Guide to Patent Infringement Litigation in China

Table of Contents

Part One: Basic Points of Litigation

  1. Jurisdiction
  2. Plaintiff
  3. Defendant
  4. Litigation Requests
  5. Property Preservation/Pre-litigation Behavior Preservation
  6. Defendant’s Suspension of Litigation
  7. Attorney Fees as Reasonable Expenses

Part Two: Pre-litigation Preparations

  1. Status of Patent Rights
  2. Determining the Scope of Protection of the Involved Patent
  3. Determining the Specific Content of the Alleged Infringing Technical Solution
  4. Determining Whether the Alleged Infringing Technical Solution Falls Within the Scope of Patent Protection
  5. Determining the Act of Infringement

Part Three: Defendant’s Defenses

  1. Non-infringement Defense
  2. Non-considered Infringement Defense
  3. Prior Art Defense
  4. Legal Source Defense

Part Four: Relevant Legal Provisions

  1. Jurisdiction
  2. Provisions Related to Invention/Utility Model Patents
  3. Provisions on Patent Infringement Litigation

Part One: Basic Points of Litigation

I. Jurisdiction

The litigation process includes: the first instance (concerning infringement facts), the second instance (concerning the first instance judgment), and retrial (concerning already effective judgments/rulings). During litigation, the court of jurisdiction is determined successively based on territorial jurisdiction and hierarchical jurisdiction.

(a) Territorial Jurisdiction

  1. Lawsuits arising from patent infringement are under the jurisdiction of the people’s court at the place where the infringement act occurs or where the defendant is domiciled.
    • The place of the infringement act includes the place where the infringing product (concerning invention and utility model patents) is manufactured, used, offered for sale, sold, or imported; the place where the patented method is used, and the place where the product directly obtained by the patented method is used, offered for sale, sold, or imported; the place where the infringing act concerning design patents occurs; the place where acts of counterfeiting others’ patents occur. The place where the results of the infringement occur is also included.
  2. If the plaintiff sues only the manufacturer of the infringing product without suing the seller, and the places of manufacture and sale are different, the people’s court at the place of manufacture has jurisdiction. If both the manufacturer and the seller are sued as joint defendants, the people’s court at the place of sale has jurisdiction.
  3. When two or more people’s courts have jurisdiction over a lawsuit, the plaintiff may file the lawsuit with one of these courts. If the plaintiff files lawsuits with two or more courts with jurisdiction, the court that first registers the case has jurisdiction.

(b) Hierarchical Jurisdiction

  1. General Cases:
    • The first-instance civil cases concerning invention and utility model patent infringement disputes are under the jurisdiction of the intellectual property courts, the intermediate people’s courts in the provincial capitals, and intermediate people’s courts designated by the Supreme People’s Court.
    • Design patent infringement disputes are under the jurisdiction of intellectual property courts and intermediate people’s courts. With the approval of the Supreme People’s Court, grassroots people’s courts may also have jurisdiction.
  2. Special Cases 1:
    • The Beijing Intellectual Property Court, Shanghai Intellectual Property Court, and Guangzhou Intellectual Property Court have jurisdiction over first-instance patent civil cases within their respective municipalities.
    • The intermediate people’s courts of Beijing and Shanghai, and the Guangzhou Intermediate People’s Court no longer accept intellectual property civil and administrative cases. The Guangzhou Intellectual Property Court has cross-regional jurisdiction over first-instance patent civil cases within Guangdong Province. Other intermediate people’s courts in Guangdong Province no longer accept first-instance patent civil cases.
  3. Special Cases 2:
    • First-instance intellectual property civil cases with a subject matter value exceeding 200 million yuan, or exceeding 100 million yuan where one party’s domicile is outside the court’s jurisdiction or involves foreign, Hong Kong, Macao, or Taiwan elements, are under the jurisdiction of the high people’s courts.
    • First-instance intellectual property civil cases with a subject matter value below 200 million yuan, or below 100 million yuan where one party’s domicile is outside the court’s jurisdiction or involves foreign, Hong Kong, Macao, or Taiwan elements, are under the jurisdiction of intermediate people’s courts unless designated otherwise by the Supreme People’s Court.
    • Grassroots people’s courts designated by the Supreme People’s Court with general intellectual property civil jurisdiction can handle first-instance general intellectual property civil cases with a subject matter value below 5 million yuan, or between 5 million and 10 million yuan where all parties’ domiciles are within the jurisdiction of the same high or intermediate people’s court. Specific standards are determined by the relevant high people’s court and reported to the Supreme People’s Court for approval.

