Supreme People's Court, Annual Report on Intellectual Property Cases (2011) (Abstract)

(1) Function of explanatory descriptions in patent descriptions and figures in interpreting patent claims

In the Xu Yongwei v. Huatuo invention patent infringement case [(2011) Min Ti Zi No.64], the Supreme People's Court pointed out that when the description and figures are used to interpret the claims, the explanatory descriptions in the description and figures should not be used to restrict the scope of protection of a patent because embodiments are merely examples of the invention.

(2) How to interpret the meaning of a term when the description does not specifically define the term used in the claims

In the Lanying Factory v. Luo Shizhong utility model patent infringement case [(2011) Min Ti Zi No.248], the Supreme People's Court held that, when a patent description does not give a specific definition of a term used in the claims, it should be interpreted as having the normal meaning understood by a person having ordinary skill in the art, and the meaning of such term cannot simply be restricted to the content manifested in a specific embodiment given in the description.

(3) Function of the parent application in interpreting the claims for a patent granted under a divisional application

In the Qiu Zeyou v. Luban patent infringement case [(2011) Min Shen Zi No.1309], the Supreme People's Court held that a parent application constitutes a special patent review file for a divisional application, and when determining the scope of protection of a claim for a patent granted under a divisional application, content that exceeds the scope disclosed in the parent application may not serve as a basis for interpreting the claims for the patent granted under the divisional application.

(4) When an alleged infringing technical solution lacks a/the technical feature(s) of the patent, infringement is not constituted

In the Zhang Zhen v. Jinzihao and Tongshengxiang Shoe Store utility model patent infringement case [(2011) Min Shen Zi No.630], the Supreme People's Court held that, where an alleged infringing technical solution lacks one or more of the technical features specified in the claims, the alleged infringing technical solution should be determined not to fall within the scope of protection of the patent.

(5) Review and determination of prior use defence

In the Yintao v. Hanwang and Biosep patent infringement case [(2011) Min Shen Zi No.1490], the Supreme People's Court held that the key as to whether a prior use defence is tenable lies in whether the alleged infringer has exploited the patent or has made the necessary technical or material preparations for exploiting the patent before the patent filing date; a pharmaceutical production approval document is an administrative examination and approval matter for pharmaceutical regulation, and whether a pharmaceutical production approval document has been secured has no effect on whether a prior use defence is tenable.

(6) Impact of a design feature that aids in differentiation from an existing design on the overall visual effect of a design

In the Junhao v. Jiayi Furniture Factory design patent infringement case [(2011) Min Shen Zi No.1406], the Supreme People's Court held that the design features that distinguish a design patent from an existing design have a more conspicuous impact on the overall visual effect of a design; where the alleged infringing design uses the design features of the design patent in question, the simple replacement of the decorative pattern will not affect the similarity of the overall visual effect of the two.

2. Trial of Patent Administrative Cases

(7) Impact of technical content not specified in a patent description on the determination of inventiveness

In the administrative case for invalidation of Xiangbei Welman's “anti-beta-lactamase antibiotic composition” patent [(2011) Xing Ti Zi No.8], the Supreme People's Court pointed out that the technical content disclosed by a patent applicant in the patent description submitted when applying for the patent is the basis for review of the patent by the State Council's patent administrative department; the technical solutions, technical effects, etc. that the patent applicant failed to disclose in the patent description cannot, in general, serve as a basis for assessing whether a patent complies with the statutory criteria for granting and confirming rights.

(8) Impact of provisions relating to the research and production of pharmaceuticals on the conditions for granting pharmaceutical patents

In the above mentioned administrative case for invalidation of the “anti-beta-lactamase antibiotic composition” patent of Xiangbei Welman, the Supreme People's Court pointed out that, with respect to an invention/creation involving a pharmaceutical, a patent may be granted therefor provided that it satisfies the granting conditions specified in the Patent Law, without otherwise considering whether said pharmaceutical complies with provisions on the research and production of pharmaceuticals of other laws or regulations.

