Patent right is the exclusive right that the owner of an invention-creation enjoys in accordance with the patent law which is a kind of intangible property rights. For patentees or producers, it is necessary to understand the relevant legal provisions of infringement to protect their rights or avoid the risk of patent infringement and know the infringement conditions and relevant infringement or non-infringement acts.

I. Infringement conditions

The relevant legal provisions of infringement are as follows:

Patent Law Article 11 After the grant of the patent right for an invention or utility model, except where otherwise provided for in this Law, no entity or individual may, without the authorization of the patentee, exploit the patent, that is, make, use, offer to sell, sell or import the patented product, or use the patented process, and use, offer to sell, sell or import the product directly obtained by the patented process, for production or business purposes.

After the grant of the patent for a design, no entity or individual may, without the authorization of the patentee, exploit the patent, that is, make, offer to sell, sell or import the product incorporating its or his patented design, for production or business purposes.

According to Article 11, the necessary conditions for patent infringement include:

1) Patent right is valid

The objects of patent infringement must be valid patent, including invention patents, utility model patents and design patents. For patents which have expired, or was declared invalid or abandoned, the implementation of others does not constitute an infringement act.

2) Existing the act of enforcing a patent

Patent enforcement refers to the following acts: For invention and utility model patents, it means making, using, offering to sell, selling, or importing patented products for production and business purposes, or using patented methods and using, offering to sell, sell, and import patented products which are obtained directly though a patented method; for design patent, it refers to make, offer to sale, sale, and import of patented design products for production and business purposes.

3) Without the permission of the patentee

Only implementation without the licensing of the patentee may constitute infringement. There are many forms of licensing, and the usual way is to sign an implementation license contract.

4) For the purpose of production and operation

Only acts such as make, use, offer to sale, sale, import, etc. for the purpose of production and business operations are considered to be patent infringements. If it is not for the purpose of production and operation, it does not constitute an infringement of patent rights.

5) The object of the act of implementation falls into the scope of patent protection

The object of the act of implementation should fall into the scope of patent protection which constitution of infringement.

II. Infringement or non-infringement acts

The Guidelines for the Determination of Patent Infringement (Trial Version), enumerates the following acts of infringement or non- infringement of patent rights.

1. Acts of infringement of patent rights

1.1 Making

1.1.1 The act of making a patented product

For invention and utility model patents, it refers to making or forming products with the same as all the technical features or equivalent technical features recorded in the claims; for design patents, it refers to a product that has made or formed the design represented in the picture or photo using the design patent.

1.1.2 The commissioned processing or OEM production act

If the products are processed under commission or through OEM infringe the patent right, the processing behavior of the contractor or processor constitutes the act of implementing the patent, and the commissioned act of the orderer or the consignor also constitutes the manufacture act of the patented product.

1.1.3 The act of adding patterns and/or colors to existing products to patented products

The accused infringer obtains an existing product from another person and adds a pattern and/or color to the product. If the final product falls within the scope of the design patent protection, the act of adding a pattern and/or color belongs to the manufacture act of a patented product.

1.1.4 The act of making products for export only

The act of making infringing products without the permission of the patentee and exporting them all abroad, although all the products are sold abroad, it will not harm the patentee’s sales of the patented products in the domestic market, but it still constitutes the act of making the patented products , which belongs to infringement act.

1.2 Use

1.2.1 Assemble the patented product into another product

Where a product that infringes an invention or a utility model patent is used as a component or intermediate product to manufacture another product, it should generally be deemed to be the use of the infringing product.

1.2.2 Possession, storage or preservation of infringing products

The act of possessing, storing, or preserving the infringing product does not usually constitute an act of using the infringing product. However, for certain spare products, such as first aid devices, fire-fighting equipment, etc., as long as they are configured in the building in accordance with the requirements for use, they constitute use act. Similarly, if the purpose of storing or preserving a certain product is to put it into use at any time, as long as the standby state exists, it also constitutes the infringement act of using a patented product.

1.2.3 Use of patented methods

Patented technical solutions include technical solutions for product and technical solutions for methods, and technical solutions for methods includes product making methods and operating and using methods. Product making method is a method of making a certain product, generally by setting certain conditions, using specific equipment and following specific process steps to change the structure, shape or physical and chemical properties of a certain item such as raw materials and intermediate products, and the way to form new products. The operating method is the operation and use of specific equipment and specific products, such as measurement, calculation, refrigeration, communication methods, etc…

Generally speaking, omitting the steps of the patented method or not reproducing the patented method completely does not constitute an infringement of using the patented method.

1.3 Sell

Selling infringing products refers to the transfer of the ownership of infringing products that fall within the protection scope of product claims, the ownership of infringing products directly obtained in accordance with patented methods, or the ownership of infringing patented design products from the seller to the buyer for compensation. Tying or transferring the ownership of the above-mentioned products in other ways to obtain commercial benefits in disguise is also considered to be selling the products.

1.4 Offer to sell

Before the act of selling products that infringe the patent rights of others actually occurs, the accused infringer's intention to sell products that infringe the patent rights of others constitutes the act of offering to sell, such as advertising, exhibiting on the Internet or at an exhibition, and offering to sell verbally or over the phone.

1.5 Import

Importing infringing products refers to the act of transporting infringing products that fall within the scope of protection of product patent rights, infringing products directly obtained according to patented methods, or infringing products containing design patents from abroad into China.

1.6 Extended protection of product making method patents

After a product making method invention patent is granted, any unit or individual shall not use the patented method for production and business purposes, nor may it use, offer to sell, sell or import products obtained directly according to the patented method for production and business purposes without the permission of the patentee.

2. Acts of non-infringement of patent rights:

2.1 With the licensing of the patentee

Patentee license is includes express license and implied license. The express license of the patentee means that the patentee confirms in writing or verbally that he will not be held accountable for infringement of the licensee's patent implementation. The patentee's implied license means that although there is no explicit expression, the patentee has language or behavior hints that make others think that it can implement the patent without being charged for infringement.

2.2 Designated license or compulsory license

For the invention patents of state-owned enterprises and institutions, they are of great significance to the national interest or the public interest and the relevant competent departments of the State Council and the people’s governments of provinces, autonomous regions, and municipalities directly under the Central Government report to the State Council for approval, and decide to promote the application within the approved scope and designate the implementation of the accusation of the infringer constitutes a designated license and does not constitute an act of infringement of patent rights.

2.3 Not for the purpose of production and operation

The purpose of production and operation refers to the purpose of industrial and agricultural production or commercial operation, and does not include private consumption for non-commercial purposes, such as the act of implementing a patent in a private way, the act of implementing a patent in public service, public welfare, and charity.