11 Comparative Study on Judgment Rules ofPatent Infringement in China and Japan (*)
Invited Researcher: ZHANG, Xiaojin (**)
The Supreme Court of P.R.C issued the Judicial Interpretation on Several Issues concerning theApplication of Law in the Trial of Patent Infringement Dispute Cases in 2009, which is the important guidance
for Chinese judges in patent cases hearing, but arguments of patent infringement judgment still exist, especiallyin specific cases. Japanese judicial system is similar to that of China, which belongs to continental legal system.
Japan has set up the Intellectual Property High Court of Tokyo since 2005, while China has just established thethree IP Courts in November and December of 2014.Through comparative study on judgment rules concerning
patent infringement and some running system in IP Courts in China and Japan, the report first gets the whole
picture of the judgment rules, relevant judicial precedents and special running system of IP Courts in the twocountries. Then the similarities and differences between those of the two judicial systems will be analyzed. Basedon above basic study, the advantages and disadvantages of different judgment rules will be analyzed, including
the doctrine of literal infringement, the doctrine of equivalents, indirect infringement, the theory of dedication,prosecution history estoppel, etc. In the end, the report will discuss the possibility of borrowing Japaneseexperience in Chinese judicial practice, the possibility of borrowing relevant running system in IP Courts in
China, in order to keep the balance of protecting the rights of patentees and the interests of the public.

Ϩ Introduction

was established as a special branch of Tokyo High
Court, which is specialized in intellectual property
cases. China also released the State Intellectual
Property Strategy Framework in June of 2008, andthe three Intellectual Property Courts (hereinafterreferred to as the “IP Courts”) had been
established in December and November of 2014,
which are specifically located in Beijing, Shanghai
and Guangzhou. 2 IP courts hear trial cases oftechnology-related civil and administrative cases.
Beijing IP court has the exclusive jurisdiction on
the administrative cases against the decisions fromState Intellectual Property Office (SIPO) and theTrademark Office of State Administration for
Industry and Commerce (SAIC).

1

Judicial interpretation concerning patent
infringement judgment
Supreme Court of P.R.C issued theInterpretation on Several Issues concerning theApplication of Law in the Trial of Patent
Infringement Dispute Cases in 2009, while it hadcome into force since Jan.1st, 2010. This
interpretation is the most important guidance for
Chinese judges to follow when dealing withpatent infringement cases. Even though Patent
Law of China had come into force for more than
20 years,1 but arguments of patent infringement
judgment rules still exist, especially in specificcases hearing.

32Intellectual property as state strategy
and the establishment of intellectual
property courts
As we all know, lots of countries regard
intellectual property as state strategy nowadays,
including Japan and China. Japan had passed Basic
Law on Intellectual Property in December of 2002,
and defined the Japanese government’s policy as“an intellectual property-based nation”. On April 1of 2005, the Intellectual Property High Court(hereinafter referred to as the “IP High Court”),

Intellectual property influence on
industry and economy
Nowadays, the role of intellectual property indifferent countries, especially patent rights, has
become more and more important, so we should
pay much attention to keep the balance of theinterests of patentees and the society to avoid any
overprotection of patents or overprotection of
public interests. To protect patents properly, we
should classify the scope of claims and the public
boundary of prior art correctly, never trespass theinterests of the public or ignore the interests of(*) This is a summary of the report published under the Industrial Property Research Promotion Project FY2014 entrusted
by the Japan Patent Office.
(**) Chief Judge, Beijing Intellectual Property Court, Trial Division No.2, at our institute over a period of approximately 1.5
months from January 19, 2015 through March 18, 2015, as an Invited Researcher for the Fiscal Year 2014.
IIP Bulletin 2015 Vol.24● 70 ●

patentees.

2

ϩ Patent judgment rules in Japanese
legal system
In this part, to discuss the patent judgment
rules in Japan legal system, we will discuss the rulesof claim construction and specific construction
methods of relevant claims first, and then discussrules of patent infringement judgment, relationshipbetween patent infringement suits and patent
invalidation trial proceedings and relevant
proceedings to help judges in patent cases.
1

