4.7.3 Interpretation of claims
Article 64 paragraph 1 of the Patent Law provides the following: “For the patent right of an invention or a utility model, the scope of protection shall be confined to the content of the claims. The description and the drawings attached may be used to interpret the content of the claims.” In cases involving patent grant and confirmation, it is necessary to interpret the claims to determine the meaning of the disputed content in the claims and, therefore, whether the claims meet the relevant provisions of the Patent Law and the Rules for the Implementation of the Patent Law.
4.7.3.1 Relevant provisions in the Provisions on Patent Grant and Confirmation
Article 2 of the Provisions on Patent Grant and Confirmation stipulates the following:
The people’s court shall interpret the terms used in the claims based on the ordinary meaning understood by a person skilled in the relevant field of technology after reading the claims, specifications and drawings attached. If the terms used in the claims are clearly defined or explained in the specification and drawings attached, such definitions shall be adopted.
The terms that cannot be defined according to the provisions of the preceding paragraph may be defined based on the technical dictionaries, technical manuals, reference books, textbooks, and national or industry technical standards, inter alia, generally used by a person skilled in the relevant field of technology.
According to these provisions, for administrative cases involving patent grant and confirmation, the people’s court should also follow the principle of “intrinsic evidence first” when defining the terms of the claims. This provision is consistent with those of Articles 2–3 of the Interpretation of Patent Infringement Dispute Cases.
Article 3 of the Provisions on Patent Grant and Confirmation clearly indicates that the people’s courts may, when interpreting terms in the claims, “refer to relevant statements of the patentee that have been adopted by an effective judgment of a civil case involving patent infringement.” The purpose of this provision is to guide and motivate patentees to make cautious and honest statements during patent confirmation procedures and infringement proceedings and to interpret the terms of the claims. This is so as to prevent them from making different statements and thus gain benefits in different proceedings.
Article 4 stipulates that, where there is any manifest error or ambiguity in the claims, descriptions or drawings attached, the people’s court shall “correct” that error based on the sole understanding gained by a person skilled in the relevant field of technology after reading the claims, descriptions and drawings attached. This provision is consistent with Article 4 of the Interpretation (II) of Patent Infringement Dispute Cases.
Regarding technical features defined by functions or effects, Article 9 paragraph 1 of the Provisions on Patent Grant and Confirmation is consistent with Article 8 paragraph 1 of the Interpretation (II) of Patent Infringement Dispute Cases (see Section 4.3.1.4 of this chapter for further detail). Article 9 paragraph 2 of the Provisions on Patent Grant and Confirmation further provides that, if the description and drawings attached disclose no embodiments corresponding to the functional features, the people’s court can determine that it fails to fulfill the requirements of Article 26 paragraph 3 of the Patent Law. Therefore, a patentee must disclose at least one embodiment corresponding to the functional feature in the description to comply with the provision that the invention be sufficiently disclosed in the description.
4.7.3.2 Related typical cases
In a retrial of an administrative dispute over the invalidation of an invention patent, Seiko Epson Corp. v. Patent Reexamination Board,137 the Supreme People’s Court held as follows: when comparing patent grant and confirmation procedures and civil proceedings for patent infringement, the interpretations of the content of claims are highly consistent yet different to a certain extent. Consistency is reflected in at least two aspects. First, claim interpretation is a kind of text interpretation and should follow the general rules of text interpretation both in patent grant and confirmation procedures and in civil proceedings for patent infringement. Second, the same general rules of claim interpretation should be followed both in patent grant and confirmation procedures and in civil proceedings for patent infringement. However, due to the different purposes of claim interpretation in patent grant and confirmation procedures and in civil proceedings for patent infringement, there are certain differences between them in specific circumstances. One difference is in the role of the observations submitted by parties: in patent grant and confirmation procedures, the applicant’s observations, as recorded in the examination files, are generally used as a reference for facilitating the understanding of claims and descriptions rather than as conclusive evidence.