China’s Supreme People’s Court Releases Summary of IP Judgements for 2023

On February 23, 2024 China’s Supreme People’s Court (SPC) released the Supreme People’s Court Summary of Intellectual Property Court Judgments (2023) (最高人民法院知识产权法庭裁判要旨摘要(2023)). Per the SPC, the summary was formed “to highlight the judicial concepts, trial ideas, and adjudicative methods of the Intellectual Property Tribunal of the Supreme People’s Court in technical intellectual property rights and monopoly cases.” The Tribunal selected 96 cases from the 4,562 cases concluded in 2023, and summarized 104 key points as follows.

I. Patent authorization and confirmation cases

　　1. Identification of the subject matter of patent protection

　　[Case No.] （2022）最高法知行终375号

　　[Judge Summary] When judging whether a solution defined by a claim constitutes an object of protection under the patent law, it should generally be based on the understanding of a person skilled in the art after reading the claims and description, and whether the solution adopts specific technical means and aims to solve a specific technical problem, and achieves the corresponding technical effects; as to whether the solution can actually solve the technical problems claimed in the specification and achieve the corresponding technical effects, it is usually a matter of review that the specification discloses sufficient information, rather than a matter of review of the protected object.

　　2. Review of “further qualification” modifications in patent invalidation procedures

　　[Case No.] （2021）最高法知行终556、581、738号

　　[Judgment Summary] In the patent invalidation procedure, the examination of whether the modification method of a certain claim belongs to “further limitation” shall be based solely on whether the amended claim completely contains all the technical features of the original claim, and whether the amended claim has added technical features compared to the original claim, and whether the added technical features are all recorded in other claims shall prevail.

　　3. Responsiveness requirements for claim modification during patent invalidation procedures

　　[Case No.] （2021）最高法知行终556、581、738号

　　[Judgment Summary] In the patent invalidation procedure, the “further limitation” amendment of the claims should generally be limited to responding to the reasons for invalidation.

　　4. Should it be acceptable to only modify the dependent claims during the patent invalidation procedure?

　　[Case No.] （2021）最高法知行终548号

　　[Judgment Summary] During the patent invalidation procedure, if a party claims that the patentee only modifies the dependent claims but does not modify the independent claims in a way that should not be accepted, the People’s Court will not support it.

　　5. Determination of a negative claim amendment

　　[Case No.] （2021）最高法知行终44号

　　[Judgment Summary] A negative claim amendment generally refers to the introduction of negative technical features when amending a claim, excluding specific objects from the scope of protection of the original claim, thereby limiting the scope of protection of the original patent claim. It usually only applies to such a specific circumstance as a patent application loses novelty due to partially overlapping conflicting applications, or loses novelty due to an accidental preemption by the prior art, or excludes for non-technical reasons the subject matter not protected by the Patent Law.

　　Negative limitation amendments also need to comply with the provisions of Article 33 of the Patent Law. When making a specific judgment, the content disclosed in the original claims and description, the content that has been abandoned, the content retained after the negative limitation, and the relationship between the three, etc. should be comprehensively considered; if a person skilled in the art can determine that the content retained after the modification is in the original claim, has been disclosed directly or implicitly in the book or description, then the amendment complies with the provisions of Article 33 of the Patent Law.

　　6. Judgment on support in a priority document

　　[Case No.] (2021) （2021）最高法知行终344、371号

　　[Judge Summary] To determine whether the right of priority is established, it should be examined whether the content defined in the claims of the later application can be directly and undoubtedly derived from the patent document of the earlier application. Certain contents defined in the claims, such as drug administration characteristics, may not be considered in the judgment of novelty and inventive step because they do not have a substantial limiting effect, but they should be considered in the review of support in the priority document.