II. Plaintiff

  1. Unless otherwise explicitly agreed among the co-owners of the patent right, all co-owners should jointly file a lawsuit with the people’s court.
  2. Licensees under a patent exploitation license contract can file a lawsuit as an interested party:
    • Licensees under an exclusive license can file a lawsuit independently.
    • Licensees under an exclusive license can file a lawsuit if the patentee does not.
    • Licensees under an ordinary license can file a lawsuit with explicit authorization from the patentee. The above interested parties must provide the patent exploitation license contract when filing a lawsuit.
  3. Heirs or assignees of the patentee must submit a copy of the patent register recording the transfer of rights when filing a lawsuit.
  4. If the patentee is a company, it must submit a copy of the patent register recording the transfer of rights when filing a lawsuit after company division, merger, or renaming.

III. Defendant

The infringing parties (manufacturer, user, offeror for sale, seller, importer, and products resulting from patented methods) are the defendants. The specifics of each type of infringing act will be discussed in subsequent sections.

IV: Litigation Requests

  1. Cease Sales and Destroy Infringing Products:
    • Request the cessation of sales and the destruction of goods infringing the plaintiff’s utility model patent rights.
  2. Compensation for Economic Losses:
    • Determine the compensation amount based on:
      • Plaintiff’s losses (reduction in sales/flow volume * reasonable profit)
      • Defendant’s gains (flow volume * reasonable operating profit/sales profit)
      • Patent licensing fees (reasonable multiple)
      • Court’s discretion (when other methods cannot determine the amount)
  3. Reimbursement of Reasonable Expenses:
    • This includes notarial fees, costs of purchasing infringing products, attorney fees, etc.
  4. Litigation Costs:
    • Request the defendant to bear the costs of the lawsuit.

V: Property Preservation/Pre-litigation Behavior Preservation

(a) Property Preservation

  • The court of the defendant’s location or the location of the property has jurisdiction.
  • Provide a guarantee.
  • Pre-litigation preservation requires providing clues about the property.

(b) Pre-litigation Behavior Preservation

  • Request to stop infringement, stop manufacturing, offering for sale, and selling the involved products.
  • Judicial practice for pre-litigation behavior preservation is stringent, considering:
    1. Whether the applicant’s request has a factual and legal basis.
    2. Urgency of the case and whether not taking immediate measures would cause irreparable harm to the applicant’s legitimate rights.
    3. Comparison of harm caused to the applicant by the defendant continuing or stopping the infringement.
    4. Whether ordering the cessation of the infringement would harm the public interest.
    5. Whether the applicant has provided a guarantee.

VI: Defendant’s Suspension of Litigation

(a) Suspension Situations:

  1. If the court requires the plaintiff to submit an evaluation report on the utility model or design patent, and the plaintiff fails to submit it without justification, the court may decide to suspend the litigation.
  2. If the defendant requests the invalidation of the utility model or design patent during the defense period, the court should suspend the litigation.

(b) Non-suspension Situations:

  1. For infringement disputes of invention patents, the court may choose not to suspend the litigation.
  2. For disputes over the infringement of utility model or design patents that have been upheld by the State Patent Administration, if the defendant requests invalidation during the defense period, the court may choose not to suspend the litigation.
  3. If the defendant requests invalidation of the utility model or design patent during the defense period, but any of the following situations apply, the court may choose not to suspend the litigation:
    1. The utility model or design patent infringement dispute has been upheld by the State Patent Administration.
    2. The search report or patent evaluation report provided by the plaintiff does not find reasons leading to the invalidation of the utility model or design patent.
    3. The evidence provided by the defendant sufficiently proves that the technology they used was already known.
    4. The evidence or reasons provided by the defendant for invalidation are obviously insufficient.
    5. Other circumstances where the court deems it unnecessary to suspend the litigation.

VII: Are Attorney Fees Considered Reasonable Expenses?

(a) Conclusion:

  • Yes, they are considered reasonable expenses (the cost level should be reasonable) and should be borne by the defendant.

