China’s Supreme People’s Court Releases “Summary of Judgments of the Intellectual Property Tribunal of the Supreme People’s Court (2022)”

Share Post:

On March 30, 2023, China’s Supreme People’s Court releases the “Summary of Judgments of the Intellectual Property Tribunal of the Supreme People’s Court (2022)” (最高人民法院知识产权法庭裁判要旨摘要(2022)).  The Intellectual Property Tribunal of the Supreme People’s Court (SPC) selected 61 typical cases from 3,468 cases concluded in 2022, and extracted 75 judgment summaries.  The judgment summaries for IP-related cases, as provided by the SPC, follow.

1. Patent administrative cases

1. Patentability of business methods

[Case No.] (2021)最高法知行终382号

[Judgment Summary] To determine whether a solution involving a business method constitutes a technical solution in the sense of the Patent Law, the claims shall be considered in their entirety, and comprehensive evaluation shall be made from such aspects as whether the solution is for a technical problem, whether the solution solves the problem by achieving specific technical effects, and whether the collection of means in the solution depends on natural laws or artificially set rules to obtain an effect to sufficiently the problem.

2. Determination of Exceeding the Scope of Amendment to the Claims Based on Implicit Disclosure

[Case No.] (2021)最高法知行终440号

[Judgment Summary] Where, in the patent authorization procedure, the applicant amends his or its claims, the added content, though not expressly recorded in the original patent application document, is implicitly disclosed in the original patent application document, then such amendment does not violate Article 33 of the Patent Law, and shall be permitted.

3. Judgment of lack of necessary technical features

[Case No.] (2021)最高法知行终987号

[Judgment Summary] To determine whether an independent claim lacks necessary technical features, it is necessary to draw a conclusion based on a reasonable interpretation of the claim in combination with the purpose of the invention recorded in the description. Only when a person skilled in the art interprets the independent claim reasonably after reading the claims, description and drawings and still believes that it cannot solve the technical problem to be solved by the invention, can it be determined that the independent claim lacks necessary technical features.

4. The selection closest art to the existing technology

[Case No.] (2019)最高法知行终235号

[Judgment Summary] The core consideration for selecting the closest prior art is whether the prior art and the invention-creation address the same or similar technical problems and have the same or similar technical goals; the preferred consideration is whether the prior art and the technical solution of the invention-creation are sufficiently close. As for the judgment of whether the technical solution is close, factors such as the inventive concept and technical means can generally be considered. The approximation of technical means can mainly consider the number of technical features disclosed in the prior art. Whether a person skilled in the art has a reasonable expectation of success in obtaining an invention based on a specific prior art solution is usually not an essential factor or a preferred factor for determining that the patent is closest to the prior art.

5. The Consideration of “Reasonable Expectations of Success” in the Judgment of Patent Inventiveness

[Case No.] (2019)最高法知行终235号

[Judgment Summary] “Reasonable expectations of success” can be used as a consideration when judging whether an invention-creation is obvious. Comprehensively considering the existing technical status, technological evolution characteristics, innovation models and conditions, average innovation cost, overall innovation success rate, etc. on the date of patent application, a person skilled in the art then has the motive to attempt to obtain a patented technical solution from the closest approach to the existing technology and reasonably expects to do so, it may be determined that the patented technical solution is not creative. “Reasonable expectation of success” is only required to the extent that it is “necessary to try” for those skilled in the art, and does not need to have “certainty of success” or “high probability of success.”

6. The impact of differences in invention concepts on motivation for improvement and technical inspiration

[Case No.] (2022)最高法知行终316号

[Judgment Summary] In the process of using the “three-step method” to judge whether an invention-creation is inventive, it is judged whether a person skilled in the art will have the motivation to improve the closest existing technology and whether there is a reference document that will serve as prior art. When combining technical inspiration and the prior art, if there is an obvious difference in the inventive concept between the invention and the closest prior art, it can generally be determined that those skilled in the art will not have the motivation to improve the closest prior art to obtain the present invention; If there are obvious differences in the inventive concept between the reference documents that are prior art, it can generally be determined that there is no technical inspiration in the prior art to combine the above reference documents to obtain the present invention.

