Just as there are few identical things but many similar things in the world, in judicial practice, there are few infringements of completely copying other people's patented products or methods. It is common to simply replace or transform one or some technical features in other people's patent claims in order to achieve the purpose of implementing other people's patents. If the same principle is applied under any circumstances, the interests of the patentee will not be effectively protected, and the patent right obtained by the patentee through the disclosure of his invention will also be lost, which is contrary to the purpose of the patent system to encourage the disclosure of inventions. How to identify the above acts as patent infringement, so the principle of equivalence came into being.
The so-called equivalence principle refers to replacing the necessary technical features in the patent claim with substantially the same way, means or product, so that they have substantially the same effect. In this case, although there are some immaterial differences in form or technology, it should be regarded as infringement.
The United States played the greatest role in the establishment and development of the principle of equivalence, and its history of adopting the principle of equivalence can be traced back to 18 18. Later, this theory was adopted by Germany, Japan and other countries and gradually became an internationally recognized theory. The modern equivalence theory was established by the Supreme Court of the United States in a case of 1950, and put forward the criteria for judging whether it constitutes equivalent infringement, that is, whether the technical elements of the patented invention and the object accused of infringement "achieve basically the same function in basically the same way and produce basically the same effect". The above standards are called "function-mode-effect" standards.
The draft of the Treaty on Substantive Coordination of Patent Law (SPLT) brings the principle of equivalence into the scope of substantive coordination of patent law, and suggests that technical features equivalent to those recorded in the claims should be considered when determining the scope of patent protection. At the same time, it is stipulated that a technical feature is equivalent to the technical feature recorded in the claim, which means that they realize basically the same function and produce basically the same effect in basically the same way, and the same effect is obvious to those skilled in the art.
Although the principle of equivalence has been applied in China's judicial practice for a long time, although China's patent law has been revised twice, the current patent law and its implementing rules do not clearly stipulate the principle of equivalence. In order to make up for the legislative defects, the Supreme People's Court extended the interpretation of Article 56 of the Patent Law, and clearly stipulated the principle of equivalence in Several Provisions on the Application of Law in the Trial of Patent Dispute Cases (Law Interpretation [200 1] No.21). 17 stipulates: "... the protection scope of the patent right shall be subject to the necessary technical features clearly recorded in the claims, including the scope determined by the features equivalent to the necessary technical features. Equivalent features refer to features that can achieve basically the same function and achieve basically the same effect by basically the same means as the recorded technical features, and can be associated by ordinary technicians in the field without creative labor. " It can be seen that China's judicial interpretation fully adopted the proposal of the Draft Treaty on the Coordination of Substantive Law of Patent Law (SPLT). According to the provisions of the judicial interpretation, the application of the principle of equivalence must meet two criteria at the same time: first, the objective criteria, and there must be no substantive difference in means, functions and effects between the equivalent features and the technical features clearly recorded in the claims, but only simple replacement or transformation. This is consistent with the principle of "function-mode-effect" put forward by the US Supreme Court. The second is the subjective standard, which ordinary technicians in this field can associate without creative labor, that is, it is obvious to ordinary technicians in this field. The so-called ordinary technicians are an imaginary group, neither technical experts in this field [13] nor people who don't understand technology. Generally speaking, people with junior and intermediate technical titles in this field can be regarded as ordinary technicians.