(9) Criteria for determining whether the amendment of patent application documents exceeds the scope specified in the original description and claims

In the administrative case for the invalidation of Seiko Epson Corporation's “ink cartridge” patent [(2010) Zhi Xing Zi No.53], the Supreme People's Court held that the scope specified in the original description and claims should include the content clearly expressed in words or graphical form in the original description, the figures and claims as well as the content that a person having ordinary skill in the art could directly and expressly deduce by a synthesis of the original description, the figures and the claims; so long as the deduced content is obvious to a person having ordinary skill in the art, it can be determined to fall within the scope specified in the original description and claims; if, compared with the aforementioned content, the amended patent application documents do not bring in new technical content, it can be determined that the amendment of the patent application documents did not exceed the scope specified in the original description and claims.

(10) In determining whether the amendment of patent application documents exceeds the scope specified in the original description and claims, full consideration should be given to the features of the technical field of the patent application

In the administrative case re-examining the rejection of the application for Zeng Guansheng's invention patent for a “mineral traditional Chinese medicine that can be both applied externally and taken internally” [(2011) Zhi Xing Zi No.54], the Supreme People's Court held that, when reviewing whether a patent applicant's amendment of its patent application documents exceeds the scope specified in the original description and claims, full consideration should be given to the features of the technical field of the patent application, and may not depart from the knowledge level of a person skilled in the art.

(11) Is the method of amending claims in a procedure for the invalidation of a patent strictly limited to the three methods specified in the Patent Review Guidelines?

In the administrative case for the invalidation of Xiansheng and Simcere's invention patent for an “amlodipine and irbesartan compound preparation” [(2011) Zhi Xing Zi No.17], the Supreme People's Court held that, in a patent invalidation procedure, provided that the amendment principles are satisfied, the methods of amending claims are, in general, limited to the three methods of deleting and combining claims and deleting technical solutions, without, however, absolutely excluding other methods of amendment.

(12) Relationship between the limitations on the amendment of patent application documents and the scope of protection of patents

In the above mentioned administrative case for the invalidation of Seiko Epson Corporation's “ink cartridge” patent, the Supreme People's Court additionally clarified the relationship between the limitations on the amendment of patent application documents and the scope of protection of patents. The Supreme People's Court held that there is both a certain connection and a clear difference between the limitations on the amendment of patent application documents and the scope of protection of patents; in the course of reviewing an invalidation petition, where an invention or utility model patentee amends its claims, it is subject to the original scope of protection of the patent, and may not expand the original scope of protection of the patent; when an invention patent applicant makes amendments at its own initiative when submitting its petition for substantive review or within three months from the date of receipt of the notice issued by the State Council's patent administrative department informing it that the invention patent application has entered the substantive review stage, so long as it does not exceed the scope specified in the original description and claims, it may, when amending the original claims, either expand or reduce the scope of protection it is requesting.

(13) Relationship between the limitations on the amendment of patent application documents and the doctrine of estoppel

In the above mentioned administrative case for the invalidation of Seiko Epson Corporation's “ink cartridge” patent, the Supreme People's Court additionally clarified the relationship between the limitations on the amendment of patent application documents and the doctrine of estoppel. The Supreme People's Court held that the doctrine of estoppel should be applied in procedures for the granting and confirmation of patent rights, but is limited by its own application conditions as well as other related principles and legal provisions; in procedures for the granting of patent rights, relevant laws already grant applicants the right to amend their patent application documents, and so long as such amendments do not exceed the scope specified in the original description and claims, there should not be any room for application of the doctrine of estoppel within the scope of such amendments.

(14) Can a people's court, in a patent invalidation administrative litigation case, bring in common knowledge at its own initiative ex officio?

In the administrative case for the invalidation of Duoleng Steel Group's invention patent for a “cast steel shot production method” [(2010) Zhi Xing Zi No.6], the Supreme People's Court held that, in a patent invalidation administrative litigation procedure, the bringing in by the court at its own initiative of common knowledge ex officio, on the basis of a consideration of the comparative documents self-selected by the invalidation petitioner, to assess the validity of a patent does not change the grounds for the petition for invalidation and is conducive to avoiding repeated patent invalidation procedures and does not violate the statutory procedure; when a court brings in, at its own initiative, common knowledge ex officio, it should, in the procedure, give the parties the opportunity to express their opinions thereon.

