The Guidelines for the Determination of Patent Infringements (for Trial Implementation) (‘ The Guidelines 2016’) has come into force on 5 May 2016

In 2013, the draft of ‘The Guidelines for the Determination of Patent Infringements’ was released for collecting comments, because it has involved too many aspects and departments, it had not been issued for a long time. So in July 2014, the State Intellectual Property Office issued the ‘The Guidelines for the Determination of Patent Infringements and Counterfeiting Behavior (for Trial Implementation)’ (‘The Guidelines 2014’). After nearly 3 years for collecting comments and amending, ‘The Guidelines 2016’ has been released and come into force on 5 May 2016.

Like the ‘The Guidelines 2014’, ‘The Guidelines 2016’ has explained the articles by theoretical analysis and case study. However, the differences are obvious too.

‘The Guidelines 2014’ analyses the rules on the determination of patent infringements from the perspective of the technical theory, which mainly include: (1) how to determine an infringement by using the specification, the statement of claims, technical solutions, technical features, and technical means; (2) how to apply the principles of all elements rule, the literal infringement, the doctrine of equivalent, the existing technology defense, the exhaustion of intellectual property rights defense, and the prior use defense; (3) the criteria on determining the ‘Counterfeiting behavior’.

‘The Guidelines 2016’ analyses the rules on the determination of patent infringements from the perspective of the practical characteristics, which mainly include: (1) on the implementation of a patent, it explains the specific methods, such as manufacture, use, sale, offer for sale, import, and other specific forms of product manufacturing process; (2) on the non-infringement behaviors, it explains the specific methods, such as the behaviors with the license from the patentee, the behaviors with the specified license or the compulsory license, and the behaviors with the purpose other than production or business.

In practice, while a company files a claim on the patent infringement or defenses on such claim, it is highly recommended to take both ‘The Guidelines 2014’ and ‘The Guidelines 2016’ into consideration, and make full use of the technical theory and practical characteristics.