PRC Supreme People’s Court (SPC) Justice He Zhonglin introduced the draft of Several Provisions of the Supreme People’s Court on Issues Concerning Applicable Laws to the Trial of Patent Infringement Controversies (Judicial Interpretations). The Judicial Interpretations draw from and parallel the implementation of the recent Third Amendment to the Patent Law. Justice He announced that the SPC would welcome comments concerning the draft guidance, including comments from interested observers from the United States and other overseas countries.
Speaking at a seminar, “Cutting-Edge Intellectual Property Issues Between the U.S. and China, held on June 19, 2009 at the State Intellectual Property Office Training Center in Beijing, Justice He shared the stage with several other Chinese experts as well as former Under Secretary of Commerce and current Foley & Lardner LLP Partner Jon W. Dudas and several of his partners from Foley.
The Judicial Interpretations document is particularly important, as it comes from the SPC and, when finalized, will represent a powerful interpretative tool for Chinese patent law and practice. Justice He emphasized that the SPC will welcome suggestions concerning the draft version, which addresses a number of complex issues in patent infringement cases such as claim construction, standards for determining patent infringement, and calculation of damages.
Scope of Protection
The first 12 of 25 sections of the Judicial Interpretations concern determination of scope of patent protection.
Prior Art Defense
The Third Amendment to the Patent Law codifies the doctrine of prior art defense, under which the SPC may find no infringement if the defendant has evidence to prove that his technology or design is covered by or performed in accordance with prior art or prior art design. The Judicial Interpretations document requires the reliance upon one piece of prior art (or design) in such a defense, but also allows certain changes from the cited prior art. For example, with respect to invention or utility model patents, the features of the accused infringing product can be “equivalents” to those of the prior art; with respect to design patent, the design of the accused infringing product can be “similar” to that of the prior art.
Cease and Desist Letters
The Judicial Interpretations document sets forth that the accused infringer is entitled to file a declaratory judgment if the patentee — within one month after receipt of written notice from the accused infringer who has received a cease and desist letter therefrom, urging the patentee to take legal actions — fails to withdraw this letter or to bring a lawsuit. Such an additional procedural requirement may give the patentee significant advantages over the accused infringer in terms of forum shopping.
Comments to the Court
The deadline for comments is July 10, 2009. Comments may be e-mailed via the Web site http://www.chinacourt.org/wsdc/, or mailed to:
Intellectual Property Tribunal
The Supreme People's Court of China
No. 27 Dong Jiao Min Xiang
* This paper benefits from the views expressed in the question and answer period of the seminar, “Cutting-Edge Intellectual Property Issues Between U.S. and China,” held on June 19, 2009 at the State Intellectual Property Office Training Center in Beijing, particularly the comments made by PRC Supreme People’s Court Justice He Zhonglin.
The authors of this alert are members of Foley & Lardner LLP. Yan Zhao is an attorney in the firm’s Shanghai office and is admitted to practice in China and the State of New York. He earned his LL.B. from Peking University and his LL.M. from George Washington University Law School. Alex Y. Nie, Ph.D., practices in the firm’s Silicon Valley office. He earned his J.D. from Rutgers School of Law – Newark, his Ph.D. in biochemistry and M.S. in computer science from Rutgers – New Brunswick, his M.S. from the University of Science and Technology of China, and his B.S. from Wuhan University. Yang Tang is a patent agent in Foley’s San Diego/Del Mar office. She earned her M.S. in biochemistry from Case Western Reserve University and her B.S. in biochemistry from Xiamen University.
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Sharon R. Barner
Alex Y. Nie
Foley & Lardner LLP is licensed to operate in China as a foreign law firm. Under Ministry of Justice regulations, foreign law firms in China are permitted to advise clients on certain aspects of international transactions and to provide consultation concerning the impact of the Chinese legal and regulatory environment; foreign law firms in China are not permitted to practice Chinese law. The content of this communication does not constitute an opinion on Chinese law nor does it constitute legal advice, but is based on our research and our experience advising clients on international business transactions in China.