(15) Understanding of “overall observation and comprehensive judgement” in the determination of the similarity of designs

In the administrative case for the invalidation of Midea's design patent for a “windwheel” [(2011) Xing Ti Zi No.1], the Supreme People's Court held that “overall observation and comprehensive judgement” refers to the determination by the average consumer as to whether there is a clear difference in the visual effects of a design patent and the compared design from their entirety and not merely partial design changes; when judging, the average consumer will notice the similarities and differences of the visible portions of the design patent and the compared design and comprehensively consider the size and extent of the impact of the similarities and differences on the overall visual effect.

(16) Impact of the change in technical effect accompanying a change in design elements on the overall visual effect of a design

In the above mentioned administrative case for the invalidation of Midea's design patent for a “windwheel”, the Supreme People's Court pointed out that a product design that is merely functional, not aesthetic, should not be accorded protection through a design patent; when the average consumer judges the similarity of a design, he or she mainly notices the change in the overall visual effect of the design and will not give extra visual attention to changes in the design elements based on the changes in technical effect that accompany changes in the design elements.

II. Trial of Trademark Cases

1. Trial of Civil Trademark Cases

(17) In determining trademark infringement, the potential for confusion among, and misidentification by, the relevant public should be taken into account

In the Qilu Zhonghe v. Nanjing Business Office of Qilu Securities dispute over the infringement of the exclusive right to use a registered trademark [(2011) Min Shen Zi No.222], the Supreme People's Court held that, in principle, trademark infringement requires the potential of causing confusion among, and misidentification by, the relevant public; when considering whether there is the potential to cause confusion among, and misidentification by, the relevant public, consideration needs to be given to the distinctiveness and notoriety of the trademark.

(18) A product name that has the mixed attributes of a product and a brand and that is dealt in and used exclusively should not be determined to be a generic name

In the Foshan Heji v. Hong Kee dispute over the infringement of the exclusive right to use a registered trademark [(2011) Min Ti Zi No.55], the Supreme People's Court held that a product name that maintains the mixed attributes of a product and a brand due to a specific historical origin, development process and long-term and unique supply entity as well as the objective market situation still has the significance of indicating the origin of the goods and should not be determined to be a generic name.

2. Trial of Administrative Trademark Cases

(19) Review of and determination on the distinctiveness of trademarks containing descriptive foreign words

In the administrative case re-examining the rejection of Jiaxuan's trademark "BEST BUY 及图" (BEST BUY & device) [(2011) Xing Ti Zi No.9], the Supreme People's Court held that, when trying administrative cases for the granting and confirmation of trademark rights, the review of and determination on whether a trademark, on the whole, has distinctive features should be carried out based on the common knowledge of the relevant public for the goods for which the disputed trademark is designated; if the descriptive elements contained in the trademark representation do not affect whether the trademark, on the whole, has distinctive features and the relevant public can use the trademark to identify the source of the goods, the trademark should be determined as having distinctive features.

(20) Review of and determination on the distinctiveness of trademarks containing descriptive elements

In the administrative case involving Weishan Tea's trademark “沩山牌及图 ” (WEISHAN brand & device) [(2011) Xing Ti Zi No.7], the Supreme People's Court held that the determination of the distinctiveness of a trademark containing descriptive elements should be made by determining whether the trademark, on the whole, has distinctive features based on the common knowledge of the relevant public for the goods for which the disputed trademark is designated, and it should not be held that on the whole it lacks distinctiveness due to its containing descriptive words; if a trademark has been used for a relatively long period of time, has established a certain market reputation, can be used by the relevant public to identify the source of the goods and does not merely directly express the characteristics of the goods, it should be held to have distinctive features.

(21) Consideration of the purpose of a product in the determination of similar goods

In the administrative case re-examining the opposition to Changkang's trademark “加加 JIAJIA”¹ [(2011) Zhi Xing Zi No.7], the Supreme People's Court held that, when considering the purpose of goods in the determination of similar goods, their primary purpose should be considered, and if there are different consumers for the different purposes of the products, in general, the consumers whose degree of attention is lower should be taken as the standard.

