4.3.1 Protection scope of invention patents and utility models
The protection scope of patent rights defines the boundaries of the patent rights. Article 64 paragraph 1 of the Patent Law stipulates the following: “For the patent right of an invention or utility model, the scope of protection shall be confined to the contents of its claims. The description and the drawings attached can be used to explain the content of the claims.” According to this provision, the protection scope of an invention patent or utility model is determined based on the content of its claims. Where parties have a dispute over the content of the claims, claims are interpreted to determine the protection scope of patent rights. People’s courts must adhere to the adjudication idea of “strengthening protection and balancing interests” and interpret claims in a reasonable manner in accordance with laws, thereby ensuring that the protection scope of patent rights is compatible with the degree of novelty and inventive contribution.
4.3.1.1 Basis for determination
Article 20 paragraph 1 of the Rules for the Implementation of the Patent Law stipulates that claims must contain independent claims and may also contain dependent claims. Claims usually contain several claims, each claim being a complete technical solution. The right holder may choose any claim as the basis of the protection scope of patent rights asserted thereby.
In accordance with Article 1 of the Interpretation of Patent Infringement Dispute Cases, the right holder may choose one or more specific claims before the end of oral arguments in the court of first instance. Where the claims contain several claims, the right holder must specify in its complaint the claims based on which the lawsuit has been filed against the alleged patent infringement. Where such claims are not specified or not clearly specified in the complaint, then the people’s court will require the right holder to specify the claims in accordance with Article 1 of the Interpretation (II) of Patent Infringement Dispute Cases. Where the right holder refuses to do so as required by the people’s court, the latter may rule to dismiss the lawsuit.
4.3.1.2 Fundamental doctrines and judgment subject for determination
In interpreting claims, people’s courts must adhere to the doctrine of compromise to strengthen the role of public notice of claims and increase certainty in the determination of the protection scope of patent rights, thereby providing clear legal anticipation for the public and facilitating the improvement of patent document drafting skills. People’s courts must also adhere to the principle of “balancing interests” to protect the legitimate rights and interests of the right holder and encourage inventions and creations while avoiding the improper expansion of patent rights, which may reduce the potential for further innovation and damage public interests and others’ lawful rights and interests. Regarding the doctrine of compromise, Article 2 of the Interpretation of Patent Infringement Dispute Cases stipulates the following: “People’s courts shall determine the contents of claims as defined in Article 59(1) of the Patent Law based on the words of the claims and the understanding of the claims by a person skilled in the art, after reading the description and drawings.”
The doctrine of equivalents is a principle for determining patent infringement. Equivalent technical features are also incorporated in the protection scope of patent rights. Article 13 paragraph 1 of the Provisions on the Trial of Patent Disputes stipulates the following: “the protection scope of a patent right shall be confined to the scope determined by all technical features contained in the claims and shall also include the scope determined by features equivalent to those technical features.”
In a retrial of a dispute over invention patent infringement, Ningbo Dongfang Movement Plant v. Jiangyin Jinling Hardware Products Co.,58 the Supreme People’s Court held the following:
In determining the protection scope of patent rights, people’s courts shall neither confine the protection scope of patent rights to the strict literal meaning of the claims nor use the claims as the technical guidance for arbitrary expression. The protection scope of patent rights shall be determined based on the substantial content of the claims. Where the claims do not provide a clear description, the description and drawings may be used for clarification. The protection scope of patent rights may be extended to also cover equivalent features that a person skilled in the art can think of after reading the description and drawings without creative work.
In determining the protection scope of patent rights, “a person skilled in the art” shall be the judgment subject. “A person skilled in the art” are persons of legal fiction, and refer to technical personnel with average knowledge in the technical field related to the concerned patent. They are neither technical experts nor personnel who have no technical knowledge in the field. The protection scope of patent rights shall be confined to the scope of the understanding of the claims by a person skilled in the art after reading the description and drawings.
4.3.1.3 Specific methods for determination
Article 3 of the Interpretation of Patent Infringement Dispute Cases points out the specific methods for the interpretation of claims. It stipulates the following:
People’s courts may interpret a claim using the description and drawings, relevant claim(s) in the claims, and the patent examination files. Specially defined expressions for the claims as contained in the description, if any, shall be adhered to.
In case of failure to clarify the meaning of the claims even after application of the abovementioned methods, an interpretation may be made in combination with published documents like reference books and textbooks, as well as the common understanding of the meaning by a person skilled in the art.
The application of this provision involves the following aspects:
- The description, drawings and related claims in the claim, as components of patent-granting documents that are the most closely related to the claims, are usually the best guideline for clarifying expressions in disputes.