　　7. Acceptance of supplementary experimental data

　　[Case No.] (2019) （2019）最高法知行终33号

　　[Judgment Summary] If a drug patent applicant or right holder submits supplementary experimental data after the application date and claims that the data can prove that the patent application or patent is inventive and that the patent claims can be supported by the description, the people’s court shall review it. Where the original patent application document explicitly records or implicitly discloses the facts to be proved which are to be directly proved by the supplementary experimental data, and the applicant does not try to overcome the inherent defects of the original patent application document through the supplementary experimental data, the supplementary experimental data may be accepted, and whether the facts to be proved can be further examined.

　　8. Review of “facts to be proven” when judging whether supplementary experimental data should be accepted

　　[Case No.] （2022）最高法知行终15号

　　[Judgment Summary] The facts to be proven that are to be directly proven through supplementary experimental data should be explicitly recorded or disclosed implicitly in the original patent application documents, that is, the facts to be proven are required to be clear in the original application documents or can be directly and without doubt derived by those skilled in the field. If the fact to be proven itself is not explicitly recorded or disclosed implicitly in the original patent application document, and it is necessary to further confirm the “fact to be proven” itself through supplementary experimental data, the supplementary experimental data shall not be accepted.

　　9. Determination of sufficient disclosure in the description of claims defined by multi-variable equations

　　[Case No.] （2021）最高法知行终1071号

　　[Judgment Summary] Where the specification does not clearly define the numerical value selection of each variable, the relationship between each variable, and the relationship between the numerical value selection and the technical effect for a claim limited by equations containing two or more variables, so that after reading the specification and the specification, a person skilled in the art still needs to put in creative or excessive labor to solve the technical problem and achieve the technical effect, the party concerned may claim that there is insufficient disclosure, and the people’s court may support such a claim.

　　10. A patent for traditional Chinese medicine composition that limits the content of components by numerical ranges shall be fully disclosed

　　[Case No.] （2021）最高法知行终593号

　　[Judgement Summary] Where the specification of a patent for a traditional Chinese medicine composition with component content limited by a numerical value range proves the technical effect thereof based on clinical experimental data, if an skillful person can reasonably expect that the increase or decrease of the component content will not change the basic compatibility relationship and efficacy of the technical solution adopted in the clinical experimental data, it may generally be determined that the solution is fully disclosed.

　　11. Determination of whether the patent claims for protein inventions defined by a specific amino acid sequence can be supported by the description

　　[Case No.]（2021）最高法知行终448号

　　[Judgment Summary] With regard to a claim for a protein invention patent that defines a specific amino acid sequence, if the manner of implementation in the specification is completed with a glycosylated protein, the examination of whether the experimental data obtained under such circumstances can support the protein with the amino acid sequence as defined in the claim shall be comprehensively determined in light of the characteristics of the protein invention and the role glycosylation plays in the technical solution. For the invention patent of a protein which only defines the amino acid sequence, the technical effect of the invention is not allowed to be proved by the experimental data obtained by the glycosylated protein which is expressed in different host cells at all, which does not conform to the natural law of obtaining the protein by gene editing and does not conform to the characteristic that the patent claims of the invention usually only limit the amino acid sequence.

　　12. The impact of customized terms on whether the scope of protection of claims is clear

　　[Case No.]（2022）最高法知行终755号

　　[Judgment Summary] The use of customized terms in claims should generally be restricted. It should only be allowed when it is inappropriate to express it in words, or when using a customized term is clearer and more concise than using words, and the specific meaning of such model must be uniquely correct and reasonable from the claims and specifications so as to ensure that the scope of protection for the claim so defined is sufficiently clear.

　　13. The impact of obvious errors in claim drafting on whether the scope of protection is clear

　　[Case No.] （2022）最高法知行终858号

　　[Judgment Summary] If a person skilled in the art can determine after reading the claims and description that there are obvious errors in the drafting of the claims, and can determine the only correct answer, in principle, the scope of protection of the claims should be deemed to be clear. If a party claims that the scope of protection of a claim is unclear solely because of the obvious error, the people’s court will not support it.