(22) Depending on the circumstances, related goods may be included within the scope of similar goods

In the administrative case involving a dispute over Zhuomuniao's woodpecker figurative mark [(2011) Zhi Xing Zi No.37], the Supreme People's Court held that avoidance of confusion of the source is the basic principle that must be adhered to when determining the relationship of similarity between goods, and if a similar trademark is used on goods with a certain connection, it would likely cause the relevant public to believe that the two goods were supplied by the same entity or that there was a specific connection between the suppliers and, accordingly, the two goods should be deemed to constitute similar goods.

(23) Function of the Classification of Similar Goods and Services in the determination of similar goods

In the above mentioned administrative case involving a dispute over Zhuomuniao's woodpecker figurative mark, the Supreme People's Court explained the function of the Classification of Similar Goods and Services in the determination of similar goods or services. The Supreme People's Court held that the Classification of Similar Goods and Services may serve as reference in the determination of similar goods or services, but it cannot mechanically and simply be used as a basis or standard; rather, the determination should be arrived at by giving greater consideration to the actual factors and taking into account the circumstances of the specific case.

(24) A comprehensive determination of whether a trademark is well-known should be carried out based on the specific circumstances of the case, the characteristics of the goods involved, etc.

In the administrative case involving a dispute over Huaxia Changcheng's trademark “日产及图” (NISSAN & device) [(2011) Zhi Xing Zi No.45], the Supreme People's Court held that whether a trademark is well-known is a conclusion derived by comprehensively considering all of the evidence submitted by the parties, and cannot be reached by looking at the relevant evidence in isolation nor can it be mechanically demanded that a certain type of evidence must be provided; rather it is necessary to carry out a specific analysis and arrive at a determination based on the specific circumstances of the case, the characteristics of the goods involved, etc.

(25) A coexistence agreement for similar trademarks affects the review for and determination of the registrability of a trademark

In the administrative case involving a dispute over Shandong Liangzi's trademark “良子” (LIANGZI) [(2011) Zhi Xing Zi No.50], the Supreme People's Court held that a coexistence agreement for similar trademarks between the concerned parties affects the review for and determination of the registrability of a trademark.

(26) The criteria for determining commercial use and lawful use for the purposes of the system for the cancellation of registered trademarks that have not been used for three years in succession

In the administrative case re-examining the cancellation of Li Daozhi's trademark “卡斯特” (KASITE) [(2010) Zhi Xing Zi No.55], the Supreme People's Court held that, so long as a registered trademark is openly and genuinely used in commercial activities and the use itself of the registered trademark does not violate trademark law, the registered trademark rights holder has performed its obligation of use specified in the law; with respect to whether legal provisions on importing, sale, etc. are violated in other business activities where a registered trademark is used, this is not an issue that is regulated or redirected by Item (4) of Article 44 of the Trademark Law.

(27) Application of the principle of double jeopardy in a procedure for the re-examination of the rejection of a trademark and a procedure for the re-examination of a trademark opposition?

In the administrative case for the re-examination of the opposition to Yang Sheng Dian's trademark “六味地” (LIUWEIDI) [(2011) Zhi Xing Zi No.53], the Supreme People's Court held that, in terms of the initiating entity and remedy objectives, a procedure for the re-examination of the rejection of a trademark and a procedure for the re-examination of a trademark opposition are not identical, therefore, the principle of double jeopardy may not be mechanically applied to the two procedures to deprive the cited trademark rights holder's right to file an opposition at the opposition stage.

(28) In an administrative litigation procedure for re-examination of the rejection of a trademark, should consideration be given to new changes in the facts that obstruct the application for the registration of a trademark?

In the administrative case for the reexamination of the rejection of Advent's trademark “ADVENT” [(2011) Xing Ti Zi No.14], the Supreme People's Court held that, in an administrative case for re-examination of the rejection of a trademark, if the cited trademark is cancelled in the litigation procedure due to its not having been used for three years in succession, given that registration of the applied for trademark has not been completed, the people's court should, in accordance with the law, render its ruling based on the principle of changed circumstances and the changed facts.

(29) In an administrative litigation procedure for re-examination of the rejection of a trademark, should consideration be given to new evidence that substantiates use of the trademark applied for?

In the above mentioned administrative case re-examining the rejection of Jiaxuan's trademark “BEST BUY 及图 ” (BEST BUY & device), the Supreme People's Court held that, in an administrative case for re-examination of the rejection of a trademark, consideration should be given to new evidence on the use of the trademark applied for submitted by the concerned party.

