In the annual report of the Supreme People’s Court of China of 2014, the Supreme People’s Court selected 35 typical cases from all the intellectual property and competition cases it tried and concluded in 2014 and summarized 50 issues of law application which are of general directive significance, reflecting the mentality and methodology of the Supreme People’s Court in dealing with new, difficult and complicated cases in the field of intellectual property and competition.

　　Trial of Civil Patent Cases

　　1. Conditions for differentiated interpretation of independent claims and dependent claims

　　Type of Case: Invention Patent Right Infringement Dispute

　　In Re: Free Motion Fitness Inc. (Applicant for Re-trial) vs. Yingcai Metalwork Co., Ltd. and Jianda Co., Ltd (Defendants)

　　Case NO.: (2014) Civil Retrial No. 497

　　The Supreme People’s Court points out that generally it is presumed that independent claims and dependent claims have different scopes of protection. However, if the scopes of protection of the two are the same or substantively the same, we cannot mechanically impose differentiated interpretations on the scope of protection of the two.

　　2. Rule for the Interpretation of the Invented Technical Terms in Claims

　　Type of Case: Utility Model Patent Right Infringement Dispute

　　In Re: Modiluke Co., Ltd. (Applicant for Retrial) vs. Solid-kin Lock Co., Ltd. (Defendant)

　　Case No.: (2013)Civil Review No. 113

　　The Supreme People’s Court points out that during the interpretation of claims, for those technical terms that are invented by the patentee, their meanings can be determined according to the definition or explanation in the claims or specifications. Where there is no such explanation or definition, the working method, function and effect of the invented term should be clarified in accordance with the relevant background technology, invention purpose, and technical effect recorded in the claims, specifications and drawings so as to determine its meaning in the overall technical plan.

　　3. Permission of the Patentee is needed for the Implementation of the Recommended Standards Containing Patented Technology

　　Type of Case: Invention Patent Infringement Dispute

　　In Re: Zhang Jingting (Applicant for Retrial) vs. Ziya River Co., Ltd. (Defendant) and Huaze Co., Ltd. (Defendant in the First Trial and Second Trial)

　　Case No.: (2012) Civil Review No. 125

　　The Supreme People’s Court points out that when the patentee has disclosed the patented technology included in the recommended standards, Others should obtain permission from the patentee and pay a license fee in order to implement such standards. Implementation of such recommended standards containing patented technology without permission or refusal of paying the license fee will be regarded as infringement upon the patent right contained in the standards.

　　4. Is the provision of patent layout designs by the patentee to be regarded as Implied Permission?

　　Type of Case: Utility Model Patent Infringement Dispute

　　In Re: Fan Junjie (Applicant for Retrial) vs. Yichen Co., Ltd. (Defendant)

　　Case No.: (2013) Civil Review No. 223

　　The Supreme People’s Court points out the provision of patent layout designs to others by the patentee for promotion does not automatically equals the intention of permitting others to implement the patent.

　　5. Influence of Scope of Protection in the Determination of Design Patent Infringement

　　Type of Case: Design Patent Infringement Dispute

　　In Re: Great Wall Co., Ltd. (Applicant for Retrial) vs. Chen Chunbin (Defendant) and Minsheng Co., Ltd. (Defendant of the First Trial)

　　Case No.: (2014)Civil Retrial No.438

　　The Supreme People’s Court points out that although the patent in this case only protects the design of shape rather than patterns, but shape and patterns are independent elements in design, and adding patterns to the shape does not necessarily impose visual influence on the design of shape itself. When the designs of shape of the two are similar, the alleged infringing product containing patterns still falls into the scope of protection of the patent in this case.

　　6. Design Features not solely determined by the Function of the Product Should be Taken into Consideration in Determination of the Same or Similar Design

　　Type of Case: Design Patent Infringement Dispute

　　In Re: Chennuo Co., Ltd. (Applicant for Retrial) vs. Weike Co., Ltd. and Zhang Chunjiang (Defendants) and Zhihe Co., Ltd. (Defendant of the First and Second Trial

　　Case No.: (2014) Civil Review No. 193

　　The Supreme People’s Court points out that design features that are not solely determined by the function of product should be taken into consideration while determining whether the designs are the same or similar.

　　Trial of Administrative Patent Cases

　　7. Scope of Examination for “Apparent Substantive Defect” in Patent Reexamination and Invalidation Proceedings

　　Type of Case: Administrative Dispute over Reexamination of Refusal of Invention Patent

　　In Re: Patent Reexamination Board (Applicant for Retrial) vs. Degussa Co., Ltd. (Defendant)

　　Case No.: (2014) IP Administrative No. 2

　　The Supreme People’s Court points out that although the scopes of examination for “apparent substantive defect” in preliminary examination, substantive examination and reexamination of invalidation are not exactly the same, the nature of “apparent substantive defect” is consistent. Therefore, the “apparent substantive defect” in the preliminary examination is no doubt applicable in the substantive examination and reexamination of invalidation.