(b) Legal Basis:

  1. Article 71 of the “Patent Law of the People’s Republic of China”:
    • The amount of compensation for patent infringement is determined by the actual losses suffered by the right holder due to the infringement or the benefits obtained by the infringer due to the infringement. The amount of compensation should also include the reasonable expenses paid by the right holder to stop the infringement.
  2. Article 16 of the “Provisions of the Supreme People’s Court on Issues Concerning the Application of Law in the Trial of Patent Dispute Cases (2020 Amendment)”:
    • If the right holder claims the reasonable expenses paid to stop the infringement, the court may calculate it separately in addition to the compensation amount determined under Article 65 of the Patent Law.

(c) Practical Cases:

  1. Sichuan Tujiang Crane Co., Ltd. and Chengdu Changyue Machinery Engineering Co., Ltd. v. Utility Model Patent Infringement Dispute Civil Second Instance Civil Judgment [Supreme People’s Court (2021) Supreme Court Zhiminzhong No. 2154, December 8, 2022 Judgment]
  2. Dongguan Xinhuiyuan Machinery Co., Ltd. and Zhejiang Xinwei Machinery Co., Ltd. v. Invention Patent Infringement Dispute Civil Second Instance Civil Judgment [Supreme People’s Court Supreme Court Zhiminzhong No. 673, October 26, 2022 Judgment]

Part Two: Pre-litigation Preparations

I. Status of Patent Rights

  1. Utility Model Patent:
    • If the involved patent is a utility model patent, and the patentee only provides the patent certificate and the annual fee payment receipt for the year, without objection from the other party, the submission of a copy of the patent register can be omitted.
  2. Patent Right Evaluation Report:
    • Apply for a patent right evaluation report from the State Patent Administration.

II. Determining the Scope of Protection of the Involved Patent

  1. Dividing the Claims into Several Technical Features:
    • Dividing the claims into several technical features is a crucial step in determining the scope of patent protection and assessing infringement.
  2. Principles for Interpreting Claims:
    1. Based on the content of the claims, not just the literal meaning.
    2. The description and drawings can be used to interpret the claims.
  3. How to Decompose the Technical Features of Claims?:
    1. Accurately grasp the purpose and achieved technical effects of the invention.
    2. Divide the claims into several technical elements based on the invention’s purpose and technical effects. The divided technical elements should be independent and capable of performing their functions without other content.
    3. On accurately understanding the alleged infringing technical solution, determine each independent technical feature.

III. Determining the Specific Content of the Alleged Infringing Technical Solution

(a) Decomposition of Product Technical Features:

  • For the alleged infringing product, decompose its technical features by comparing the product’s actual items, photos, drawings, and product manuals, combined with the statements from both parties.
    1. Compare the alleged infringing product with the technical features recorded in the claims and divide it into several technical elements.
    2. Distinguish different technical content based on function and use within each technical element.
    3. Identify the basic units that exist independently of other technical content and can achieve relatively independent technical functions and effects as the technical features of the alleged infringing product.

(b) Decomposition of Method Technical Features:

  • For the alleged infringing method, decompose its technical features by comparing the process diagrams, flow charts, circuit diagrams, and manuals, combined with the steps and sequence of the method described by both parties.
    1. Compare the alleged infringing method with the step features and sequence recorded in the claims and divide it into several technical elements.
    2. Distinguish different technical content based on function and use within each technical element.
    3. Identify the basic units that exist independently of other technical content and can achieve relatively independent technical functions and effects as the technical features of the alleged infringing method.
    4. Determine the step sequence of the alleged infringing method based on the internal logical relationship between the decomposed technical features.

IV. Determining Whether the Alleged Infringing Technical Solution Falls Within the Scope of Patent Protection

  • If the alleged infringing technical solution includes technical features identical or equivalent to all the technical features recorded in the claims, it should be deemed to fall within the scope of patent protection. If the technical features of the alleged infringing technical solution lack one or more of the technical features recorded in the claims or differ in one or more technical features, it should be deemed not to fall within the scope of patent protection.

(a) Principle of All Technical Features:

  1. Interpret all the technical features recorded in the claims, including the necessary technical features of independent claims and additional technical features of dependent claims, especially the technical features written into the independent claims.
  2. Interpret the technical features recorded in the preamble and characterizing parts of the independent claims and the referenced and limiting parts of the dependent claims.
  3. The above interpretation has a limiting effect on the claims.

(b) Role of Patent Products in Comparison:

  • Patent products only play an auxiliary role in comparing technical features. The comparison can be aided by the patent products, but the comparison should be based on the technical features recorded in the claims that define the scope of protection.