7. Application of the novelty grace period

[Case No.] (2020)最高法知行终588号

[Judgment Summary] The core of the provisions of the Patent Law on “others’ disclosure of the content of the invention without the applicant’s consent” in the novelty grace period is that others disclose the content of the invention against the applicant’s will. When making a specific judgment, the applicant’s subjective intention and objective behavior can be considered comprehensively, that is, whether the applicant is subjectively willing to disclose or allows the disclosure behavior to occur, and objectively whether certain confidentiality measures have been taken to make the invention difficult to be known by the public. If others violate the express confidentiality obligation or the implied confidentiality obligation based on social concepts and business customs, and disclose the content of the invention and creation without authorization, it constitutes a violation of the applicant’s will, which falls under the category of “others divulging its content without the applicant’s consent”.

8. Whether the technical solution with certain defects is practical

[Case No.] (2022)最高法知行终68号

[Judgment Summary] Practicality requires that an invention or utility model patent application can produce practical effects, but it does not require that it be free from defects; as long as the existing defects are not so serious that the relevant technical solution cannot be implemented or the purpose of the invention cannot be achieved, the technical solution cannot be judged as lack of practicability on such grounds only.

9. Judgment of general consumers on components of a design

[Case No.] (2021)最高法知行终464号

[Judgment Summary] General consumers of design products usually include people who can observe or pay attention to the appearance of products during product sales and use. If the function and use of a product is determined to be used as a component of an assembled product, and the end user of the assembled product cannot observe the appearance of the component during the normal use of the assembled product, then the general consumer mainly includes the direct purchaser and installer of the component.

10. Impact of design with both functionality and aesthetics on overall visual effects

[Case No.] (2021)最高法知行终464号

[Judgment Summary] When the design of a certain part of a product is not limited solely by its function, the impact of the design of this part on the overall visual effect depends on whether the general consumers’ attention to it is mainly due to functional considerations or aesthetic considerations. If general consumers pay attention to this part during normal use of the product mainly out of consideration of related functions rather than visual aesthetics, it can be determined that the design of this part will hardly have a significant impact on the overall visual effect.

11. Actionability of notice of expiration of patent term

[Case No.] (2022)最高法知行终54号

[Judgment Summary] The notice of termination of the patent right issued by the CNIPA based on the established legal fact that the patent right has terminated due to the expiry of the term of the patent right did not have an actual impact on the rights and obligations of the patentee, nor did it actually produce legal effects in the sense of administrative law. Generally, it is an administrative act that cannot support an administrative lawsuit.

12. Determination of offer for sale

[Case No.] (2021)最高法知行终451号

[Judgment Summary] When the content of the alleged infringer’s intention to sell the product is clear and specific, it can be determined that he has committed an offer for sale as stipulated in the Patent Law. The lack of such expression of will as the relevant price/supply quantity and product batch number which may affect the formation of the contract does not affect the determination of the act of offering to sell.

13. Promising sales to an unspecified third party is not an exception to the administrative approval of drugs and medical devices

[Case No.] (2021)最高法知行终451号

[Judgment Summary] The patent law exception regarding administrative approval of drugs and medical devices applies only to the actor who exploits patents for the purpose of obtaining the information necessary for the administrative approval of generic drugs and medical devices. Where the party promises to sell patented products to an unspecified third party other than an actual one with which it has established a specific business relationship, it does not meet the conditions for applying the administrative approval infringement exceptions to drugs and medical devices.

2. Patent civil cases

14. Special definition of technical terms in the description and distinction between specific implementation methods

[Case No.](2020)最高法知民终580号

[Judgment Summary] When interpreting a patent claim, it is necessary to accurately identify whether the relevant content recorded in the specification belongs to the special definition of the terms of the claim or the specific implementation method of the claim. Where there is a clear statement in the description, the statement shall prevail; if there is no clear statement, factors such as the purpose of the invention, the inventive concept, and the technical solution intended to be protected by the claims to which the relevant terms belong shall be considered comprehensively.

