On November 28, 2023, the China Intellectual Property Society (CIPS) and the China Association for Standardization (CAS) jointly released the Association Standard Method for determining the standard essential patent (SEP) (T/CIPS 005—2023 | T/CAS 708—2023). Dr. Betty Xu, SESEC’s director, has actively participated in the formulation process.
The Association Standard is composed of six chapters and two appendices, with the two most important sections being Chapter 4 – Determination Principles, and Chapter 5 – Determination Methods. The ultimate goal of the Association Standard is to provide guidance for SEP determination methods and processes, thus improving accuracy and efficiency while lowering the costs. For previous discussions during the kick-off meeting for this standard, please click here. The following is a summary of the most relevant takeaways for foreign stakeholders:
- Overview. In general, the Association Standard does not involve specific sectors or fields. It is an overall guidance for determining SEPs across different industries.
- Core concepts. The core conceptsin the Association Standard are the “Elements” and the “Claims”. Specifically, the “Elements” refer to the smallest or smaller technical unit that can, in a relatively independent manner, perform certain technical functions and produce technical effects in the technical scheme limited by the claims. The “Claims” refer to the part of the patent application document or patent licensing document in which the applicant or the patent holder claims the protection scope of the patent right, on the basis of the description.
- Methodology. The Association Standard introduces core concepts and suggests a methodology for comparing elements in the claims and in the corresponding standard. The SEPs can only be determined when the identical or equivalent elements are found via comparison.
- Identical or equivalent elements. In the Determination Principle section (specifically Chapter 4.3), two paragraphs illustrate the basic concept of “identical or equivalent elements”: that is, when comparing an element of the technical solutions and the one in patent claims, these two elements shall only be deemed as identical or equivalent elements under circumstances where they include the same approach and can deliver basically the same functional results, while in the meantime, any ordinary technicians in the field without creative labor are able to associate these elements together.
In conclusion, the Association Standard reflects China’s intention in guiding and regulating the essentiality check of SEP, which is similar to EU’s move in legislation. Yet, the methodology presented in this Standard might fall short of meeting the needs in practice since it is too general to provide any guidance to specific industries. Therefore, there is still a long way to go before the guiding and regulation of essentiality could make an impacts on industries.