　　14. Examination on the Time for Publication of Pictures and Videos on Internet Pages

　　[Case No.] （2022）最高法知行终469号

　　[Judgment Summary] In the patent authorization and invalidation process, the examination and judgment of the time for publication of pictures and videos on Internet webpages shall take into full consideration such factors as the reputational standing of websites, operation and management modes and technical means, and focus on the examination of the mechanisms for editing and publishing pictures and videos on webpages. A user may edit and modify the release time on his own, or the release time remains unchanged after the change of the content or disclosure status, among others, and such time cannot generally be taken as the release time of the relevant information without any other evidence to support it.

　　15. Novelty judgment of known chemical product use invention patent

　　[Case No.](2022）最高法知行终788号

　　[Judgment Summary] Where the use of a new chemical product as defined in a known chemical product use invention patent is merely described from different angles or verified by different methods the technical effects of the chemical product already determined by technicians in the art prior to the application date, the so-called new use does not constitute a distinctive technical feature of the patent from the prior art.

　　16. Judgment of novelty and inventiveness of utility model patents including method limitations

　　[Case No.] （2021）最高法知行终422号

　　[Judgment Summary] For a utility model patent claim that includes both product shape and structure and product manufacturing method, when judging its novelty and inventive step, if the method limitations enable the product to have a certain specific shape or structure, then the method limitations have a limiting effect on the scope of protection of utility model patent rights. When judging novelty and inventiveness, the specific shape and structure caused by the method should be compared with the shape and structure of the prior art, rather than comparing the method itself with the methods of the prior art.

　　17. Determination of similar and related technical fields in the judgment of inventiveness of utility model patents

　　[Case No.] （2022）最高法知行终41号

　　[Judgment Summary] When determining the technical field of a patent for utility model, the technical solution as defined in the claims shall be taken as the object, the title shall be taken as the starting point and the functions and uses of the patent technical solution shall be comprehensively considered. The technical field with similar functions and uses as the patent technical solution constitutes a similar technical field in the patent technical field; the technical field applied by the distinguishing technical characteristics of the patent technical solution and the closest technology constitutes a related technical field in the patent technical field.

　　18. Whether the purpose-limited title actually limits the scope of protection of the utility model patent right?

　　[Case No.] （2021）最高法知行终847号

　　[Judgment Summary] Whether a title is actually limiting the scope of protection of a claim shall be comprehensively determined in light of the type of the patent for utility model, by considering the relationship between the title and the technical solution as defined in the claim, whether the title has a substantial impact on the shape or structure of the object itself under protection, etc.

　　19. Impact of the coordination and cooperation relationship between distinguishing technical features and other technical features on improving the determination of motivation [to modify]

　　[Case No.] （2021）最高法知行终1226号

　　[Judgment Summary] In a determination of inventiveness, if there is a coordination and cooperation relationship between the claimed technical solution and the distinctive technical features of the closest prior art and other technical features, the technical effects generated by the distinctive technical features and the technical problems solved by them are premised on the technical effects of the other technical features, and the corresponding technical features of the closest prior art cannot produce the same technical effects based on the purpose of the invention and the inventive concept, then the skilled person in the art usually does not have an incentive to improve the prior art, and the claimed technical solution is not obvious to the skilled person in the art.

　　20. Technical inspiration for the substitution of chemical ingredients and traditional Chinese medicine ingredients in the invention of pharmaceutical compositions

　　[Case No.]（2021）最高法知行终593号

　　[Judge Summary] When judging whether there is technical inspiration for mutual substitution between chemical ingredients and traditional Chinese medicine ingredients in pharmaceutical composition inventions, it is usually necessary to consider not only the inherent role of the drug ingredients, but also the relationship between the chemical drug ingredients and other drug ingredients in the pharmaceutical composition.

　　21. Application of bioisosteric principle in determination of inventiveness

　　[Case No.] （2021）最高法知行终846号

　　[Judgment Summary] To determine whether the substitution between two groups in a pharmaceutical compound is common knowledge in the field, the bioisosteric principle can usually be considered. However, for non-classical bioisosteres, whether those skilled in the art will perform specific group substitutions usually requires existing technology that can prove the structure-activity relationship of such drugs as evidence, and the application of bioisosteric principle cannot be expanded arbitrarily.