15. Rules for the use of external evidence in claim interpretation

[Case No.] (2020)最高法知民终580号

[Judgment Summary] If the description does not specifically define the technical terms in the claims, they should first be interpreted according to the ordinary understanding of the technical terms by those skilled in the art, rather than directly according to the ordinary meaning in daily life. The general understanding of technical terms by those skilled in the art can be combined with relevant technical dictionaries, technical manuals, reference books, textbooks, national or industry technical standards and other evidence of common knowledge, and those with a higher degree of similarity to the field of the patented technology involved can be preferred. 

16. The role of preambles in limiting the protection scope of claims

[Case No.] (2020)最高法知民终1469号

[Judgment Summary] Where the preamble  constitutes or implies specific technical features or is the difference between a technical solution as defined in the claim and the prior art, such preamble has a material limiting effect on the scope of protection of the claim.

17. Consideration of background technology and invention purpose in determining equivalent infringement

[Case No.] (2021)最高法知民终860号

[Judgment Summary] If, after a person skilled in the art has thoroughly read the claims, specifications and the appended drawings, he or she believes that one of the purposes of the patent at issue is to overcome the technical defect of a background technology, and the technical solution with this background technology is discarded to overcome the technical defect, the technical solution containing the technical defect shall no longer be included in the scope of patent protection by determination of infringement.

18. Connection and protection of invention patent and utility model patent filed on the same day

[Case No.] (2020)最高法知民终1738号

[Judgment Summary] The applicant applied for a utility model patent and an invention patent for the same invention on the same day, and after obtaining the utility model patent authorization, the applicant gave up the utility model patent right in order to obtain the invention patent authorization. For others’ acts of implementing the patented technical solution without permission between the date of granting the utility model patent and the date of granting the invention patent, they can request relief in the following ways: (1) for the acts of unlicensed exploitation of the patent technical solution between the date of authorization of the utility model patent and the date of publication of the invention patent, remedies may be requested on the ground of infringement upon the patent right of utility model; and (2) for the acts of unlicensed exploitation of the patent technical solution between the date of publication of the invention patent and the date of authorization, remedies may be requested on the ground of payment of royalties for the period of temporary protection of the invention patent or infringement upon the patent right of utility model.

19. Identification of the manufacturer of the accused infringing product

[Case No.] (2021)最高法知民终1784、1840号

[Judgment Summary] In a dispute over infringement on a patent right, where the mark on the alleged infringing product contains true and specific information about the business operator (such as the name and address of an enterprise, sales hotline, and registered trademark), and the alleged infringer is unable to submit contrary evidence sufficient to invalidate the claim, it may be determined that the business operator to which the mark refers constitutes the manufacturer of the alleged infringing product.

20. Determination of joint infringement of a  method patent involving multiple physical entities

[Case No.] (2022)最高法知民终817号

[Judgment Summary] The so-called “principle of comprehensive coverage” in the determination of patent infringement refers to that the same alleged infringing technical solution shall cover all technical features in the claim without necessarily requiring that the conduct of the same subject cover all technical features in the claim. For a multi-subject implementation of a method patent in the field of communications that needs to be completed by means of multiple physical entities, no manufacturer shall be exempted from infringement liability because it fails to fully implement the patented technical solution. With regard to the determination of whether the manufacturer has committed the infringement act, it should still be determined whether the manufacturer solidified the substantial contents of the patent process into the alleged infringing product for the purpose of production and business operation, and the act or the result of the act played an irreplaceable substantive role in fully covering the technical features of the claim.

21. Determination of implied patent license

[Case No.] (2022)最高法知民终139号

[Judgment Summary] Where the patentee voluntarily provides the alleged infringer with a technical solution with the intention of helping it exploit the patent, but fails to disclose its patent right, and does not claim for infringement remedies until the exploitation of the alleged infringer is completed, if the alleged infringer claims that it has obtained the tacit permission of the patentee, the people’s court may support such a claim.