Rules of claim construction
Claim construction is the first and the mostimportant step to judge patent infringement, which
can decide the protection scope of the patents.
Even though patent laws of different countries
generally stipulates clearly how to determine thetechnical scope of patents, there are still lots ofarguments on the rules of claim construction in
judicial and attorney’s practices.
Prosecution history estoppel is an important
rule to construe claims of patents. In the quick
measurement method of blood serum CRP case3,
the High Court of Tokyo used this rule to construe
the technical scope of the patent. In the Rice Cakecase made by the IP High Court, the court stated“There is no reason that Plaintiff’s statement
regarding the meaning of the claim description in
its retracted Amendment has binding power.”4
Except general rules of claim construction, wemust pay attention to some specific claims which
are written in different ways. One is functional
claims, the technical scope of which cannot include
all the possible ways to realize the relevant
function, but should be determined on a case bycase basis with reference to the descriptions of thespecification. The other is the Product-by-process
claims (hereinafter referred to as the “P-B-P
Claims”), which may be used only when drafting of
the claims is difficult without employing elements
in a process. In Pravastatin sodium case5, Grand
Panel of IP High Court classified P-B-P claims into
two categories, genuine and pseudo P-B-P claim.
In Article 71 of Patent Act of Japan, we can see
there are two kinds of opinions, which are advisory
opinion and expert opinion on the technical scopeof a patented invention given by JPO. One is upon
the request from the party, the other is upon therequest of the Court. The advisory opinion does
not have binding force and cannot be appealed.6

Rules of patent infringement judgment
In the early judicial practice in Japan, there
were two ways for patent infringement judgment
rules which had been used, whereas have been
substituted now. One is the doctrine of superfluity
establishment theory, which had been used in earlystage when the patent claims could not be written
properly, it was called ୙᏶඲฼⏝ㄽ in Japanese.
The other one is narrowing of the claim scope,
under which courts often construed claims very
narrowly, excluding the publicly known or usedtechnical features from the claim.
Literal infringement is now widely used inJapanese patent infringement judgment. But in thehistory, it also had the period and experience ofusage of backward modification of invention toprevent infringement, and the doctrine ofsuperfluity establishment theory, thus theconclusion of infringement would be easy to reach.
The court can find patent infringement not
only through literal infringement, but also as an
infringement under the Doctrine of Equivalents(hereinafter referred to as “DOE”). In the Ball
Spline Case7, the Supreme Court of Japan analyzed
five requirements of DOE, which are non-essential
elements, the possibility of replacement,
obviousness of interchangeability at the time of
infringement (the easiness of replacement), novelty
and inventive step of accused embodiment, no
disclaimer. This case has great influence in theapplication of DOE, and it has become theprecedents followed by practice.
Indirect infringement is the specific andcharacteristic regulation in Article 101 of Patent Act
of Japan. In Ichitaro Case8, IP High Court foundthat manufacture and sale of a word processing
software constitutes indirect infringement of
Article 101, Subparagraph 2 of the Patent Act, butdoes not constitute indirect infringement of
Subparagraph 4.
3

Relationship between patent infringement
suits and patent invalidation trial
proceedings
Before Kilby case, it is the trial board of JPO to
determine the invalidity of a patent. Courts cannot
invalidate a patent. The Supreme Court of Japan
delivered the Kilby Case on Apr. 11, 2000, statedthat “When it is clear that the patent in issue hasreasons to be invalidated, requesting an injunctive
relief and payment of damages based on the patentright should be deemed as an abuse of patent rightand is thus prohibited unless there are special
circumstances.” After Kilby case, Patent Act wasamended. From Kilby Case to the amendment of● 71 ●IIP Bulletin 2015 Vol.24

Patent Act, we can find that the amended article
does not require obviousness in existence ofground for invalidation, which differs from Kilby
case.
Now Japan is implementing double track
system in patent litigation, which means both JPO
and the Courts can make the decisions upon theinvalidation of the patents in issue. From theinterview with Courts and JPO, we can get the first
impression that most of time the two different
organizations can get the unified outcome. Even
there would be some differences, the IP High
Court which hears all the administrative cases
against the trial / appeal decisions from JPO, andalso hears all the patent civil cases for appeal, thus
this court would have the same words concerning
the validity of the patents in issue. As for the effectof two different decisions made by JPO and the
Courts, it is clear that only JPO has the right toinvalidate a patent, while the courts’ decision can
only have the effect between the parties in specificcase, not effective to the society and public.
4

Relevant proceedings to help judges inpatent cases
Judicial research officials are full-time court
officials assigned to IP High Court and also to theintellectual property divisions of the Tokyo District
Court and the Osaka District Court. These
research officials are composed of former JPO trial
examiners and patent attorneys. According to theCode of Civil Procedure of Japan, it specificallystipulates the affairs of judicial research official incases relating to intellectual property; Technicaladvisors should be part-time officials uponrequirement, who come from various technicalfields as leading scholars, scientists, patent
attorneys and researchers of public or private
institutes. So far the IP High Court has appointed
about 200 leading experts as technical advisors.