　　22. Judgment of inventiveness in acupuncture patents

　　[Case No.] （2022）最高法知行终132号

　　[Judgment Summary] In the evaluation of inventiveness involving acupuncture and other traditional Chinese medicine patents, the cognitive characteristics of those skilled in the field and the treatment rules of traditional Chinese medicine should be combined to identify and distinguish technical features and prudently determine whether the technical solution is obvious, and, in particular, simple application of evaluation methods aiming at modern medical technologies shall be avoided and the degree of innovation of technical plans of traditional Chinese medicine shall not be underestimated.

　　23. Determination of publication time of existing designs

　　[Case No.] （2022）最高法知行终393号

　　[Judgment Summary] In the absence of other evidence to support the claim, the “date of manufacture” as stated in the nameplate on the existing design evidence cannot usually be directly determined as the “public date of sale” or “public date of use.”

　　24. Determination of whether the design has obvious differences

　　[Case No.] （2022）最高法知行终567号

　　[Judgment Summary] If a patented design is merely the design features of different parts of the same comparison design on the same type of products and is merged or replaced by using the customary design methods such as centering or symmetry, the patented design and the comparison design may generally be considered to have only subtle differences and generally have no unique visual effects.

　　25. Identification of inspiration to combine from existing design feature combinations

　　[Case No.] （2022）最高法知行终821号

　　[Judgment Summary] If the combination of existing design features to form a patent design needs to undergo relatively large changes and adjustments such as linkage and correspondence and transition and coordination to form a unity with coordinated appearance and function, generally the process of combination may be deemed to be beyond the knowledge level and cognitive ability of the general consumer. It is difficult to contemplate the combination of such design features. At this time, it may be determined that the existing design does not have such inspiration to combine.

　　26. Determination of “prior legal rights” in Article 23, Paragraph 3 of the Patent Law

　　[Case No.]（2022）最高法知行终821号

　　[Judgment Summary] In an administrative dispute over design patent authorization and determination, the rights or interests that have been obtained prior to the date of application for a patent and still legally exist when a request for invalidation is filed constitute “prior lawful rights” under Paragraph 3 of Article 23 of the Patent Law.

　　27. Eligibility of the parties to a patent ownership dispute as plaintiffs in an administrative dispute over patent invalidation

　　[Case No.] （2022）最高法知行终836号

　　[Judgment Summary]Where a party which claims rights in a patent ownership dispute case files an administrative lawsuit for the determination of patent right after the China National Intellectual Property Administration has declared the patent claims null and void in whole or in part, it may be determined that the plaintiff constitutes a potential interested party for the review decision on the alleged request for the declaration of invalidation and it is inappropriate to directly rule and dismiss the lawsuit on the ground that the plaintiff is unqualified. Where the party concerned in an administrative lawsuit for the determination of patent right depends on the outcome of the trial of the patent ownership dispute case and the patent ownership dispute has not been substantially settled, the trial of the administrative lawsuit for the determination of patent right may be suspended.

　　28. Determination that the invalidation review procedure violates the hearing principle

　　[Case No.] （2021）最高法知行终888号

　　[Judgment Summary] The invalidation requester only claimed that the patent did not possess novelty and therefore did not possess inventive step, and did not propose other specific reasons why the patent did not possess inventiveness. The China National Intellectual Property Administration did not inform the patentee of other reasons why the patent did not possess inventiveness. If the China National Intellectual Property Administration directly determines that the patent is novel but does not possess inventiveness  without giving the patentee an opportunity to state its opinions on the specific reasons, and the patentee claims that the invalidation review process violates the hearing principle and constitutes a violation of statutory procedures, the People’s Court shall support the patentee.