- The patent examination files, although not a component of patent-granting documents, are available for public access. Since the expressions of claims have the same meaning in the patent examination procedure and in infringement lawsuits, patent examination files can play an important role in the interpretation of the claims.
- In contrast to the foregoing “internal evidence,” reference books and textbooks are “external evidence,” used only when the internal evidence is insufficient to provide a clear interpretation. The interpretation of claims does not necessarily require the application of these methods individually or jointly. Where the use of the description and drawings is sufficient to clarify the meaning of the claims, there is no need to resort to other means.
Generally, the expressions of the claims are understood as having the meaning that they usually have in the relevant technical field. If, under certain circumstances, the description defines a specific meaning for an expression due to which the protection scope of the claims is sufficiently defined, then that specific definition is taken as the meaning of that expression. At the same time, in interpreting the claims, “the limitations in the description shall not be read into the claims.” For example, illustrative explanations, like embodiments in the description, cannot be used to limit the protection scope of patent rights.
In a retrial of a dispute over invention patent infringement, Wuxi Shenglong Cable Materials Plant v. Xi’an Qinbang Telecommunication Materials Co.,59 the Supreme People’s Court held that, when a person skilled in the art can clearly determine the meaning of relevant expressions in the claims, and the description does not give specific definitions for relevant expressions in the claims, then the understanding of a person skilled in the art on the contents of the claims prevails, while the contents of the description cannot be used to negate the contents of the claims.
In a retrial of a dispute over invention patent infringement, Xu Yongwei v. Ningbo Huatuo Solar Energy Technology Co.,60 the Supreme People’s Court held that, when using a description and drawings to interpret the claims, an illustrative description therein cannot be used to limit the protection scope of the patent right because embodiments are only illustrations of the invention.
In a retrial of a dispute over utility model patent infringement, Shenzhen Lanying Hardware and Plastic Products Plant v. Luo Shizhong,61 the Supreme People’s Court held that, when a description does not give specific definitions for expressions in the claims, the interpretation can generally be made based on the usual meaning as understood by a person skilled in the art rather than by narrowing the meaning of the expressions to the content reflected by a specific mode of carrying out the utility model described in the description.
With respect to technical terms created by patent applicants, in a retrial of a dispute over utility model patent infringement, Shanghai Modiluke Locks Manufacturing Plant v. Shanghai Gujian Locks Co.,62 the Supreme People’s Court held that patent applicants are allowed to use technical terms created in drafting patent application documents to meet the objective need for describing the new technical solutions of patents. However, as the meanings of such technical terms are not known to a person skilled in the art, applicants are obliged to give clear and correct definitions, explanations or descriptions for such technical terms in the claims or the description where they are used. When such explanations or definitions are absent, then the working method, function and effect of the technical terms should be identified by reference to the background art, the purpose of the invention, technical effects and so on as recited in the claims, description and drawings so that the meanings of such technical terms in the overall technical solution can be determined.
With respect to examination files, Article 6 of the Interpretation (II) of Patent Infringement Dispute Cases stipulates the following:
People’s courts may use another patent related to the involved patent due to a divisional application as well as the patent examination files of that other patent and effective judgments/rulings on patent granting and confirmation, to interpret the claims of the involved patent.
Patent examination files shall include written materials submitted by patent applicants or patentees during the patent examination, reexamination, and invalidation procedures, as well as the notices on examination opinions, meeting minutes, oral hearing records, effective decisions on patent reexamination requests or requests for declaration of patent invalidity, etc., issued by the patent administration department under the State Council.
4.3.1.4 Interpretation of functional features
Article 4 of the Interpretation of Patent Infringement Dispute Cases stipulates the following:
For technical features in the claims that are expressed in terms of functions or effects, people’s courts shall determine the contents of such technical features in combination with the mode of carrying out the functions or effects and its equivalent mode(s), as depicted in the description and drawings.
As a type of technical feature with a relatively special nature, functional features define the protection scope of patent rights through the functions or effects to be achieved by relevant technical features rather than through the specific technical means to achieve those functions or effects. As a result, the literal meaning of “functional features” is so extensive that it covers all modes of carrying out the invention that can achieve those functions or effects regardless of whether the modes already exist before the filing date of the patent or are discovered or invented after the filing date, whether the right holders are aware of them on the filing date or whether they are disclosed in the description.