22. The legality of the basic facts of the prior art defense

[Case No.] (2020)最高法知民终1568号

[Judgment Summary] No one shall benefit from illegal acts. If the accused infringer or a third party authorized by it discloses the patented technical solution in violation of express or implied confidentiality obligations, and the accused infringer claims a prior art defense based on the factual state of the illegal disclosure, the people’s court shall not support it.

23. Applicable objects of legal source defense

[Case No.] (2021)最高法知民终434号

[Judgment Summary] The applicable object of the legal source defense is limited to users, promises to sell, and sellers of patent-infringing products, specifically including the use, promise to sell, and sale of patent-infringing products or the use, promise to sell, and sales of patents directly obtained by patent methods. In principle it does not include circumstances such as the use of a patent process.

24. Determination of legal source defense of “three no products”

[Case No.] (2021)最高法知民终1138号

[Judgment Summary] The alleged infringing product without such marks as the name and address of the manufacturer and the product quality inspection conformity certificate may be taken as an important consideration for determining that the seller failed to exercise reasonable care.

25. Use of legal source defenses for rental products

[Case No.](2021)最高法知民终1118号

[Judgment Summary] If the accused infringing user can prove that the infringing product he uses is rented for a fee, the rental price is reasonable and in line with commercial practice, and the patentee does not provide further evidence to the contrary, the alleged infringing user’s defense of lawful source may be held true.

26. Subjective elements of legal source defense

[Case No.] (2022)最高法知民终593号

[Judgment Summary] Whether or not to comply with the law and regulate business operations and prudent and rational trading may be taken as an important consideration in the examination of the subjective elements of the defense of legal sources. Where a user claiming the defense of lawful sources purchases a product manufactured using the technology involved from the right holder and is obligated to keep the relevant technology confidential according to the contract, and then purchases the same product from others at a price which is obviously lower than the price of the product patented by the right holder after the patent is granted, the user shall be obligated to pay more attention to the defects of the right of the product. Where a user cannot prove that he has performed the aforesaid duty of care, his defense on his lawful source may not be supported.

27. Injunctive relief in standard essential patent infringement cases

[Case No.] (2022)最高法知民终817号

[Judgment Summary] When applying the provisions of Article 26 of the Interpretation II of the Supreme People’s Court on Several Issues concerning the Application of Law in the Trial of Patent Infringement Dispute Cases to determine whether to order the cessation of infringement in a standard essential patent infringement dispute case, the nature of the patent in question, the fault of the parties, the state of rights of the patent in question and the necessity of ordering conditional cessation of infringement, the patentee’s interest safeguard method and other factors may also be taken into consideration. Where the patent in question is by nature an essential patent inescapable of being avoided by the implementation of compulsory standards, it shall be more prudent to order the respondent to assume the civil liability for stopping the infringement, and more importantly, it shall take into full consideration the extent of the parties’ subjective fault, whether there is any benefit imbalance between the parties, whether the compensation for damages can sufficiently compensate for the patentee’s loss, whether the cessation of infringement will affect the public interest, and other factors.

In a dispute over standard essential patent infringement, the court may, according to the specific circumstances of the case, attach conditions to the judgment on cessation of infringement. For example, when ordering the standard patent owner to stop infringement, the patent owner may be granted a reasonable grace period for modifying the technical solution, or the obligation to stop infringement may be clarified until the patent owner actually pays adequate damages or license fees in compliance with the FRAND principle.

28. Selection of calculation basis for damages for patent infringement of parts and components

[Case No.] (2020)最高法知民终589号

[Judgment Summary] The calculation basis for damages for infringement of the patent rights of parts and components can be based on factors such as the sales pattern of the parts and components and the whole product using the parts and components, the contribution of the parts and components to the overall profit of the product, whether there are synergistic effects between the parts and components and the whole product, whether there are multiple patent technical solutions in the whole product and the availability of relevant price sales volume profits and other data. If the relevant infringing parts or components are consumables and are usually sold separately to end users, the functions and roles of the parts or components in the product as a whole are relatively independent, the synergy with other parts of the product is not significant, and there is sufficient evidence such as sales price, sales quantity, and profit margin, the parts or components products shall be selected as the basis for calculation of damages.