Ϫ Patent judgment rules in Chinese
legal system
1

2

Rules of claim construction
From Article 59 of Patent Law of China, it isquite clear that the claims determines theprotection scope of patents, together withdescription and drawings to interpret the claims,
while designs are determined by drawings orphotographs. Article 2 of the Interpretation of the
SPC on Certain Issues Concerning the Application of
Law in the Trial of Patent Infringement Cases
mentioned the concept of ordinary skilled person in
the art, who is the symbol of a group of skilled

IIP Bulletin 2015 Vol.24

persons in the art, which helps us to determine thetechnical scope of patents. China uses the principleof Neutralism which emphasizes the harmony ofclaim construction, so claim cannot be extremely
narrowly or broadly construed, but be in a neutral
stand.
Theory of dedication comes from U.S. judicial
practice. CAFC first mentioned this theory in
Maxwell v. Baker case in 1996. In 2002, CAFC
made en banc hearing in Johnson & Johnston
Assocs. v. R.E. Serv. Co. case9, in which theory of
dedication had been analyzed. CAFC held that all
the technical features written in specifications
instead of claims cannot be construed as thetechnical features of the patent, but should be
regarded as dedication to the public. In China, we
also have this doctrine of dedication in Article 5 ofInterpretation of the SPC on Certain Issues
Concerning the Application of Law in the Trial of
Patent Infringement Cases.
Prosecution History Estoppel is stipulated inarticle 6 of Interpretation of the SPC on Certain
Issues Concerning the Application of Law in the Trialof Patent Infringement Cases. There is no argumentthat prosecution history estoppel should be used to
avoid overprotection of patentees, but arguments
lie in what kind of abandon or modification can betreated as out of the protection scope.
Article 4 of Interpretation of the SPC on
Certain Issues Concerning the Application of Law
in the Trial of Patent Infringement Cases
stipulates the way to construe the scope offunctional claims, which is taking into account the
specific way of implementation of the functions oreffects described in the specification and drawings,
or the equivalent way of the specificimplementation. As for the functional claims
during the reviewing period, Guidelines of
Examination of SIPO stipulates that functional
claims should be including all ways to get relevant
functions. There is no contradiction here.
Rules of patent infringement judgment
Literal infringement and doctrine ofequivalents are widely used in patent infringement
judgment cases in China. But in Chinese legal
system, there is no concept of indirect infringement.
From the history of judicial practice, we also
experienced the usage of backward modification of
invention to prevent infringement and the doctrineof superfluity establishment theory. In 2009,
Article 7 of the Supreme Court of China issued theInterpretation of the SPC on Certain Issues
Concerning the Application of Law in the Trial of
Patent Infringement Cases in which states the● 72 ●

principle of literal infringement, or what we call as
the rule of all the technical features.
DOE has been regulated in judicial
interpretation back to 2001. Article 17 of theInterpretation of the Supreme People's Court on
Several Issues Concerning the Application of Law to
the Trial of Patent Dispute Cases (2001) stipulates it.
From the provisions, we can find that equivalentfeatures refer to the features which use substantiallythe same means, perform substantially the samefunction and produce substantially the same effect as
the stated technical features and which can becontemplated by an ordinarily skilled artisan in theart without inventive labor. Here 3 the same havebeen emphasized, together with the requirement of
no inventive labor by ordinary person skilled in art.
DOE is substantially to broaden the technical scopeof patents, but the application of DOE is not thesame in different courts all over China.
Furthermore, some parties do not want to collectand present relevant evidences to prove the 3 thesame and the obviousness, just want the court tosimply agree with them of the application of DOE.
Indirect infringement has brought debateddiscussion during the process of modification ofPatent Law of China. But the amended Patent Law
didn’t adopt the concept of indirect infringement
since there is no concept of indirect infringement in
Tort Law of China (2009), only the concept of joint
infringement and abetting or assisting infringement.
When we find whether there is indirect
infringement, it requires the existence of direct
infringement as the premise. If there is no direct
infringement, then it will not constitute indirect
infringement.