(30) Handling of new evidence submitted by the parties and the determination of similar goods in trademark administrative litigation procedures

In the administrative case involving a dispute over Wu Shutian's trademark “富士寶 FUSHIBAO 及图” (FUSHIBAO & device) [(2011) Zhi Xing Zi No. 9], the Supreme People's Court held that a people's court should not, without exception, refuse to accept new evidence submitted by the parties in an administrative litigation procedure; the people's court may, based on the specific circumstances of the case, consider the effect of the new evidence on the lawful rights and interests of the parties and the remedial value of administrative litigation and order the Trademark Review and Adjudication Board to render a new ruling on the basis of a synthesis of the original evidence and the new evidence.

III. Trial of Copyright Cases

(31) An answer sheet that does not in itself express a certain thought does not constitute a work as intended by the Copyright Law (著作权法)

In the Chen Jian v. Wanpu copyright infringement case [(2011) Min Shen Zi No. 1129), the Supreme People's Court held that an answer sheet that does not in itself express a certain thought does not constitute a work as intended by the Copyright Law.

IV. Trial of Competition Cases

(32) Determination of the secret nature of trade secrets that constitute state secrets

In the Gao Xinmao v. Yidege and Chuanren trade secret infringement case [(2011) Min Jian Zi No.414], the Supreme People's Court held that the information in a state secret is information that is as yet undisclosed or, in accordance with relevant provisions, ought not to be disclosed due to the fact that it concerns state security and interests; information that is a state secret should be deemed not to be known to the public until it is declassified.

(33) Determination of whether the entirety of information that constitutes a trade secret is known to the public

In the above mentioned Gao Xinmao v. Yidege and Chuanren trade secret infringement case, the Supreme People's Court held that, where technical information or business information that bestows a competitive advantage is an information package, it is not possible to sever its constituent parts from the whole and simply hold that because a certain portion has been disclosed, the entirety has become known to the public.

(34) Can simple anti-compete provisions constitute confidentiality measures serving as conditions for the protection of trade secrets?

In the Furi v. Huang Ziyu and Safeiya trade secret infringement case [(2011) Min Shen Zi No.122], the Supreme People's Court held that confidentiality measures that comply with Article 10 of the Anti-unfair Competition Law should indicate the subjective wish of the rights holder for confidentiality and expressly specify the scope of the information that is protected as trade secrets so that the persons with the confidentiality obligation can know the rights holder's wish of confidentiality and the things to be kept confidential, and, under normal circumstances, they should be sufficient to prevent disclosure of the confidential information; simple anti-compete provisions, if they do not expressly specify the subjective wish of the employer for confidentiality and the scope of the information that is to be protected as trade secrets, cannot constitute confidentiality measures as specified in Article 10 of the Anti-unfair Competition Law.

(35) Presumption of the facts of unfair means in the determination of trade secret infringement

In the above mentioned Gao Xinmao v. Yidege and Chuanren trade secret infringement case, the Supreme People's Court held that the concerned party, based on his/her work duties, fully had the possibility and conditions for knowing the trade secret information, and that he/she produced for another a product relating to the trade secret information and was unable to adduce evidence to substantiate that the product was independently developed; therefore, based on the specific circumstances of the case and normal day-to-day experience, it can be presumed that the concerned party illegally disclosed the trade secret known to him/her.

(36) Conditions under which a descriptive product name constitutes the proprietary name of a famous good

In the Yushengtang v. Kangshiyuan et. al. dispute case involving the unauthorised use of the proprietary name, packaging and trade dress of a famous good [(2011) Min Ti Zi No.60], the Supreme People's Court held that a product name that itself has the function and purpose of describing the good requires evidence showing that, through use, it has acquired the second meaning that distinguishes the source of the goods, and only then can it constitute the proprietary name of a famous good.

V. Trial of Intellectual Property Contract Cases

(37) Impact on a technology contract of the requirement for administrative approval or permission for the product or service involved in the contract

In the Kangliyuan et. al. v. Qili Pharmaceutical technology transfer contract dispute case [(2011) Min Ti Zi No.307], the Supreme People's Court held that, in a technology contract dispute case, when the product or service involved in the technology contract requires, in accordance with the law, the approval of the administrative department or administrative permission, the lack of such approval or permission does not affect the validity of the relevant technology contract concluded by the parties.