29. The operating performance declared by the infringer can be used as the basis for calculating damages

[Case No.] (2021)最高法知民终1066号

[Judgment Summary] If the patentee claims to use the scale of the infringer’s business as the basis for the calculation of damages, and the infringer argues that the scale of business is exaggerated publicity rather than actual business performance, but fails to submit evidence to prove its actual scale of infringing business, the people’s court may use the declared business scale can be used as the basis for the calculation of damages.

30. Punitive compensation liability for reselling the same infringing product after the infringement settlement

[Case No.] (2022)最高法知民终871号

[Judgment Summary] Where, after the infringer and the patentee reach a settlement on the dispute over the sale of infringing products, they sell the same infringing products again, it may be determined that such sales have constituted intentional infringement and the circumstances are serious. Where the patentee claims for punitive compensation and claims that the amount of compensation as agreed upon in the prior settlement agreement shall be taken as the basis for calculation, the people’s court may support such a claim according to the law.

31. Expenditures of the patentee in the patent invalidation procedure generally do not belong to the reasonable expenses of rights protection in patent infringement cases

[Case No.] (2022)最高法知民终1165号

[Judgment Summary] In a patent infringement dispute case, the patentee’s request to include the expenses incurred in the invalidation procedure of the patent involved in the case as reasonable expenses for rights protection is generally not supported.

32. If the legal source defense is established, the user can still be ordered to bear reasonable expenses for rights protection

[Case No.] (2021)最高法知民终1406号

[Judgment Summary] If the patentee claims that the user of the infringing product whose legal source defense is established shall bear reasonable expenses for rights protection, the people’s court may support it depending on the circumstances. When the infringing user who defends using the legal source and the infringers are also defendants, the share of reasonable expenses for right protection may be determined by comprehensively considering the damage caused by their respective infringement, the causal relationship or extent of connection with the right protection by patent holders, whether the smooth implementation of the right protection by patent holders has been hindered, whether it has led to an increase of right protection expenses, and other factors.

33. After the invalidation of the patent, it is obviously unfair to find that the part of the mediation agreement has been fulfilled

[Case No.] (2021)最高法知民终1986号

[Judgment Summary] When the ratio of the patent license fee paid before the invalidation of the patent right to the total license fee is significantly higher than the ratio of the license period before the patent right is invalidated to the entire license period and a party requests the refund on the ground that it is obviously contrary to the principle of fairness, the people’s court may support such a claim.

34. Determination of illegal evidence in patent infringement litigation

[Case No.] (2022)最高法知民终222号

[Judgment Summary] In a patent infringement dispute case, where the respondent infringer claims that the patent right holder has obtained evidence in an illegal manner as prescribed in Article 106 of the Interpretation of the Supreme People’s Court on Application of the Civil Procedure Law of the People’s Republic of China, the judgment may be made in combination with such factors as whether the patent right holder has no other more appropriate means to obtain evidence, whether there is an emergency that evidence may be lost, whether the evidence is key evidence of patent remedy, and whether the benefit of others is significantly less damaged from the evidence-obtaining act than the patentee’s gain from the evidence-obtaining act.

35. When the validity of the patent right is in doubt, the parties can be guided to make a future interest compensation commitment

[Case No.] (2022)最高法知民终124号

[Judgment Summary] When the validity of the patent right involved in a patent infringement case is in doubt or disputed, the people’s court may, depending on the circumstances, adopt different handling methods such as continuing the trial and making a judgment, ruling to suspend the lawsuit, or ruling to reject the lawsuit. To effectively promote the settlement of patent infringement disputes, the people’s courts may actively guide and encourage the parties to patent infringement cases to voluntarily make two-way or one-way interest compensation commitments or declarations based on the consideration of fairness and good faith, that is, the patentee may promise to waive the benefit of non-enforcement reversal as enjoyed under paragraph 2 of Article 47 of the Patent Law if the patent right is declared invalid, and the respondent infringer may promise to pay interest on the compensation for infringement damages if the patent right is affirmed to be valid. Where a party concerned voluntarily makes the aforesaid commitment, the people’s court shall take it as an important consideration in choosing the mode of processing in the follow-up trial procedure of a patent infringement case.