　　8. Scope of ex officio Examination in Patent Invalidation Examination

　　Type of Case: Administrative Dispute over Invalidation of Utility Model Patent Right

　　In Re: Patent Reexamination Board (Applicant for Retrial) vs. Wang Weiyao (Defendant) and Lovol Co., Ltd. (Third Party in the First Trial and Appellant in the Second Trial)

　　Case No.: (2013) IP Administrative No. 92

　　The Supreme People’s Court points out that the specific situations under which the Patent Reexamination Board can carry out ex officio examination are listed in the Patent Examination Guidelines, therefore the scope of ex officio examination by the Patent Reexamination Board is limited. For the reasons and evidence for invalidation given up by the applicant, generally the Patent Reexamination Board should not carry out further examination without legal ground.

　　9. Determination of differentiated technical features should base on the technical features recorded in the claims.

　　Type of Case: Administrative Dispute over Invalidation of Invention Patent Right

　　In Re: Yadong Pharmaceutical Co., Ltd. (Applicant for Retrial) vs. Patent Reexamination Board (Defendant) and Huayang Co., Ltd. (Third party in the first trial)

　　Case No.: (2013) IP Administrative No. 77

　　The Supreme People’s Court points out that the determination of differentiated technical features between the claims and the closest existing technology should follow the technical features recorded in the claims and compare them one by one with the disclosed technical features of the closest existing technology. Technical features not recorded in the claims cannot be taken as the basis for comparison, so of course they do not constitute differentiated technical features.

　　10. Technical contribution not recorded in the specifications cannot be regarded as the basis for claiming patent right protection

　　Type of Case: Administrative Dispute over Invalidation of Invention Patent Right

　　In Re: Yadong Pharmaceutical Co., Ltd. (Applicant for Retrial) vs. Patent Reexamination Board (Defendant) and Huayang Co., Ltd. (Third party in the first trial)

　　Case No.: (2013) IP Administrative No. 77

　　The Supreme People’s Court also thinks that technical contributions not recorded in the specifications cannot be regarded as the basis for claiming patent right protection. For technical literature after the application date submitted by the patentee to prove the technical facts not recorded in the patent specifications, if such technical facts are not commonly known to the public before the application date, or are not used to prove the knowledge level and capacity of the technician in the field, generally they should not be regarded as basis for the determination of whether the patent right should be granted.

　　11. Determination of whether the differentiated technological features have been disclosed in existing technology should take their function in respective technical plans into account

　　Type of Case: Administrative dispute of invention patent invalidation

　　In Re: Zhantong Co., Ltd. (Applicant for retrial) vs. Taike Co., Ltd. (Defendant) and Patent Reexamination Board (Defendant of first trial and second trial)

　　Case No.: (2014) IP Administrative No. 43

　　The Supreme People’s Court thinks that when determining whether a differentiated technical feature corresponds with the technical feature in the existing technology which leads to the disclosure of this differentiated technical feature in the existing technology, we should consider whether they have same functions in the respective technical plan.

　　12. The relation of “independent claims are short of necessary technical features” and “claims should base on the specifications”

　　Type of Case: Administrative dispute of invention patent invalidation

　　In Re: Elecon Co., Ltd. (Applicant for retrial) vs. Patent Reexamination Board (Defendant), Liu Xiayang and Yifeng Co., Ltd. (third party in first trial)

　　Case No.: (2014) Administrative Review No. 13-15

　　The Supreme People’s Court points out that where the independent claims are short of necessary technical features and do not conform with Paragraph 2 Article 21 of the Implementational Regulations of the Patent Law, they generally are not supported by the specifications either and do not conform with Paragraph 4 Article 26 of the Patent Law.

　　13. How to deal with the functional technical features recorded in the claims when determining whether the independent claims have recorded necessary technical features

　　Type of Case: Administrative dispute of invention patent invalidation

　　In Re: Elecon Co., Ltd. (Applicant for retrial) vs. Patent Reexamination Board (Defendant), Liu Xiayang and Yifeng Co., Ltd. (third party in first trial)

　　Case No.: (2014) Administrative Review No. 13-15

　　The Supreme People’s Court also thinks that if the independent claims have recorded the necessary technical features for solving technical problems, even they are functional, they should be regarded as in conformity with Paragraph 2 Article 21 of the Implementational Regulations of the Patent Law. It would be inappropriate to regard them as in lack of necessary technical features on the ground that the specific structure or method to realize the function is not recorded in the independent claims.