(38) Definition and determination of franchise contracts

In the Fu Yuping and Li Xiurong v. Xie Jinlian, Cao Huozhu and Mingzui franchise contract dispute case [(2011) Min Shen Zi No.1262], the Supreme People's Court held that, in determining whether the contract between parties is a franchise contract, the determination should not be made solely on the basis of whether the title of the contract contains the key word “franchise”; rather, a comprehensive determination should be made based on whether the provisions of the contract fit the meaning and legal features of a franchise.

VI. Bearing of Liability for Infringement of Intellectual Property

(39) Civil liability for the subsequent use, promise to sell and sale of the alleged patent infringing product manufactured, sold or imported during the interim protection period for the patent

In the Siruiman v. Kangzi Water and Kangtailan invention patent infringement case [(2011) Min Ti Zi No.259], the Supreme People's Court held that, where the manufacture, sale or import of the alleged patent infringing product during the interim protection period for the patent is not prohibited by the Patent Law, the subsequent use, promise to sell and sale of the product cannot be prohibited by the patentee; where a seller or user provides a lawful source, such seller or user is not required to bear the liability of paying the appropriate fee.

VII. Evidence and Procedure in Intellectual Property Legal Actions

(40) Conditions for acceptance of a suit for confirmation of non-infringement of intellectual property

In the case of objection to jurisdiction in a dispute over confirmation of non-infringement of copyright between Beijing Tiantang and Fiberhome [(2011) Min Ti Zi No.48], the Supreme People's Court held that to determine whether a suit for the confirmation of non-infringement of intellectual property, other than a patent, satisfies the statutory conditions, a review should be conducted by referring to Article 18 of the Supreme People's Court, Interpretation on Several Issues Concerning the Application of the Law in Trials of Patent Infringement Disputes (关于审理侵犯专利权纠纷案件应用法律若干问题的解释); when a people's court accepts a suit for confirmation of non-infringement instituted by a party, the preconditions to its doing so should be whether materially interested parties have received a warning and whether the rights holder has failed to initiate, in accordance with the law, a dispute resolution procedure within a reasonable period of time.

(41) Can the place of export loading and delivery of an alleged infringing product be determined to be the place of infringement?

In the case of objection to jurisdiction in an invention patent infringement dispute between Kaisai Materials and Hilead Biotechnology et. al. [(2011) Min Shen Zi No.1049], the Supreme People's Court held that the place of loading and delivery of the product directly derived from the alleged infringing patented method in the case and exported and sold on FOB or CIF conditions is the place where sale is carried out.

(42) Handling of infringement that continues during trial at first instance

In the above mentioned Xu Yongwei v. Huatuo invention patent infringement dispute, the Supreme People's Court additionally clarified how infringement that continued during the trial at first instance is to be dealt with. The Supreme People's Court held that, where the concerned party proposes to increase the measure of damages on the grounds that the infringement continued during trial at first instance, this constitutes an additional claim at first instance, and the plaintiff can institute a separate legal action in respect thereof; the expenses incurred by the plaintiff in investigating such infringement do not fall within the issues that are to be dealt with in the case.

(43) Does a third party with no independent right of claim have the right to apply for forensic analysis during a litigation procedure?

In the Wafangdian Corn Stock Seed Farm v. Zhao Jinlin, Origin Seed et. al. new plant variety title dispute case [(2011) Min Shen Zi No.10], the Supreme People's Court held that, as required by the case, a third party with no independent right of claim may apply for forensic analysis of the uniformity of a new plant variety.

(44) Does failure to notify the concerned party to be present on site when samples of the material to be analysed are taken constitute an illegal forensic analysis procedure?

In the above mentioned Wafangdian Corn Stock Seed Farm v. Zhao Jinlin, Origin Seed et. al. new plant variety title dispute case, the Supreme People's Court held that the forensic analysis procedure may not unhesitatingly be determined to be in violation of the law based on the fact that a concerned party was not notified to be on site when samples of the materials to be analysed were taken.

1. Translator's note: These Chinese characters read "jiajia".