　　29. Legal consequences of patent agencies and patent attorneys borrowing the name of others to request declaration of patent invalidity (straw man)

　　[Case No.]（2022）最高法知行终716号

　　[Judgment Summary] Where a patent agency or a patent agent requests invalidation of a patent on the basis of the name of another person, it constitutes substantial violation of Article 18 of the Patent Agency Regulation regarding the provision that a patent agency or patent agent shall not request invalidation of a patent in its own name, the people’s court may transfer the suspected clue of the violation to the relevant authority for handling in accordance with the law.

II. Patent ownership and infringement cases

　　30. The impact of restrictive statements on the protection scope of other claims that refer to the restricted claim

　　[Case No.]（2022）最高法知民终681号

　　[Judgment Summary] When a patentee makes a restrictive interpretation of a claim during the invalidation request review process, even if the claim is ultimately declared invalid, the relevant restrictive interpretation will still apply to other claims that reference the claim.

　　31. Identification and impact of induced evidence collection

　　[Case No.] （2022）最高法知民终2586号

　　[Judgment Summary] Where a patent right holder directly provides to others drawings containing the complete technical scheme of the patent in question and requires them to produce according to the drawings without declaring that the patent is involved, it constitutes evidence to induce others to infringe upon the patent right, but the people’s court shall not determine the infringing facts based only on such evidence.

　　32. Identification of the person responsible for infringement when the combined use of products falls within the scope of patent protection 

　　[Case No.] （2022）最高法知民终2586号

　　[Judgment Summary] Where different products manufactured by the same subject can be combined for use and such combined use only falls within the scope of patent protection, the determination of the tort liability shall be made in accordance with the technical solution actually formed at the time of use and with special consideration given to whether the formation of such technical solution is determined by the consumer or the manufacturer. If the relevant products could be used separately originally, but consumers combine them for use according to their own needs, it may generally be determined that the technical plan of the combined products is determined by consumers, and the manufacturer shall not be held as the person liable for infringement. If the relevant products can not be used separately but must be matched with each other, and consumers combine the products for use according to the specific structure, functions, instructions for use, etc. of the products, it can generally be determined that the technical scheme of the products after combination is determined by the manufacturer, and the manufacturer shall be the person liable for infringement.

　　33. Identification of the manufacturer of the accused infringing product

　　[Case No.] （2021）最高法知民终2301号

　　[Judgment Summary] The product manufacturer in the sense of patent law does not only refer to the implementer of specific manufacturing activities. Organizers who organize production resources, coordinate upstream and downstream production links, and determine product technical solutions may also constitute the manufacturer of the accused infringing product.

　　34. Determination of display content and manufacturing behavior on e-commerce platforms

　　[Case No.]（2022）最高法知民终2021号

　　[Judgment Summary] The people’s court may comprehensively consider the product model, place of origin, quantity, and “manufacturer direct sales” and other descriptions in the product sales link displayed by the accused infringer on the e-commerce platform, and reasonably presume that the accused infringing product is manufactured by it .

　　35. Identification of equivalence of numerically limited technical characteristics

　　[Case No.] （2021）最高法知民终985号

　　[Judgment Summary] For technical features in invention or utility model patents that are limited by numerical values ​​or continuously changing numerical ranges, the application of the principle of equivalents should not be absolutely excluded, but should be strictly limited. Where the different numerical values or ranges of numerical values use substantially the same technical means to achieve substantially the same functions and achieve substantially the same effects, and technicians in the art can relate to them without any creative labor, and at the same time, by taking into comprehensive consideration the technical field, type of invention, modification of claims and other relevant factors, if it is determined that the relevant technical features are equivalent to neither violate the public’s reasonable expectation of the scope of protection of claims nor unfairly protect patent rights, it may be determined that such technical features are equivalent.

　　36. Consideration of distinctive design features of patents in the judgment of approximation of design

　　[Case No.]（2021）最高法知行终728号

　　[Judgment Summary] When making a similarity judgment between a patented design and an alleged infringing design, the design features of the patented design that are different from existing designs should be determined, and such features should be regarded as the part that has a greater impact on the overall visual effect of the design. The parties may provide evidence or explain the above-mentioned distinguishing design features; if the parties provide insufficient evidence or explanations, the people’s court may determine the distinguishing design features based on the general consumer’s knowledge level and cognitive ability.