36. The characterization of patent infringement as counterfeiting patents and the legal basis for damages

[Case No.] (2021)最高法知民终2380号

[Judgment Summary] Although counterfeiting of others’ patents and infringement of patent rights are both patent-related infringements, the forms of infringement, the legal interests infringed, and the ways of bearing responsibilities are all different. The act of simply counterfeiting other people’s patents without implementing the patented technical solution does not constitute the infringement of patent rights stipulated in Article 11 of the Patent Law, and the determination of liability for damages shall be governed by the general provisions of the Civil Code on compensation for infringement.

37. Trial scope of declaratory judgement actions for  non-infringement of patent rights

[Case No.] (2020)最高法知民终696号

[Judgment Summary] In a dispute over confirmation of non-infringement of the patent right for an invention or utility model, the people’s court shall require the patent right holder to specify the specific claims claimed in its warning; where the patent right holder claims multiple claims, the people’s court shall, in principle, try whether the technical solution implemented by the plaintiff falls into the scope of protection for each claim. Where the plaintiff requests confirmation of non-infringement of the patent right involved in a case on the ground of the implementation of existing technology, the people’s court shall also try whether the technical solution to the dispute belongs to the existing technology.

38. Determination of “Bringing a Lawsuit within a Reasonable Time” in Affirmation of Non-Infringement

[Case No.] (2021)最高法知民终2460号

[Judgment Summary] The plaintiff in a lawsuit for confirming non-infringement of intellectual property rights shall produce evidence to prove that the defendant “failed to bring a lawsuit within a reasonable time limit.” The so-called “reasonable time limit” shall be determined on the basis of the type and nature of intellectual property rights and the specific circumstances of the case, with full consideration of the difficulty in finding evidence for the infringement and reasonable time needed for litigation preparation. The so-called “litigation” includes various types of litigation, such as tort litigation and right confirmation litigation, which may substantially resolve disputes between both parties and eliminate the unease of the person being warned.

39. Duty of good administration of PCT applicants during title disputes

[Case No.] (2022)最高法知民终130号

[Judgment Summary] Where, during the period of a dispute over the ownership of a PCT application, the registered PCT applicant fails to perform its obligation of good faith without any justifiable reason, thus causing the termination of the validity of the PCT application, the applicant shall be civilly liable for compensating for the losses, and, if the actual right holder is also at fault, the amount of compensation may be reduced according to the actual circumstances.

40. Combined trial of the inventor confirmation lawsuit and the ownership lawsuit in service invention-creation ownership disputes

[Case No.](2021)最高法知民终2146号

[Judgment Summary] Where the plaintiff in a dispute over patent right for a service invention-creation or ownership of a patent application simultaneously files a lawsuit for confirming the inventor, and all the inventors participate in the lawsuit, the people’s court may try the lawsuit together or hear the lawsuit in two separate cases together.

41. Determination of the subject of payment of rewards and remuneration for inventors of service inventions and creations

[Case No.] (2021)最高法知民终1172号

[Judgment Summary] The employer shall undertake the obligation to pay the remuneration to the inventor of the service invention-creation. The right of the inventor of a service invention-creation to request payment of rewards and remuneration shall not be damaged by the employer’s disposition of the patent application right or patent right for the service invention-creation. The transfer of the right to apply for a patent or the patent right does not affect the employer’s obligation to pay remuneration to inventors of service inventions and creations.

