Mr. SHI Bisheng Delivered Speech at Tsinghua Patent Law Forum 2019-11-28

On November 24, 2019, Tsinghua Patent Law Forum 2019: Chinese Typical Intellectual Property Cases was held jointly by the Supreme People’s Court and Tsinghua University.  Mr. SHI, Bisheng, partner of Zhong Lun Law Firm, was invited to the Forum and gave a speech on Remedy for Patent Infringement of Detection Process.

 Attendees of the Forum included Judges of the IP Court and 3rd Civil Tribunal of the Supreme People’s Court, Beijing High People’s Court and Beijing IP Court, officer of the CNIPA, professors of Tsinghua University, Peking University, etc., patent attorneys, and representatives of Microsoft and RPX.

 The topics discussed at the Forum covered Summary of Technical Features of Patent Claim in Patent Infringement Litigation, Application of Estoppel Principle in Patent Infringement Litigation, Remedy for Patent Infringement of Detection Process and other important topics.


 Mr. SHI spoke on the topic of Remedy for Patent Infringement of Detection Process:


 First, if a standard essential patent (SEP) covers an aspect of a state compulsory standard, article 24 of Interpretation (II) of the Supreme People's Court on Several Issues concerning the Application of Law in the Trial of Patent Infringement Dispute Cases should not be directly applied.  As there is no specific regulation on this issue, it is not certain whether a court may order a defendant to stop infringing a patent in a case involving a SEP covering a state compulsory standard, and it leaves some room for further discussion.


 Second, the relationship between pharmaceutical patents and pharmaceutical standard is unusual, meaning that the pharmaceutical standard may be different from the standard that a SEP covers.  Accordingly, the standard of medicine should be treated differently.


Third, a pharmaceutical detection process is unlikely to be regarded as a “patent process” of article 11 of Chinese Patent Law, under which a product could be directly obtained.  Therefore, if a pharmaceutical detection process is considered to have infringed other’s patent right, in principle it is merely required to stop using the pharmaceutical detection process but not to necessarily stop selling the drugs that use the detection process.  Only in few particular situations, a court might order the defendant to stop selling the drugs that use the detection process.