(c) Determination of Literal Infringement:

  • If the alleged infringing technical solution includes technical features identical to all the technical features recorded in the claims, it constitutes literal infringement.

V. Determination of Infringement Acts

(a) Direct Infringement

According to Article 11, Paragraph 1 of the Patent Law, once a patent right for an invention or utility model is granted, no entity or individual may, without the permission of the patentee, exploit the patent for production or business purposes. This includes manufacturing, using, offering for sale, selling, or importing the patented product, or using the patented method and using, offering for sale, selling, or importing the product directly obtained by the patented method.

  1. Manufacturing
    • Manufacturing refers to producing or forming a product that possesses all the technical features claimed in the patentee’s claims. Assembling components from the same or different sources into an infringing product also constitutes manufacturing.
  2. Using
    • The use of a product claim refers to applying the technical function of the technical features described in the product claim. This use is not limited to the specified use in the description. However, if the claim explicitly specifies the use, the use should be limited to that specified use.
    • The use of a method claim refers to the realization of each step described in the method claim. The result of using the method does not affect the determination of infringement.
    • Using a product that infringes an invention or utility model patent as a component to manufacture another product constitutes use.
  3. Offering for Sale
    • Offering for sale means that the accused infringer expresses the intention to sell the product that infringes the invention or utility model patent through advertisements or other means. This includes making and publishing advertisements, displaying in store windows, exhibiting at trade shows, and participating in bids.
  4. Selling
    • Selling refers to the act of transferring the ownership of a product that infringes an invention or utility model patent through sale, bundled sale, or other means to gain commercial benefits. This includes situations where the ownership of the infringing product has not been actually transferred but a sales contract has been legally established.
    • Selling another product manufactured using the infringing product as a component also constitutes selling.
  5. Importing
    • Importing refers to transferring a product that infringes an invention or utility model patent from abroad to domestic.
  6. Method Patent and Product
    • Once a patent right for a product manufacturing method invention is granted, no entity or individual may, without the permission of the patentee, exploit the patent for production or business purposes by using the patented method, or by using, offering for sale, selling, or importing the product directly obtained by the patented method. The original product obtained using the patented method is considered the product directly obtained by the patented method.
    • Further processing or treatment of the original product to obtain subsequent products constitutes using the product directly obtained by the patented method. Re-processing or treatment of the subsequent product does not constitute using the product directly obtained by the patented method.

(b) Indirect Infringement

  1. Aiding Infringement
    • Knowingly providing materials, equipment, parts, intermediates, etc., specifically for implementing the patented invention, without the patentee’s permission, for production or business purposes, to others who infringe the patent constitutes aiding infringement.
  2. Inducing Infringement
    • Actively inducing others to implement the patented invention for production or business purposes, knowing that the product or method is patented and without the patentee’s permission, constitutes inducing infringement.

Part Three: Defendant’s Defenses

I. Non-infringement Defenses

  1. Lack of Technical Features Defense
    • If the alleged infringing technical solution lacks one or more technical features recorded in the claims that define the scope of protection, it does not constitute infringement.
  2. Non-identical or Non-equivalent Defense
    • If the technical features of the alleged infringing technical solution are neither identical nor equivalent to the corresponding technical features in the claims, it does not constitute infringement.
  3. Non-commercial Purpose Defense
    • If the alleged infringer implements the patent without a commercial purpose, it does not constitute infringement.

II. Non-considered Infringement Defenses

  1. Exhaustion of Rights Defense
    • The use, offering for sale, selling, or importing of a patented product or a product directly obtained by a patented method, after it has been sold by the patentee or with the patentee’s permission, is not considered infringement.
  2. Prior Use Right Defense
    • Manufacturing, using, or making necessary preparations for manufacturing or using the same product or method before the patent application date, and continuing to manufacture or use within the original scope, is not considered infringement.
    • “Necessary preparations for manufacturing or using” include:
      • Completion of major technical drawings or process documents necessary for implementing the invention.
      • Manufacture or purchase of major equipment or raw materials necessary for implementing the invention.
    • “Original scope” includes the production scale before the patent application date and the production scale achievable with existing production equipment or preparations. Transferring or licensing the technology or design to others after the patent application date is not considered within the original scope, except when the technology or design is transferred or inherited along with the original enterprise.
  3. Temporary Transit Defense
    • The use of a patented invention on foreign transportation vehicles temporarily passing through China’s territory, territorial waters, or airspace, according to agreements between the vehicle’s country and China, or international treaties jointly participated in, or based on the principle of reciprocity, for the vehicle’s own needs, is not considered infringement.
  4. Scientific Research and Experimental Use Defense
    • The use of a patented invention exclusively for scientific research and experiments is not considered infringement.
  5. Administrative Approval for Pharmaceuticals and Medical Devices
    • Manufacturing, using, or importing patented pharmaceuticals or medical devices for the purpose of providing information needed for administrative approval, as well as manufacturing or importing patented pharmaceuticals or medical devices specifically for this purpose, is not considered infringement.

