Under normal circumstances, the concept of "scope of protection" is inseparable from the patent application, examination and duration of the patent right. At the application stage, the applicant requests to be granted the "scope of protection" expressed in the claim; In the review stage, the examiner examines whether the "scope of protection" expressed by the patent right meets the authorization conditions, and the patentee enjoys exclusive rights to the "scope of protection" expressed by the patent right during the existence of the patent right.
According to Article 56 of the Patent Law, "the scope of protection of the patent right for invention or utility model shall be subject to the content of the claim, and the description and drawings may be used to interpret the claim". Then, for the same technical features, is the protection scope defined by the open expression claim and the closed expression claim the same? Based on the interpretation of the relevant provisions of the 2006 edition of the Review Guide, the conclusion is that the protection scope of the two is different.
In the 200 1 version of the examination guide, the relevant provisions on open claims and closed claims are only mentioned in the chapter on the composition of claims in Chapter X of Part II (Several Provisions on Examination of Invention Patent Applications in the Chemical Field). But in practice, the method of judging the protection scope of "semi-public" claims is the same as that of "public" claims. In addition, through a large number of review practices, it is found that "open and closed claims" are also universally applicable in other fields. In view of this, the relevant provisions of "open claims and closed claims" have been revised twice in the 2D06 version of the Review Guide.
First, the opening and closing parts of the component claim in Chapter 10 of Part II are amended as follows
"Composition ideas can be expressed in two ways: open and closed. Open means that the composition does not exclude components not indicated in the claims, while closed means that the composition only includes the indicated components and excludes all other components. Common words of opening and closing are as follows.
(1) Openness, such as "containing", "including", "containing", "essentially containing" and "mainly consisting of ..."
(2) Closed, such as "composed of", "composed of" and "balanced", all indicate that the components in the patent claim are composed of the indicated components, and contain no other components, but may contain impurities, which are only allowed to exist in the usual content.
The concept of "semi-open claim" is deleted here, and several expressions of the original "semi-open claim" are classified as "open claim".
Secondly, in the general part of the patent claim, "Part II, Chapter II, Section III, Provisions on the Writing of the Patent Claim", the provisions on the open patent claim and the closed patent claim are added.
"Generally speaking, open claims should adopt the expressions of" including ","containing "and" mainly consisting of ",while closed claims should adopt the expression of" consisting of ",which is usually interpreted as not omitting structural components or method steps except those mentioned in the claims. "
The purpose of the modification here is to let the applicant/agent know that the scope of protection required by "open claims" or "closed claims" is different. If the expression is not properly chosen, it will have a great influence on the determination of the scope of protection of the right claim and the determination of infringement in the examination of patent application.
The relevant provisions of "pending claims and settled claims" have been added to the general claims of the Review Guide in 2006, which unified the review and evaluation criteria of claims in various technical fields. For the practical operation in other technical fields other than chemistry, the applicant/agent is more handy and has rules to follow when dealing with specific cases.
In the application stage, in order to obtain a wider scope of protection, the applicant/agent often writes the claims that should have been expressed in a closed way into the public claims, that is, intentionally brings the structural components or method steps not mentioned in the claims into its scope of protection. For example, the technical scheme only consists of A and B. In order to bring the product or method with components or steps other than A and B into the scope of patent protection, when writing the claim, "consisting of A and B" is written as "including A and B". Doing so will lay a "foreshadowing" for the application review stage and the infringement judgment process after authorization.
In the review stage, there are two problems to be overcome. First of all, if the technical scheme consisting of "A, B and C" exists in the prior art, it will affect the novelty of the protection scope defined by the above claims "including A and B" and pay an unnecessary price, while the novelty of the protection scope defined by the claim "consisting of A and B" will not be affected by the prior art. Secondly, if other components are not described in the specification, the use of open-ended claims is writing. That is to say, for the claim "including A and B", in addition to features A and B, there must also be features C or D in the specification. If not, it needs to be revised according to the actual situation in the examination stage, thus prolonging the examination period. The author believes that in actual operation, we should carefully consider specific technical solutions and do not blindly choose open expression.
At the stage of patent right existence, China's judicial practice is based on the Supreme People's Court's Provisions on Several Issues Concerning the Trial of Patent Infringement Disputes (conference discussion draft), in which Article 15 clarifies the principle of comprehensive technical characteristics of the method for judging patent infringement of inventions and utility models, that is, the principle of universal application.
However, the above-mentioned principle of universally applicable judgment method in paragraph 2 of Article 1 5 does not stipulate "open claim" and "closed claim" respectively. As long as the accused infringer contains the same or equivalent technical features as all the technical features recorded in the claims, and other technical features are added, the people's court shall determine that the accused infringer belongs to the scope of patent protection and the accused infringer constitutes patent infringement.
Based on the provisions of the current Judicial Interpretation of the Supreme People's Court on Several Issues Concerning the Trial of Patent Infringement Disputes, it should be understood that the second paragraph of 15 applies to "open claims" and "closed claims". In this way, for the open-ended claim "including A and B" and the closed-ended claim "consisting of A and B", the judgment basis in the infringement judgment process is the same, or it is understood that their protection scope is the same.
Obviously, comparing the above understanding with the explanations of "open claims" and "closed claims" in the Review Guide, we can see that the two explanations of the protection scope of "open claims" are the same, while the two explanations of the protection scope of "closed claims" are inconsistent. Based on the Provisions on Several Issues in the Trial of Patent Infringement Disputes, it is interpreted that the protection scope of closed claims includes other technical features except all technical features, and based on the Examination Guide, it is interpreted that closed claims do not include structural components or method steps other than those mentioned in the claims.
The author believes that the examination guide is a departmental regulation in the examination stage of patent application, which should run through the whole process of patent application, examination and patent validity. For closed claims, the patentee's request for protection does not include the contents other than the structural components or method steps mentioned in the claim. If the principle of universal application is used to judge infringement, it will violate the principle of estoppel and expand the scope of protection requested by the patentee when applying, which is unfair to the public and does not meet the purpose of adjusting the balance of interests between the patentee and the public in the patent law. The principle of universal application is the basic principle to judge patent infringement, which is created by judges according to actual needs to ensure the fairness of the law. China's judicial practice has made long-term exploration and efforts, but it is still not completely complete and is still developing and perfecting.