42. Correspondence between 4.2 declarations of generic drug applicants and drug patent claims

[Case No.] (2022)最高法知民终905号

[Judgment Summary] If a generic drug applicant makes a statement in accordance with the provisions of Article 6 of the “Measures for the Implementation of the Early Resolution Mechanism for Drug Patent Disputes (Trial)” that the technical solution of the generic drug it applies for does not fall within the protection scope of the generic drug patent right, it shall, in principle, make a declaration regarding the claim of the generic drug with the largest scope of protection, so as to guarantee the authenticity and accuracy of the declaration. When the China Drug Patent Information Registration Platform discloses two or more independent claims corresponding to the generic drug, the generic drug applicant shall make a statement regarding the two or more independent claims.

43. The basis for determining the technical scheme of generic drugs in drug patent linkage litigation

[Case No.] (2022)最高法知民终905号

[Judgment Summary] In a drug patent linkage lawsuit, when determining whether a generic drug technical solution falls within the scope of patent protection, in principle a comparative judgment shall be made on the basis of the application materials submitted by the generic drug applicant.

44. “Invalidate first, sue separately” applies to drug patent linkage litigation

[Case No.] (2022)最高法知民终2177号

[Judgment Summary] After a patent right holder files a lawsuit for determining whether the patent falls into the scope of patent protection dispute, if the patent right involved is declared invalid by the CNIPA but the examination decision declaring the patent invalid has not been determined to have legal effect, the people’s court may first rule to dismiss the lawsuit brought by the plaintiff.

3. Cases of new plant varieties

45. – 52.

4. Cases of technical secrets

53. Parents of hybrids constitute the object of trade secret protection

[Case No.] (2022)最高法知民终147号

[Judgment Summary] The breeding intermediate material and inbred line parent, etc. formed in the process of crop breeding, which are different from plant material found in nature, are intellectual achievements of the breeder who has paid creative labor, bear specific genetic genes formed by the breeder who chooses and domesticates the plant material in nature or chooses the trait of the existing variety, and the breeding material has the characteristics of both technical information and tangible medium, and the two cannot be separated. Breeding materials with commercial value obtained through breeding innovation activities may be legally protected as trade secrets under such conditions that they remain unknown to the public and corresponding confidentiality measures are taken.

54. Determination of the content of technical secrets when drawings are used as the medium of technical secrets

[Case No.](2021)最高法知民终2526号

[Judgement Summary] Drawings can be used as the medium of technical secrets, and the content and scope of the claimed technical secrets can be determined based on the drawings. The owner may claim that the collection of all the technical information recorded in the drawing is a technical secret, or claim that one or some technical information recorded in the drawing is a technical secret. The people’s court cannot simply rule to dismiss the lawsuit on the grounds that the plaintiff did not clarify which specific information in the drawing is a technical secret.

55. Determination of technical solutions protected as technical secrets

[Case No.] (2020)最高法知民终1889号

[Judgment Summary] When the technical secret claimed by the right holder is a technical solution, it may be either a complete technical solution recorded in one technical document or a technical solution reasonably summarized, generalized and extracted on the basis of the technical information recorded in drawings, technical procedures, quality standards, operating guidelines, experimental data and other multiple technical documents which is not known to the public.

56. Determination of the confidentiality of breeding materials

[Case No.](2022)最高法知民终147号

[Judgment Summary] The growth of breeding materials depends on soil, moisture, air and sunlight, and requires field management. It is difficult for the right holders to take confidentiality measures for breeding crop materials. Whether the relevant confidentiality measures are reasonable, the characteristics of breeding materials need to be considered, and it shall be appropriate to achieve the degree of prevention from being leaked under normal circumstances. The establishment of a confidentiality system, the signing of confidentiality agreements, the prohibition of external proliferation and the designation of reproductive materials as such can constitute reasonable measures of confidentiality under appropriate circumstances.

57. Three main situations of subjective fault in joint infringement

[Case No.] (2022)最高法知民终541号

[Judgment Summary] From the perspective of subjective fault, joint infringement mainly includes three situations: first, joint intentional acts; second, joint negligent acts; third, intentional acts combined with negligent acts. That is to say, although the degree of subjective fault of several actors is different, but the combined acts of their respective acts, which cause damage to others, may also constitute a joint tort. If one of the above three situations is met, it can be determined that a joint infringement has been committed.