III. Prior Art Defense

  • Prior art refers to technology known to the public domestically and internationally before the patent application date. Prior art includes technology disclosed in publications or publicly used or otherwise known to the public before the application date (or priority date if applicable).
  • If the alleged infringer can prove that the technology they implemented belongs to prior art, it does not constitute infringement.
  • When comparing the alleged infringing technical solution with prior art, the technical features recorded in the patent claims should be used as a reference. Extract the corresponding technical features from the alleged infringing technical solution and compare them with the corresponding technical features in a prior art solution. If they are identical or have no substantial differences, the alleged infringing technical solution is considered to belong to prior art.

IV. Legitimate Source Defense

  • Legitimate source refers to acquiring products through legal sales channels, normal commercial transactions, or usual purchase contracts.
  • Legitimate source defense means using, offering for sale, or selling a product for production or business purposes without knowing that it infringes a patent and proving that the product has a legitimate source, exempting the user from compensation liability. If the patentee requests cessation of use, offering for sale, or selling, it should generally be supported. The user, offeror for sale, or seller must provide relevant evidence conforming to trade practices to prove the legitimate source.
  • “Not knowing” means actually not knowing and not possibly knowing.
  • If the user of the alleged infringing product proves that they have paid a reasonable price for the product, they can continue to use, offer for sale, or sell the product. If the price is significantly lower than the transaction price or conditions of the patented product, it can be presumed that the user should have known that the purchased product is not the patented product.
  • “Reasonable price” refers to a price or condition that is roughly equivalent to or slightly lower than the transaction price or conditions of the patented product.
  • If the patentee proves that the user has not paid the price or the price is significantly unreasonable, and the patentee requests cessation of use, it should be supported, except when cessation would harm national or public interests.

Part Four: Relevant Legal Provisions

I. Jurisdiction

  1. “Several Provisions of the Supreme People’s Court on Issues Concerning the Application of Law in the Trial of Patent Dispute Cases (2020 Amendment)”
  • Article 2: Lawsuits arising from patent infringement shall be under the jurisdiction of the people’s court at the place where the infringement act occurs or where the defendant is domiciled.
    • The place of infringement includes: the place where the infringing acts of manufacturing, using, offering for sale, selling, or importing the product that infringes the patent for invention or utility model are performed; the place where the patented method is used, and the place where the product directly obtained by the patented method is used, offered for sale, sold, or imported; the place where the infringing acts of manufacturing, offering for sale, selling, or importing the design patent product are performed; and the place where the acts of counterfeiting another’s patent are performed. The place where the result of the infringement occurs is also included.
  • Article 3: If the plaintiff sues only the manufacturer of the infringing product and not the seller, and the places of manufacture and sale are different, the court at the place of manufacture has jurisdiction. If the manufacturer and seller are sued as joint defendants, the court at the place of sale has jurisdiction. If the seller is a branch of the manufacturer, and the plaintiff sues the manufacturer for the acts of manufacturing and selling at the place of sale, the court at the place of sale has jurisdiction.
  1. “Interpretation of the Civil Procedure Law” (2022 Amendment)
  • Article 2: Patent dispute cases are under the jurisdiction of intellectual property courts, intermediate people’s courts designated by the Supreme People’s Court, and grassroots people’s courts. Maritime and maritime commerce cases are under the jurisdiction of maritime courts.
  1. “Several Provisions of the Supreme People’s Court on the Jurisdiction of First-Instance Intellectual Property Civil and Administrative Cases” (2022 Amendment)
  • Article 1: The first-instance civil and administrative cases concerning disputes over the ownership and infringement of invention patents, utility model patents, new plant varieties, layout designs of integrated circuits, trade secrets, computer software, and monopoly disputes are under the jurisdiction of intellectual property courts, intermediate people’s courts in the locations of provincial, autonomous region, or municipality governments, and intermediate people’s courts designated by the Supreme People’s Court.
    • If the law provides for the jurisdiction of intellectual property courts, such provisions shall apply.
  1. “Notice of the Supreme People’s Court on the Standards for the Jurisdiction of First-Instance Intellectual Property Civil and Administrative Cases by Grassroots People’s Courts” (2022)