　　37. Handling of non-infringement defenses claimed by users and sellers based on the manufacturer’s right of prior use

　　[Case No.] （2022）最高法知行终839号

　　[Judgment Summary] Where, after the date of patent application, the user or seller uses, promises to sell, or sells the products made by the holder of the right of prior use in accordance with the law, claiming that the right of prior use of the manufacturer does not infringe upon the patent right, the people’s court shall support such a claim.

　　38. Determination of legal source defense in leasing relationship

　　[Case Number] （2022）最高法知民终2869号

　　[Judgment Summary]Where the alleged infringer is able to provide evidence to prove that the infringing product was leased by it, and the lease term has not expired, and it has paid a reasonable rent and does not know or should not know that the product is an infringing product, the people’s court may determine that its defense of lawful source is valid.

　　39. Determination of liability for cessation of infringement when patent rights are transferred in patent infringement litigation proceedings

　　[Case No.]（2022）最高法知民终1923号

　　[Judgment Summary] During the trial of a patent infringement dispute case, if the original patentee transfers the patent rights involved in the case, his qualifications as a litigation subject will not be affected. If the people’s court determines that the alleged infringement constitutes infringement, it shall support the original patentee’s request to stop the infringement in accordance with the law, unless the alleged infringer can prove that it has obtained permission from the current patentee.

　　40. Calculation of damages for patent infringement of non-publicly sold products

　　[Case No.]（2022）最高法知民终1584号

　　[Judgment Summary] The goal of damages for patent infringement is to try to restore the patentee to the state it would have been in if the infringement had not occurred, so as to maintain the motivation for innovation. For products that are not sold publicly, since infringement damages cannot be directly calculated based on their market sales, the products that are related to the implementation of patented technical solutions and have the most direct link in obtaining market benefits can be used as a reference for calculating infringement damages based on the specific case circumstances. 

　　41. The impact of dishonest litigation behavior on determining reasonable expenses for rights protection

　　[Case No.] （2021）最高法知民终2480号

　　[Judgment Summary] If the accused infringer makes false statements or other dishonest behavior during the litigation process, this can be considered by the people’s court when determining the amount of the right holder’s reasonable expenditures for protecting his rights.

　　42. Identification and handling of abuse of intellectual property rights

　　[Case No.] （2023）最高法知民终235号

　　[Judgment Summary] The principle of good faith shall be followed in the exercise of intellectual property rights, and the lawful rights and interests of others shall not be damaged. When an intellectual property right is infringed upon, the right holder may exercise the right to sue according to law, but the right to sue shall also be exercised under the principle of good faith, in good faith, and in a prudent manner. Where an IP owner intentionally abuses intellectual property rights by such means as “inducing infringement,” “trapping to obtain evidence,” “misleading settlement,” and “deliberately suing twice for the same matter,” the people’s court shall take effective measures to regulate the abuse of intellectual property rights according to the law, and may, based on the circumstances and according to the Official Reply of the Supreme People’s Court on Issues concerning Defendants’ Claim for Compensation for Reasonable Expenses on the Ground of Plaintiff’s Abuse of Rights in Intellectual Property Right Infringement Lawsuits, order the IP owner to bear the litigation reasonable expenses of the opposing party.

　　43. Determination of the infringing product being warned when the specific product is not specified in the infringement warning

　　[Case No.] （2022）最高法知民终1744号

　　[Judgment Summary] Where the patent right holder’s infringement warning fails to specify the specific products to which it refers, the people’s court may, within the scope of products that the warned party has been negatively affected by the warning and in light of the litigation claims of the warned party, reasonably determine the specific product scope that shall be tried in a case on dispute over non-infringement upon patent right.

　　44. Determination of the correlation between the patented technical solution and the inventor’s own work or assigned work tasks in the original unit

　　[Case No.] （2022）最高法知民终2436号

　　[Judgment Summary] In a dispute over the ownership of a patent application right or a pa