IP Newsletter Issue 16 (2013-11-08)
Beijing High Court issued Guidelines for Determining Patent Infringement

    The Beijing High Court issued new Guidelines for Determining Patent Infringement (hereinafter, the “Guidelines”) on September 4, 2013, replacing the Opinions on Several Issues Related to the Determination of Patent the court promulgated in 2001, to reflect precedents and best practices accumulated by the Beijing courts.  The Guidelines provide comprehensive and practical guidance on such topics as claim construction, infringement, and defenses.
    Notable articles in the Guidelines relate to: 1) doctrine of equivalents; 2) means-plus-function; 3) the timing for claim construction; 4) determination of design patent infringement; 5) classification of infringing activities; 6) indirect infringement; and 7) Defenses.
    1. The test for equivalents is provided in more details.  The Guidelines clarify the meaning of basically identical means, functions, and results, and how to assess each of them for the purpose of determining equivalent features.
    2. Determination of infringement in the case of means plus function is clarified.  The Guidelines provide the definition of functional features and exclude circumstances where certain features should not be deemed as functional, thus resolving an inconsistency in current judicial practice.
    3. The Guidelines provide that the scope of patent protection should be determined at the beginning of any trial proceedings involving a patent dispute. The judge should construe patent claims with reference to the claims themselves, the specification, the prosecution history and extrinsic evidence.
    4. For determination of design patent infringement, there was no consistent standard prior to the Guidelines, and decisions were often viewed as subjective and arbitrary.  The Guidelines clarify the meaning of the “comprehensive observation and holistic determination” standard, and require that judges apply the knowledge level and cognitive ability of an average consumer.
    5. The Guidelines also categorize infringing activities typically encountered in judicial practice and provide clear definition of each category of infringing activity.
    6. The Guidelines incorporate “indirect infringement” into the concept of “joint infringement”, thus clarifying the definitions of the two concepts.
    7. The Guidelines provide further guidance on different types of defenses against patent infringement, including such frequently asserted defenses as prior use and prior art.
    The courts located in Beijing receive around 300 civil patent cases per year.  The Guidelines are a definitive step taken by the Beijing High Court toward the unification of judicial standards in patent cases. Even though they are not binding outside of the Beijing courts, the Guidelines are expected to become an important reference to judges, agents and attorneys across the country.