4

Relevant proceedings to help judges inpatent cases
With the establishment of the three IP Courts
in China, the Supreme Court of China issued
Provisional Regulations on the performance ofJudicial Research Officials in litigation inIntellectual Property Court on Dec. 31, 2014, which
stipulates the duties of judicial research officials;
Patent attorneys and relevant engineers of theparties are often technical experts in specific fieldof the patents in issue. During the court hearing,
their statements often help judges to understandthe technical issues well; Expert witness is thesystem in common law countries which has beenborrowed and developed in China. Article 61 of
Judicial Interpretation of the Regulations of theRules of civil Evidence in Civil Litigation releasedby the Supreme Court of China in 2001, it statedthat the parties can apply to the court for theappearance of those who has special knowledge tomake statements of relevant special issues tojudges; In Chinese judicial system, the panel can becomposed of judges or of judges and jurors together
in the cases of first instance. The participation of
jurors who have specific professional knowledge
can also help judges to resolve the technicalproblems; Under some circumstances, judges may
consult with some experts in specific fields aboutsome technical issue of the case; Judicial appraisal
is always the last course to solve technical issues
in Chinese patent infringement judicial practice.

ϫ Comparison of patent infringement
judgment rules in China and Japan1

3

Relationship between patent infringement
suits and patent invalidation trial
proceedings
In Chinese legal system, it is SIPO who has
the power to invalidate patents, while courts haveno power to discuss the invalidity of patents inpatent infringement civil cases. Under this single
track system, if the parties don’t satisfied with thedecisions of SIPO, they can bring an administrative
lawsuit to Beijing IP Court for judicial review andcan appeal to Beijing High Court.
In patent
infringement suits, it is common for the defendant
to make the invalidation defense. Usually the
defendant will ask for the suspension of the civil
cases hearing while the invalidation claims havebeen accepted by SIPO, but the cases will notcertainly suspend.

Similarities between patent infringement
judgment rules in China and JapanFor rules of claim construction, both of them
have the Prosecution History Estoppel to stop theaccusation of the disclaimer; For rules of patent
infringement judgment, both of them have literal
infringement and DOE; Japanese courts have thesystem of judicial research officials to help judges
in patent cases, while the Supreme Court also
issued the relevant regulations on the duties of
judicial research officials10 with the establishmentof the three IP Courts in China, but the selection
and appointment of judicial research officials isunder way.
2

Differences between patent infringement
judgment rules in China and JapanFor rules of claim construction of P-B-P claims,
Japanese courts have the two categories to class
P-B-P claims, only in pseudo P-B-P claims can the● 73 ●IIP Bulletin 2015 Vol.24

process narrow the technical scope of the claim,
while in genuine P-B-P claims, the process cannot
limit the scope of the claim. In Chinese judicial
practice, it is widely accepted that the process
should limit the technical scope of the claims in
P-B-P claims; For the theory of dedication, it isprovided in judicial interpretation and is accepted in
Chinese practice while no specific concept in Japan;
For the requirements of the application of DOE,
five requirements are needed in Japanese legal
system, while “three substantially the same” andno inventive labor should be met in Chinese legal
system; For the indirect infringement, Patent Act ofJapan clearly stipulates indirect infringement,
while there is no concept of indirect infringementin the Tort Law of China. Courts often use joint
infringement or abetting and assisting to solve theissue of indirect infringement claimed by theplaintiffs; As for the relationship between patent
infringement suits and patent invalidation trial
proceedings, both the courts and JPO can discuss
the invalidity of patents in Japanese practice, while
China has the single track system which means
only SIPO can make decisions about theinvalidation of patents; As for the relevant
proceedings to help judges in patent cases, we cansee the well-developed system of judicial research
officials and technical advisors in Japan, and a
combination of different proceedings in China tohelp judges to solve the technical problems
correctly and quickly. For the newly establishedresearch officials system, it still has a long way togo.

infringement in the tort law, but the problems still
exist. When we hear this kind of cases, the parities
will argue indirect infringement and the judges alsoneed to think about this issue. So it should benecessary and possible to borrow this relatively
mature system in Japan.
3