Regarding the criterion of equivalence, the Supreme Court of the United States proposed that whether two technical features are equivalent should be judged by whether they "achieve basically the same function in basically the same way and produce basically the same effect". The Supreme Court of Germany believes that the most important thing to judge whether it is equivalent is whether ordinary technicians in their fields can easily think of the accused infringing products or methods from the technical scheme defined in the claims, which is actually equivalent to the subjective standard in judicial interpretation in China. Judging from the expression of China's judicial interpretation, China adopts the unification of objective standards and subjective standards, and only when both standards are met can they be regarded as equivalent. Whether the equivalent judgment is a factual issue or a legal issue, there are differences among American judges, but most judges think it is a factual issue. The Supreme Court of the United States believes that the equivalent judgment is a matter of fact, and both parties can produce expert testimony, existing technical data and related documents. In the United States, an equal verdict is decided by a jury. In China's judicial practice, the judgment of equivalence is also a matter of fact. Whether it constitutes equivalence can be technically appraised by the appraisal institution [13][ 14], but the appraisal conclusion is finally determined by the judge. The judgment of the same infringement is an objective judgment, and the parties have enough confidence to foresee the judgment result of the court or the patent management authority, while the judgment of the equivalent infringement is different, including a certain degree of subjective judgment. Since judgment is subjective, it is better to have subjective judgment standards. The above-mentioned judicial interpretation in China has absorbed both the objective standards of the United States and the subjective standards of Germany, which should be said to be an ideal standard.
With the equivalent criteria, how to apply the criteria is also very important. When judging the equivalent infringement, both the United States Court of Appeals for the Federal Circuit (CAFC) and the German Supreme Court believe that it is necessary to compare the object of the alleged infringement with the technical scheme of the claim, and also compare the object of the alleged infringement with the existing technology to judge whether the object of the alleged infringement is closer to the patented technology or the existing technology. If it is closer to the existing technology, it cannot be regarded as equivalent infringement [14]. In fact, so is China. In China's judicial practice, the accusation of equivalent infringement can be defended. If it is closer to the known technology but different from the patented technology, it should not be considered as infringement.
There is also a time point problem in equivalence judgment. Some people think that the technical status of the patent application date or priority date should be taken as the benchmark, and German courts have adopted this view. The judgments of the United States and Japan are based on the technical status of the infringement date. In this regard, China's laws are not clearly defined, and there is no unity in practice. In my opinion, it is better to take the technical condition of the date of infringement as the benchmark, because the patent right has timeliness and should be equally protected within the validity period, which is fair to the patentee. With the development of technology, what ordinary technicians could hardly think of ten years ago may become common sense ten years later. Based on the technical status of the patent application date or priority date, the patent right may exist in name only in the later period of the patent validity period, which is unfair to the patentee and does not conform to the legislative purpose of the patent law.
Principle of estoppel in patent infringement litigation
Any waiver, restriction, modification or commitment made by the patent applicant and the patentee to the scope of protection of the patent claim for invention or utility model in the patent authorization and/or maintenance procedure is prohibited from going back on our word in patent infringement proceedings, and the people's court shall not interpret it as the scope of patent protection.
Legal basis: Article 56 of the Patent Law of People's Republic of China (PRC).
The principle of estoppel refers to the content that the applicant (later the patentee) explicitly gives up when modifying or stating his opinions in the process of patent application, and cannot be used as the scope of patent protection in infringement litigation. The main function of estoppel principle is to prevent the content abandoned by the patentee in the application process from being re-incorporated into the scope of patent protection.
In the process of patent application, in order to obtain the patent right, the applicant often restricts his claim according to the requirements of the examiner or actively, or emphasizes how important a technical feature in the claim is to determine the novelty and creativity (that is, the necessary technical features) of his application. However, when the infringement lawsuit comes, the patentee tries to cancel the restrictions made in the application, or puts forward that the technical features are dispensable (that is, unnecessary technical features) when applying the principle of equivalence, so as to expand its scope.
The principle of estoppel is widely used in patent infringement litigation in various countries. Although there is no provision of estoppel in China's patent law, some courts have set precedents in hearing and handling infringement cases, which shows that this principle has been recognized to a certain extent in China.
There are two main situations in which the principle of estoppel can be applied: first, the patentee modifies the claim during the application process; Second, the patentee made an opinion statement during the application process. However, it should be pointed out that not all amendments or statements of opinions to the claims in the application process will lead to the application of estoppel principle. Only in order to highlight the novelty and creativity of the invention required by the claim, or to make the examiner think that the invention is novel and creative, can the modification or statement of opinions have the effect of estoppel. The principle of estoppel does not apply to the modification or opinion statement that has nothing to do with the novelty and creativity of the invention, such as the modification to overcome the ambiguity of the claim and the modification to support the claim in the specification.
