Patent Right a Party to a Lawsuit Should Have in Lawsuits

((93) Jing Ta Zi No. 20, promulgated on 16 August 1993)

To: Beijing High People’s Court

We acknowledge the receipt of “Request for Instruction on Some Problems Concerning the Case in Which Tianjin East Suburb Farm Accused PLA 360 Factory of Infringing its Patent Right” (Jing Gao Fa [1992] No. 143) from your court. As a result of examining the case and consulting with the Patent Review Committee, we hereby reply as follows:

In the trial of a patent right infringement case, the people's court shall treat an effective patent right assigned by the China Patent Bureau as the objective that should be protected by the law and examine whether any harm has been done to this objective. Parties to the lawsuit should undergo the revocation procedure or the invalidation procedure to find a solution to the problem of whether the patent right held by the plaintiff or the patent right held respectively by the plaintiff and the defendant really meets the condition of patent; if a party to the lawsuit does not request the Patent Review Committee to revoke another party's patent right or declare it invalid, the people's court should rule that the patent right held by the party to the lawsuit is effective.

Regarding the same or a similar product, patents held by different inventors fall under the following three cases: (1) where each inventor has a different aspect in his invention-creation regarding the same product and there is an intrinsic difference in the technical plan among different inventors; (2) where the subsequent patent is a reform or an improvement of the preceding one and is more technologically advanced than the preceding one but the execution of the technology depends on the preceding one, and therefore it belongs to a patent of dependence and (3) where, as a patent for utility model has not been substantially examined, the technical plans of the preceding and subsequent patents for utility model are the same or equivalent, and the subsequent one falls under the category of repeated assignment.

In the trial of a patent right infringement case, so long as the plaintiff filed a patent application before the defendant, the people's court shall, according to the principle of the right of priority for the patent application as prescribed by the Patent Law and based on the scope of patent protection for the plaintiff, examine whether the main technological attributes of the product manufactured by the defendant have completely covered the scope of patent protection for the plaintiff. In general, in the above mentioned case (1), the defendant does not constitute a patent right infringement because the technical plan of the defendant has an intrinsic difference from that of the plaintiff, whereas in any of the other two cases, the defendant constitutes a patent right infringement either because the defendant, in order to execute his patent of dependence, executed the technology of a preceding patent without obtaining approval from the patent holder or because the preceding and subsequent patents for utility model are the same or equivalent and the defendant executed the technology of the subsequent patent which falls under the category of repeated assignment. Therefore, the people's court should not immediately reject the plaintiff's request for trial without studying and determining whether the defendant's act constitutes a patent right infringement merely because the defendant holds a patent, but it should examine the concrete conditions of the patent held by the defendant and its relationship with the patent held by the plaintiff and then make a ruling on whether or not the defendant's act constitutes an infringement.