On 11 September 2020, the Supreme Court issued the "Provisions on Several Issues concerning the Application of Law in the Trial of Administrative Cases Concerning Granting and Confirmation of Patent Rights (I)"(Provisions), which came into effect on 12 September 2020.

There are 32 articles in the Provisions, which clarify the interpretation of claims, the basis of the specification, the full disclosure of the specification, inventive step, and the standard for patentability of design, and provide for relevant evidence and procedural issues.

The following is the introduction of several main articles.

Interpretation of claims

Article 2 The court shall define the terms of the claim based on the ordinary meanings understood by those skilled in the art after reading the claims, specification and drawings. If the terms of the claims are clearly defined or illustrated in the specification and drawings, they shall be construed thereupon accordingly.

Where the terms cannot be defined in accordance with the provisions of the preceding paragraph, the terms can be defined in conjunction with technical dictionaries, technical manuals, reference books, textbooks, national or industry technical standards, etc., commonly used by those skilled in the art.

Article 3

When defining the terms of the claims in administrative cases of patent right confirmation, the court may refer to relevant statements of the patentee that has been adopted by the effective judgment of the civil case of patent infringement..

According to article 2, the interpretation of claims should follow the principle of "internal evidence priority". First of all, the terms of the claims shall be defined in the common sense understood by those skilled in the art after reading the claims, the specification and the drawings. Secondly, if the terms of the claim are clearly defined or explained in the specification and the drawings, the definition shall be followed. Finally, if none of the above methods is effective, the claims can be defined with the help of "external evidence", that is, in combination with technical dictionaries, technical manuals, reference books, textbooks, national or industrial technical standards commonly used by those skilled in the art.

The purpose of Article 3 is to guide and urge the patentee to state cautiously and honestly in the patent confirmation procedure and the infringement litigation procedure, and to explain the meaning of the terms in the claim, so as to avoid the patentee from making different statements in different procedures and benefiting from both sides.

It should be noted that the claims and the specification are the fundamental basis for interpreting the terms of claims, so the statement made by the patentee in the patent infringement proceeding is only for reference.

2. Forge and fabricate technical contents in the specification

Article 5 Where the parties concerned have evidence to prove that the patent applicant or patentee, in violation of the principle of good faith, forges or fabricates specific implementations, technical effects, data, charts and other technical contents in the specification and drawings, and thereby claim that the relevant claims do not conform to the provisions of the Patent Law, the court shall support it.

The parties concerned shall abide by the principle of good faith in the administrative and judicial procedures of patent granting and confirmation. In the trial practice of administrative cases of patent granting and confirmation, to a certain extent, patent applicants and patentees violate the principle of good faith and forge the technical contents in the specification and drawings. This kind of situation is more prominent in the field of chemistry, medicine, materials and other technical fields that need experimental data verification, which seriously disrupts the normal order of patent application, examination and case trial. Therefore, if it is under the circumstances specified in Article 5, the court may, according to the request of the parties, determine that the relevant claims do not comply with the relevant provisions of the patent law, and may accordingly determine the relevant claims shall be declared invalid or shall be rejected.

3. Design space

Article 14

When the court determines the knowledge level and cognitive ability of the general consumer on a design, it shall generally consider the design space of the design patent product on the date of filing. If the design space is large, the court may determine that the general consumer is usually not easy to notice the small differences between different designs; if the design space is small, the court may determine that the general consumer is usually more likely to notice the smaller differences between different designs.

For the determination of the design space mentioned in the preceding paragraph, the court may comprehensively consider the following factors:

(1) Function and use of the product;

(2) Overall status of the prior design;

(3) Customary design;

(4) Compulsory provisions of laws and administrative regulations;

(5) National and industrial technical standards;

(6) Other factors that need to be considered.

The above provisions make it more operable to determine the design space size of design products. In addition to the design density usually considered, it further clarifies that the size determination shall also consider the factors like whether the design must be adopted in order to realize the specific function, whether the limit of design is determined by specific purposes, whether the design is customary design of the product, and whether the design is limited by standards of similar products. Source: https://www.chinacourt.org/article/detail/2020/09/id/5453569.shtml https://www.chinacourt.org/article/detail/2020/09/id/5453571.shtml