58. Determination and Liability of Joint Intentional Infringement in Technical Secret Infringement Cases

[Case No.] (2022)最高法知民终541号

[Judgment Summary] Where the alleged infringement is committed jointly and intentionally, the parties need not conspire beforehand or act in coordination afterwards. Where the parties know each other, and participate in and cooperate with each other successively, the alleged infringement may also be committed jointly and intentionally. Where all the accused tortfeasors have the intention to contact each other to infringe upon technical secrets, are subjectively aware of each other, have successively committed corresponding torts, and have formed a complete chain of technical secret torts, and have collaborated with each other objectively based on division of work, all the accused tortfeasors shall be held jointly and severally liable for all the tort damages if they jointly and intentionally commit torts.

59. Manufacturer’s liability to stop sales in technical secret infringement cases

[Case No.] (2022)最高法知民终541号

[Judgment Summary] Where the technical secret used by a manufacturer is an indispensable and important condition for manufacturing a specific product and such product is a product directly obtained by using such technical secret, if the act of selling such product is obviously a natural extension and inevitable result of the manufacturing act of the same infringing party, the right holder claims that the manufacturer should stop selling the product directly obtained by using such technical secret, the people’s court may support such a claim.

60. Responsibilities of technical secret infringers for destroying technical secret carriers and their methods of undertaking

[Case No.] (2022)最高法知民终541号

[Judgment Summary] When the right holder proves the existence of the corresponding technical secret medium, the people’s court shall generally support the right holder’s request for the infringer to destroy the technical secret medium holding the secrets. The people’s court may comprehensively consider the nature of the medium, the content of technical secrets, etc., and specify the specific method and performance period for the infringer to destroy the medium holding the technical secrets. The accused infringing production system is not only an important carrier of technical secrets, but also an important tool for the infringer to continue to carry out the infringement. Destroying the accused infringing production system carrying the technical secrets is not only the proper meaning of stopping the infringement, but also an effective way to prevent the infringer from continuing to use the technical secret carried on it and the production process contained in the technical secret on the production system. The methods of destroying relevant equipment include but are not limited to dismantling.

61. Determination and handling of compensation agreements for infringement of technical secrets

[Case No.](2021)最高法知民终1687号

[Judgment Summary]The technical secret owner and the employees agreed on the method of infringement liability and the calculation of the amount of infringement damages in the commercial secret protection clause after negotiation in a prior agreement reached by the two parties on possible future infringement damages. The People’s Court can use it as an important reference when determining the amount of compensation for technical secret infringement.

62. Consideration of Business Opportunity Factors in Determining Compensation for Technical Secret Infringement

[Case No.] (2021)最高法知民终1363号

[Judgment Summary] Where the tortfeasor is obviously at fault and the infringement of technical know-how can be ascertained based on the evidence in the case or it can be presumed based on the specific circumstances of the case that the infringement directly determines the obtaining of the business opportunity of the tortfeasor or the loss of the business opportunity of the right holder, in principle, the tortfeasor may treat all profits as tort profits.

5. Monopoly cases

63. Anti-monopoly review of settlement agreements reached due to patent infringement disputes

[Case No.] (2021)最高法知民终1298号

[Judgment Summary] If the settlement agreement reached due to a patent infringement dispute has no substantial connection with the scope of protection of the patent involved in the case, and the products involved exceed the scope of the allegedly infringing product, the core of the settlement agreement is not to protect and exercise the patent right, but to exercise the patent right as a cover for dividing the sales market, restricting the production and sales of goods, and fixing prices and can be identified as horizontal monopoly agreements.

64. – 74

6. Litigation procedure


Author: Aaron Wininger

Aaron Wininger is a Principal and Director of the China Intellectual Property at Schwegman Lundberg & Woessner.

Author: Aaron Wininger

Aaron Wininger is a Principal and Director of the China Intellectual Property at Schwegman Lundberg & Woessner.