Double track system
The most important advantage of the double
track system in Japanese system is its great role inenhancing the efficiency of patent infringementcases. We can borrow the experience of double
track system to let both the SIPO and IP Courts
can make the decisions of the validity of the patents.
As for the judicial review proceedings, we can alsoborrow the more efficient proceeding of Japanesesystem, which regards the trials in JPO as
quasi-judicial proceedings and only one instance forfinal in the following court proceedings, except for
those cases relating to the application of law thatmeets the requirements to appeal to the Supreme
Court.11
4Well-developed system of judicial
research officials
Well-developed system of the full-time judicial
research officials and part-time technical advisors
is the most impressive aspect of the running of IP
High Court and other courts in Japan to help judges
to resolve the technical issues in patent casehearing, not only for civil cases, but also foradministrative cases. The borrowing of Japanesesystem can help China to improve the level oftechnology related cases hearing.

Ϭ Suggestions to patent judgment
rules in China

ϭ Conclusion

1

1

Strict application of DOE
Five requirements in Japanese judicial practice
can be the threshold of DOE, thus the cases applied
DOE would be reduced to some extent. Although
we often emphasize to apply DOE strictly, thecriteria to use this principle are not the same, notmention the unified standard. So we should borrowfrom the strict application of DOE in Japan, and ask
for the patentees to bear the burden of proof toprove the requirements of DOE in our judicial
interpretation.
Indirect infringement
Even though no specific laws, regulations orinterpretations stipulate indirect infringement in
China, cases concerning indirect infringement do
exist in judicial practice. It is reasonable that we
can deal with them using the concept of joint

Rethinking of patent legal system andthe state strategy
The establishment of IP Courts is closely
related to the promotion of development of thesocial economy and the technology innovations
from the level of state strategy. Patent systemshould have the closest relationship with
innovation and social industry and economy. So weshould rethink of patent legal system and the state
strategy for intellectual property, and deal with therelationship with patent protection and creativity ofinnovators from the level of state strategy.

2

IIP Bulletin 2015 Vol.24

2

Balancing of interests between thepatentee and the public
Balancing of interests between the intellectual
property right holders and the public is the eternal
topic in the intellectual property theory and● 74 ●

practice. To keep the balance well, judges shouldmake the decision not only from the facts of thecases themselves, but also from the level ofindustrial development and the stated strategy.
3

Harmonization in international patent
legal system
The development of world economy isincreasing very rapidly in recent years, especially
under the circumstances of globalization of theworld economy. With the cooperation anddevelopment of international market, it isimportant and necessary for China to do further
research to make improvements in Chinese
relevant system and get the harmonization of theIP system.

1

Patent Law of China was promulgated on Mar. 12th,
1984 and came into force in April 1st, 1985.
2
Beijing IP Court was founded on Nov. 6, 2014, while
Shanghai IP Court was founded on Dec. 28, 2014, andGuangzhou IP Court was founded on Dec. 16, 2014.
3
Blood serum CRP case, Judgment rendered on Feb. 1,
2000, High Court of Tokyo, 1712. See ໎Ӆ઼ཛǃ⭠ᶁழѻ˖Guide of Patent Precedents(⢩䇨ࡔֻ࢞࢖ࢻ[ㅜ 4⡸])ˈᴹᯀ䰱ˈon page 177.
4
Sato’s Kiri-Mochi case, Judgment rendered on Sept. 7,
2011, IP High Court of Tokyo, H23 (ne) 10002.
5
Pravastatin sodium case, Judgment rendered on Jan. 27,
2012, IP High Court Grand Panel, 2010 (Ne) 10043.
This case is now under hearing by the Supreme Court
of Japan, no final result till now.
6
Hiroya Kawaguchi, The essentials of Japanese Patent
Law: cases and practice, Kluwer Law International, on
page 74.
7Ball Spline Case, Tubakimoto v. THK, judgment
rendered on Feb. 24, 1998, Supreme Court of Japan,
Hei 6 (0) 1083.
8
Ichitaro case, judgment rendered on Sep. 30, 2005, IP
High Court, 2005 H17 (ne) 10040.
9
Johnston Assocs. v. R.E. Serv. Co. case, CAFC, 285 F.3d
1046, 2002 (en banc).
10
Even it is called technical investigators in Chinese, it
should have the same meaning and duty as that ofjudicial research officials in Japanese legal system.
11
Relevant suggestions also had been made by scholars
or judges several years ago, see He Zhonglin:
Borrowing and Enlightenment of overseas intellectual
property special court system in China, Journal of Law
Application, No.11 of 2010, from page 84 to 88.

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