The Decision of the Supreme People’s Court on Revising the Several Provisions of the Supreme People’s Court on the Application of Law in the Hearing of Cases of Patent Disputes 2015 took effect on 1 February 2015. The new decision modifies the Several Provisions of the Supreme People’s Court on the Application of Law in the Hearing of Cases of Patent Disputes 2001 (“2001 Patent Interpretation”) to conform to the revised Patent Law of the People’s Republic of China 2008 (“2008 Patent Law”) and expands jurisdiction over design patent disputes to include the place where the products are “offered for sale”. Under the 2008 Patent Law, the scope of protection of an invention patent or utility model patent is subject to its claims of rights, which under the 2001 Patent Interpretation was determined by the essential technical features recorded in the claims of rights, including the features equivalent to such technical features. The new decision expands this “doctrine of equivalents” to include all technical features recorded in the claims of rights, and adds a time element to such determination, (that is, the time when the alleged infringement occurred). The new decision also adopts the 2008 Patent Law’s cascade mechanism for determining damages and permits a plaintiff to exclude from the statutory cap on damages those expenses reasonably incurred in stopping an infringement. Finally, in an infringement suit involving a utility model or design patent, while a patent evaluation report may not be necessary for a case to be accepted by a court, the court now has discretion to suspend the proceeding or impose “adverse consequences” if it requests submission of the report and the plaintiff refuses without justification.
Patent Evaluation Reports Increasingly Important
The new decision “mainly serves to codify current judicial practice” says Chris Smith of Baker McKenzie, who sees the main impact as “the greater importance of patent evaluation reports going forward”. General Counsel should ensure that they are ready to provide an adequate patent evaluation report for important utility models or design patents. Otherwise, although the decision is long overdue, it does not raise new issues.