II. Provisions Related to Invention/Utility Model Patents

  1. “Patent Law”
  • Article 11: Once a patent right for an invention or utility model is granted, no entity or individual may, without the permission of the patentee, exploit the patent for production or business purposes by manufacturing, using, offering for sale, selling, or importing the patented product, or by using the patented method and using, offering for sale, selling, or importing the product directly obtained by the patented method.
  • Article 22: An invention or utility model for which a patent is granted must possess novelty, inventiveness, and usefulness.
    • Novelty means that the invention or utility model does not form part of the prior art, and no entity or individual has filed a patent application for the same invention or utility model with the patent administration department under the State Council before the application date and disclosed it in patent application documents or patent documents published after the application date.
    • Inventiveness means that the invention has prominent substantive features and represents a significant advancement compared to prior art, and the utility model has substantive features and represents an advancement.
    • Usefulness means that the invention or utility model can be manufactured or used and can produce positive effects.
    • Prior art refers to technology known to the public domestically and internationally before the application date.
  • Article 26: To apply for a patent for an invention or utility model, a request, description, abstract, and claims must be submitted.
    • The request should state the title of the invention or utility model, the name of the inventor, the name and address of the applicant, and other relevant matters.
    • The description should provide a clear and complete explanation of the invention or utility model so that a person skilled in the relevant technical field can carry it out. If necessary, drawings should be included. The abstract should briefly explain the main technical points of the invention or utility model.
    • The claims should be based on the description and clearly and concisely define the scope of the patent protection sought.
    • For inventions or creations relying on genetic resources, the applicant should state the direct and original source of the genetic resources in the patent application documents. If the original source cannot be stated, reasons should be provided.
  • Article 42: The duration of the patent right for an invention is 20 years, for a utility model is 10 years, and for a design is 15 years, all counted from the application date.
  • Article 50: A patentee may voluntarily declare in writing to the patent administration department under the State Council that they are willing to license any entity or individual to exploit their patent and specify the method and standard for paying the licensing fee. The patent administration department under the State Council shall announce this. The patentee may withdraw the open license declaration in writing, which shall also be announced by the patent administration department under the State Council. The withdrawal does not affect the validity of the previously granted open licenses.
  • Article 53: Under any of the following circumstances, the patent administration department under the State Council may grant a compulsory license to exploit an invention patent or utility model patent based on an application by an entity or individual with the capability to implement the invention or utility model:
    • (1) If the patentee, after three years from the date of the grant of the patent right and four years from the application date, has not exploited or has insufficiently exploited the patent without a legitimate reason;
    • (2) If the patentee’s exercise of the patent right is determined to be monopolistic by law, in order to eliminate or reduce the adverse effects on competition.
  • Article 64: The protection scope of an invention or utility model patent right is determined by the content of its claims, and the description and drawings may be used to interpret the claims.
  • Article 66: In patent infringement disputes involving new product manufacturing methods, the entity or individual manufacturing the same product should provide proof that their product manufacturing method is different from the patented method. In patent infringement disputes involving utility model patents or design patents, the people’s court or the patent administration department may require the patentee or interested party to provide a patent right evaluation report issued by the patent administration department under the State Council as evidence for handling the patent infringement dispute. The patentee, interested party, or alleged infringer may also voluntarily provide a patent right evaluation report.