In Part II(2) of the Guidelines for Patent Examination,63 although it is permitted to use functional or effect-based features to define an invention in the claims, many restriction provisions are also made for this type of technical feature, requiring that “the use thereof shall be avoided as far as possible” (Part II(2) Article 26.4 of the Guidelines for Patent Examination). In a patent infringement lawsuit, if still following the general rules of interpreting claims to interpret the protection scope of “functional features” as covering all modes of carrying out the invention that can achieve those functions or effects, the protection scope of the patent right will not be compatible with the innovation degree and the information disclosed in the patent, inevitably unnecessarily limiting subsequent improvement and innovation and negatively affecting technological development and social and economic advances. Therefore, Article 4 of the Interpretation of Patent Infringement Dispute Cases offers a special provision regarding the interpretation of “functional features” such that the protection scope of patent rights can be compatible with the innovation degree of patents and the contents disclosed in the description and drawings, thereby balancing the interests of the public and the patent holders and leaving necessary space for subsequent improvement and innovation. According to current practices in patent examination, in rare instances, modes of carrying out the inventions are not described in the description and drawings; therefore, the expression “in combination with” is used in Article 4.
Determining whether a disputed technical feature is a “functional feature” has an important effect on the protection scope of a patent right. In this respect, Article 8 of the Interpretation (II) of Patent Infringement Dispute Cases further stipulates the following:
A functional feature refers to a technical feature in which the structures, components, steps, conditions, or the relations among them are defined by their functions or the effects achieved in the invention-creation, unless a mode of carrying out the invention for achieving the above functions or effects can be directly and specifically determined by a person skilled in the art by reading the claims alone.
According to this provision, in determining whether a disputed technical feature is a “functional feature,” it is necessary to not only consider the literal meaning of the expression of the technical feature but also incorporate the technical feature into the overall technical solution defined by the claims, for understanding. For a technical feature containing a specific function or effect, if a person skilled in the art can directly and specifically determine the mode for achieving that function or effect by reading the claims alone, then the technical feature is not a “functional feature” as stipulated in Article 4 of the Interpretation of Patent Infringement Dispute Cases. It should be noted the technical features stated in the above proviso are determined based on the knowledge and capability of a person skilled in the art, and relevant evidence should be produced by the concerned parties.
In an appeal of a dispute over invention patent infringement, Valeo Cleaning System Co. v. Xiamen Lukasi Automotive Parts Co.,64 the Supreme People’s Court further specified that, if a technical feature in the claims of a patent has defined or implied specific structures, components, steps, conditions or the relations among them, then it is not a functional feature, even if it defines the functions or effects that can be achieved thereby simultaneously.
In a retrial case over utility model patent infringement, Linhai Linong Machinery Plant v. Lu Jie,65 the Supreme People’s Court held that, if, apart from defining functions or effects, a technical feature also defines the structural feature corresponding to those functions or effects, and a person skilled in the art can directly and specifically determine the mode for achieving such a structural feature by reading the claims alone, and such a mode can achieve those functions or effects, then this technical feature, which simultaneously defines the structure and the functions or effects, is not a functional feature.
4.3.1.5 Use-environment features
Article 9 of the Interpretation (II) of Patent Infringement Dispute Cases stipulates the following: “Where an alleged infringing technical solution cannot be applied for the use environment defined by the use environment features in the claims, the people’s courts shall determine that the alleged infringing technical solution does not fall within the protection scope of the patent right.”
In a retrial of a dispute over invention patent infringement, Shimano Inc. v. Ningbo Richeng Industry and Trade Co.,66 the Supreme People’s Court held that the use-environment features recited in the claims are necessary technical features that can help define the protection scope of claims; however, to what degree use-environment features can define the protection scope of claims needs to be determined on a case-by-case basis. The general understanding is that the subject matter to be protected can be – rather than must be – used in such a use environment, unless a person skilled in the art can specifically and reasonably conclude that the subject matter protected must be used in such a use environment after reading the claims, description and the patent examination files.
4.3.1.6 Closed composition claims
Article 7 of the Interpretation (II) of Patent Infringement Dispute Cases stipulates the following:
Where an alleged infringing technical solution has additional technical features based on all technical features contained in the closed composition claims, the people’s courts shall determine that the alleged infringing technical solution does not fall within the protection scope of the patent right, unless the additional technical features are unavoidable impurities that are present in normal amounts.
The closed composition claims stated in the preceding paragraph generally do not include claims of traditional Chinese medicine composition.
Although the Guidelines for Patent Examination have been amended several times, the provisions are consistent with respect to the typical limitations for open claims and closed claims and in the interpretation rules thereof. For example, the 2006 Guidelines for Patent Examination67 stipulates, in the general rules for claims, the following:
Usually, open claims should use expressions like “comprising,” “including,” or “consisting essentially of,” which are interpreted as possibly containing additional structural elements or method steps not recited in the claims. Closed claims should use the expression “consisting of,” which is usually interpreted as excluding additional structural elements or method steps not recited in the claims.
Despite subsequent amendments, the Guidelines for Patent Examination have maintained the same provisions on closed composition claims (i.e., that they must not contain additional components other than the features recited in the claims, except for unavoidable impurities that are present in normal amounts).