　　14. Determination of the actual technical problems to be solved by the invention

　　Type of Case: Administrative Dispute over Invalidation of Invention Patent Right

　　In Re: Yadong Pharmaceutical Co., Ltd. (Applicant for Retrial) vs. Patent Reexamination Board (Defendant) and Huayang Co., Ltd. (Third party in the first trial)

　　Case No.: (2013) IP Administrative No. 77

　　The Supreme People’s Court also thinks that when judging creativity, the actual technical problems to be solved by the invention is to be determined according to the effect, function, or technical result of the differentiated technical features in the technical plan which the claims ask to protect by the technician in the field after reading the specifications of the patent on the basis of the differentiated technical features of the invention as against the closest existing technology.

　　15. Background technology cannot be used to determine the actual technical problems to be solved by the invention

　　Type of Case: Administrative Dispute over Invalidation of Invention Patent Right

　　In Re: Edan Co., Ltd. (Applicant for Retrial) vs. Patent Reexamination Board (Defendant) and Mindray Co., Ltd. (Third party)

　　Case No.: (2014) IP Administrative No.6

　　The Supreme People’s Court thinks that the determination of the actual technical problems to be solved by the invention is the result of comparison with the closest existing technology rather than on the basis of the record to its background technology.

　　16. How to determine the “technical problems” in Paragraph 2 Article 21 of the Implementational Regulations of the Patent Law

　　Type of Case: Administrative dispute of invention patent invalidation

　　In Re: Elecon Co., Ltd. (Applicant for retrial) vs. Patent Reexamination Board (Defendant), Liu Xiayang and Yifeng Co., Ltd. (third party in first trial)

　　Case No.: (2014) Administrative Review No. 13-15

　　The Supreme People’s Court also thinks that the “technical problems” in Paragraph 2 Article 21 of the Implementational Regulations of the Patent Law refers to the technical problems recorded in the specifications that are to be solved by the patent, i.e. the technical problems the applicant claims to solve in the specifications according to his subjective understanding of the background technology recorded in the specifications. If it is clearly recorded in the specifications that the patent can solve multiple technical problems, all the necessary technical features that can solve those technical problems simultaneously should be recorded in the independent claims.

　　17. Determination of unexpectable technical effects

　　Type of Case: Administrative Dispute over Invalidation of Invention Patent Right

　　In Re: Yadong Pharmaceutical Co., Ltd. (Applicant for Retrial) vs. Patent Reexamination Board (Defendant) and Huayang Co., Ltd. (Third party in the first trial)

　　Case No.: (2013) IP Administrative No. 77

　　The Supreme People’s Court also thinks that the technical effect of the invention is an important factor in judging creativeness. If the technical effects brought about by the invention show apparent changes in quality or quantity as against the existing technology and exceed reasonable expectation of the technician in the field, it can be determined that the invention has unexpectable technical effects. In the determination of whether there are unexpectable technical effects, comprehensive consideration should be taken of the characteristics of the technical field to which the invention belongs, factors such as the expectableness of the technical effects and the technical revelation in the existing technology in particular. Generally, the clearer the technical revelation in the existing technology, the higher the expectableness of the technical effects.

　　18. Choice of the scope of value of not obtaining unexpectable technical effects cannot bring creativity to the patent

　　Type of Case: Administrative Dispute over Invalidation of Invention Patent Right

　　In Re: Nihon Superior (Applicant for Retrial) vs. Patent Reexamination Board (Defendant) and Shi Tianlei (Third party in the first trial)

　　Case No.: (2014) IP Administrative No. 84

　　The Supreme People’s Court thinks that in the determination of the creativeness of the claims, the court should consider if the chosen scope of value has achieved unexpectable technical effects compared with the existing technology.

　　19. Registered trademark right of prior application date can be used in determining whether it is in conflict with the design patent right

　　Type of Case: Administrative Dispute over Invalidation of Design Patent Right

　　In Re: Patent Reexamination Board (Applicant for Retrial) vs. White Elephant Co., Ltd. (Defendant) and Chen Zhaohui (Third Party in the First Trial and Appellant in the Second Trial)

　　Case No.: (2013) IP Administrative No. 4

　　The Supreme People’s Court thinks that as long as the application date of the trademark is earlier than the application date of the design patent, and when the application for invalidation is filed the trademark has already been registered and is still valid, such trademark right can be used in judging whether the later design patent right is in conflict with it.