It is generally believed that the application of estoppel principle is contrary to the application of the same infringement, that is, it is not necessary to consider estoppel principle when the same infringement is constituted, but only the estoppel principle and the principle of equivalence should be considered when the same infringement is not established. Therefore, the principle of estoppel is only a restriction on the principle of equivalence, and its function is just the opposite of the principle of equivalence. The former ensures that the patentee is fully protected, while the latter ensures that the former is applicable within a certain limit and will not affect the public interest.
Known technology refers to the technology that has been published in domestic and foreign publications, publicly used in China or known to the public in other ways before the patent application date. Known technology is also called existing technology or existing technology .. In patent infringement litigation, it has become an accepted principle for the defendant to use known technology to defend. In our country, the defense of known technology has gone through the process from never accepting to conditional accepting.
I. Restrictions on the application of the defense principle of known technology
Before 10, the well-known technology defense principle "only applies to the same kind of patent infringement, not to the same patent infringement". According to this view, if the defendant wants to raise the defense of known technology in patent infringement litigation, the premise is to find out whether it is equivalent to patent infringement or patent infringement. If it is the same patent infringement, the defendant shall not use known technology to defend.
Second, reflect on the restrictions on the application of the defense principle of known technology.
In patent infringement litigation, the judge's job is to compare the object (product or method) accused of infringement with the patent claim or the pictures and photos of the design, and draw a conclusion whether it is infringement or not, based on the provisions of Article 56 of the Patent Law, that is, the scope of protection of the patent right for invention or utility model shall be subject to the content of the claim, and the scope of protection of the patent right for design shall be subject to the patented product of the design shown in the pictures or photos. In patent infringement litigation, if the defendant puts forward the defense of known technology, the defense of known technology shall be applied first, that is, the defense of known technology shall be applied first. Only after the prior art defense comes to a negative conclusion can the alleged infringement be compared with the patent claim as usual.
Third, the comparison between the alleged infringement and the known technology
After the defendant raised the defense of known technology, how did the accused infringer compare with known technology? The Beijing Higher People's Court stipulated in Article 10 1 of the Opinions on Several Issues Concerning the Determination of Patent Infringement: "When using the existing technology to defend infringement, the existing technology should be a separate technical scheme that existed before the patent application date, or a technical scheme that ordinary technicians in this field think is an obvious and simple combination of the existing technologies." That is, the contrast object of the alleged infringement is the known technology recorded in a technical scheme, or the obvious and simple combination of more than one technical scheme. That is to say, the non-simple combination of more than one technical scheme cannot be used as the comparison object. As for what is "obvious simple combination", the subject of its judgment is "ordinary technicians in this field". The author believes that the above comparison method is essentially the same as the novelty and creative judgment in the patent examination procedure. In the patent examination, if the comparison document recording the known technology clearly and completely discloses the technical scheme of the patent application, the technical scheme of the patent application lacks novelty; If two comparative documents recording known technologies are obviously combined, or one comparative document combines common sense to disclose the patent application technical scheme, then the patent application technical scheme lacks creativity. When using known technology to defend infringement, the object of comparison is the accused infringer. At this point, the accused infringer can assume that it is a patent application document. If the known technology recorded in the technical scheme discloses the technical scheme of the accused infringer, and the accused infringer lacks novelty compared with the known technology, that is, the accused infringer is the same as the known technology, it can be concluded that there is no infringement; Similarly, if the technical scheme of the accused infringer is considered by ordinary technicians in this field to be an obvious and simple combination of existing technologies, the accused infringer lacks creativity compared with the known technologies.
It is worth pointing out that whether the defendant files a request for invalidation of the patent right with the Patent Reexamination Board after filing a defense of known technology is entirely up to the parties concerned, and the people's court has no right to interfere. Moreover, the people's court shall examine the claim of the defense of known technology.
Source: Zhonggu Patent Network