Through long-term practice in patent examination and adjudication, the foregoing drafting manner and interpretation rule have become widely accepted by the industry. The interpretation rule stipulated in Article 7 paragraph 1 of the Interpretation (II) of Patent Infringement Dispute Cases is consistent with that in the Guidelines for Patent Examination. When applying for patents, patentees may make reasonable choices between open claims, closed claims and closed active component claims to obtain appropriate protection coverage.
The exclusion of other components is one of the inherent features of closed claims. If an alleged infringing technical solution contains additional components, it can be deemed as not “covering” all technical features and thus not falling within the protection scope of the patent right. If, for any reason, the patentee has chosen closed claims with a relatively small protection scope in a patent-granting procedure and due to which the protection scope of the claims of the granted patent is not as broad as expected, then the patentee, having failed to assert a broader protection scope despite having had the opportunity to do so, bears the corresponding legal consequences for the same. In other words, in a patent infringement lawsuit, the patentee’s assertion that its closed claims do not exclude other undefined components shall not be supported.
In a retrial of a dispute over invention patent infringement, Shanxi Zhendong Taisheng Pharmaceutical Co. v. Hu Xiaoquan,68 the Supreme People’s Court held that closed claims should usually be interpreted as excluding structural elements or method steps not recited in the claims. Closed composition claims should usually be interpreted to mean that the composition contains the listed components, excluding all other components except for impurities present in normal amounts (excipients are not impurities). By choosing closed claims, patentees have indicated that they specifically intend to exclude other undefined structural elements or method steps from the protection scope of the patent rights and, therefore, cannot subsequently recapture them into the protection scope through applying the doctrine of equivalents.
In a retrial of a dispute over invention patent infringement, Hebei Xinyu Welding Co. v. Yichang Houwang Welding Co.,69 the Supreme People’s Court held that closed claims constitute a special type of claim that uses specific words or expressions to confine the protection scope to cover only the technical features specifically recited in the claims and the equivalents thereof, but excludes other components, structures or steps. Therefore, with respect to closed claims, if an alleged infringing product contains additional features apart from the technical features specifically recited in the claims, it shall be determined as not falling within the protection scope of the claims.
4.3.1.7 Handling of errors or defects in claims
According to Articles 45–46 of the Patent Law, from the date of the announcement of the grant of a patent right by the patent administration department of the State Council, any entity or individual may request the patent administration department to declare the patent right invalid. The patent administration department will then examine the request for declaring invalidation of a patent right and make a decision on it. If the parties concerned refuse to accept the decision, they may file an administrative lawsuit in the people’s court. Therefore, in a civil case involving patent infringement, people’s courts cannot directly examine the validity of the patent and declare it invalid. However, with respect to ambiguities and manifest errors in claims, people’s courts can make corresponding determinations in accordance with the laws.
With respect to manifest errors in claims and description, Article 4 of the Interpretation (II) of Patent Infringement Dispute Cases stipulates the following:
Where the grammar, characters, punctuations, figures, symbols, etc. in the claims, the description, and drawings are ambiguous, but a person skilled in the art may derive a sole understanding by reading the claims, the description and drawings, the people’s courts shall make a determination according to such a sole understanding.
According to this provision, despite ambiguities in the claims and other patent documents, if a person skilled in the art can derive a sole understanding, the people’s courts shall correct the errors based on such an understanding. While emphasizing the basic orientation of the public notice of claims, it is necessary to keep some flexibility in interpreting the claims to avoid mechanistic submission to literal meanings so that patents with true technological contributions can be adequately protected.
In a retrial of a dispute over invention patent infringement, Wuxi Shenglong Cable Materials Plant v. Xi’an Qinbang Telecommunication Materials Co.,70 the Supreme People’s Court held that, when manifest errors exist in specific expressions in the claims, if a person skilled in the art can specifically and directly correct the meaning of the specific expressions therein without any doubt by reference to relevant contents in the description and drawings, then these expressions are to be interpreted as having the corrected meaning.
In a retrial of a dispute over utility model patent invalidation, Hong Liang v. Patent Reexamination Board,71 the Supreme People’s Court held that “manifest errors” refers to errors in technical features that a person skilled in the art can identify immediately after reading the claims, based on their common technical knowledge, and the sole correct understanding of which such a person may be able to determine immediately after reading the relevant contents of the description and drawings, taking into account their common technical knowledge. The existence of manifest errors does not render the boundary of claims ambiguous. Where manifest errors exist in the claims, if a person skilled in the art can determine the sole correct understanding thereof based on the relevant contents of the description and drawings, then the technical solution protected by the claims is determined based on the corrected understanding.