III. Provisions on Patent Infringement Litigation

“Several Provisions of the Supreme People’s Court on Issues Concerning the Application of Law in the Trial of Patent Dispute Cases”

  • Article 2: Lawsuits arising from patent infringement shall be under the jurisdiction of the people’s court at the place where the infringement act occurs or where the defendant is domiciled.
    • The place of infringement includes the place where the infringing acts of manufacturing, using, offering for sale, selling, or importing the product that infringes the invention or utility model patent are performed; the place where the patented method is used, and the place where the product directly obtained by the patented method is used, offered for sale, sold, or imported; the place where the infringing acts of manufacturing, offering for sale, selling, or importing the design patent product are performed; and the place where the acts of counterfeiting another’s patent are performed. The place where the result of the infringement occurs is also included.
  • Article 3: If the plaintiff sues only the manufacturer of the infringing product and not the seller, and the places of manufacture and sale are different, the court at the place of manufacture has jurisdiction. If the manufacturer and seller are sued as joint defendants, the court at the place of sale has jurisdiction. If the seller is a branch of the manufacturer, and the plaintiff sues the manufacturer for the acts of manufacturing and selling at the place of sale, the court at the place of sale has jurisdiction.
  • Article 4: For infringement lawsuits filed for utility model patents applied for before October 1, 2009, the plaintiff may submit a search report issued by the patent administration department under the State Council. For infringement lawsuits filed for utility model or design patents applied for after October 1, 2009, the plaintiff may submit a patent right evaluation report issued by the patent administration department under the State Council. Depending on the needs of the case, the people’s court may require the plaintiff to submit a search report or a patent right evaluation report. If the plaintiff fails to submit it without a legitimate reason, the court may decide to suspend the litigation or order the plaintiff to bear the possible adverse consequences.
    • In disputes involving utility model or design patents, the defendant must request the invalidation of the plaintiff’s patent within the defense period to request suspension of the litigation.
  • Article 5: In disputes involving utility model or design patents, if the defendant requests the invalidation of the patent within the defense period, the court should suspend the litigation, except in the following circumstances where the court may choose not to suspend the litigation:
    • (1) The search report or patent right evaluation report provided by the plaintiff does not find reasons leading to the invalidation of the utility model or design patent.
    • (2) The evidence provided by the defendant is sufficient to prove that the technology used is well-known.
    • (3) The evidence or reasons provided by the defendant for invalidation are obviously insufficient.
    • (4) Other circumstances where the court deems it unnecessary to suspend the litigation.
  • Article 13: The “protection scope of the invention or utility model patent right is determined by the content of its claims, and the description and drawings may be used to interpret the claims” as stated in the first paragraph of Article 59 of the Patent Law, means that the protection scope of the patent right should be determined by all the technical features recorded in the claims, including features equivalent to those technical features.
    • Equivalent features refer to features that, although not identical to the recorded technical features, achieve substantially the same function and produce substantially the same effect by using substantially the same means, and can be conceived by those skilled in the art without creative labor at the time the alleged infringement occurred.
  • Article 14: The actual losses suffered by the right holder due to the infringement, as stipulated in Article 65 of the Patent Law, can be calculated based on the reduction in sales volume of the patented product caused by the infringement multiplied by the reasonable profit per unit of the patented product. If the total reduction in sales volume of the right holder is difficult to determine, the total sales volume of the infringing product in the market multiplied by the reasonable profit per unit of the patented product can be regarded as the actual losses suffered by the right holder due to the infringement.
    • The benefits obtained by the infringer from the infringement, as stipulated in Article 65 of the Patent Law, can be calculated based on the total sales volume of the infringing product in the market multiplied by the reasonable profit per unit of the infringing product. The benefits obtained by the infringer from the infringement are generally calculated based on the infringer’s operating profit. For infringers who exclusively engage in infringement, the calculation can be based on sales profit.
  • Article 15: If the right holder’s losses or the benefits obtained by the infringer are difficult to determine, and there are patent licensing fees for reference, the people’s court can reasonably determine the compensation amount by referring to the type of patent, the nature and circumstances of the infringement, and the nature, scope, and duration of the patent license. If there are no patent licensing fees for reference or the licensing fees are obviously unreasonable, the people’s court can determine the compensation amount according to the type of patent, the nature and circumstances of the infringement, etc., in accordance with the provisions of the second paragraph of Article 65 of the Patent Law.
  • Article 16: If the right holder claims reasonable expenses paid to stop the infringement, the people’s court can calculate it separately from the compensation amount determined under Article 65 of the Patent Law.
  • Article 17: The statute of limitations for patent infringement lawsuits is three years, calculated from the date when the right holder or interested party knew or should have known about the infringement and the obligor. If the right holder files a lawsuit after more than three years, but the infringement is still ongoing at the time of filing, the people’s court should order the defendant to stop the infringement if the patent right is still valid. The amount of compensation for infringement damages should be calculated from three years prior to the date when the right holder filed the lawsuit with the people’s court.