Determination of the scope of patent protection for several special expressions of product claims

-Discussion on the Examination Guide (X) 2008-2- 19 Generally speaking, all the features in the claim should be considered when determining the protection scope of the claim, but for the following product claims with special expressions, specific analysis is needed when determining their patent protection scope. I. Product claims with use function In practice, product claims with limited use are often encountered in subject names. The theme of such patents usually appears in the form of "products for ……", which is especially common in the field of chemistry. When determining the scope of protection of product claims, the use restriction feature of "used for ……" should be considered, but its actual restriction effect depends on the impact on the product itself. In addition, for such a claim, it should be considered whether the practical features in the claim imply that the product to be protected has a certain structure and/or composition. If the use means that the product has a specific structure and/or composition, that is, the use indicates that the product structure and/or composition has changed, the use must be regarded as a defining feature of the product structure and/or composition. For example, the "hook for crane" refers to the hook only suitable for the structure such as the size and strength of the crane, so the "hook for fishing" used by ordinary fishermen with the same shape is different from it, and the product of "hook for fishing" is not within the patent protection scope of "hook for crane". Another example is the claim with the theme of "mold for molten steel casting", in which the use of "mold for molten steel casting" has a restrictive effect on the theme of "mold"; As for "a plastic mold box for ice cube molding", its melting point is much lower than "a mold for molten steel casting", so it cannot be used for molten steel casting, and it is not within the protection scope of the above claims. On the contrary, if the use is determined by the inherent characteristics of the product itself, and the use characteristics do not imply that the product has changed in structure and/or composition, and have no influence on the claimed product or equipment itself, but only describe the use or use mode of the product or equipment, then the use characteristics have no restrictive effect. For example, "Compound X is used for ……………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………………… Product statement, including performance and parameter characteristics. In general, the product claim should be described by the structural characteristics of the product. However, under special circumstances, when one or more technical features in product claims cannot be clearly expressed by structural features, they can be expressed by performance features and parameter features. For such claims, it should be considered whether the performance and parameter characteristics in the claims imply that the product to be protected has a certain structure and/or composition. If the performance and parameters mean that the protected product has a different structure and/or composition from the reference document product, then this feature has a restrictive effect; On the contrary, if the technical personnel in this technical field can't distinguish the claimed product from the existing product according to its performance and parameters, it can be presumed that the claimed product is the same as the existing product, so the alleged infringing product that is the same as the existing product is not within the patent protection scope of this product, and its performance or parameter characteristics have no restriction on its patent protection scope. Even if there is evidence that the products accused of infringement have the same performance or parameter characteristics, patent infringement cannot be established on this basis. 3. Product claim containing preparation method features When one or more technical features in the product claim cannot be clearly characterized by structural features and parameter features, it is allowed to be characterized by method features. However, it must be noted that the protection theme of product claims characterized by method features is still the product, and its actual restrictive effect depends on the impact on the product itself. Such product claims often appear in patents with multiple independent claims, and the latter product claim refers to the former method claim. For example, "product A prepared by the method of claim 1". For such claims, it should be considered whether the preparation method leads to a certain structure and/or composition of the product. If a person skilled in the art can conclude that this method will inevitably make the product have a specific structure and/or composition different from that of the reference document product, then the preparation method features are restrictive. On the contrary, it is not. What needs to be added is that there are many other forms for the latter independent claim to quote the former independent claim. For example, "an apparatus for implementing the method of claim 1, …" a method for manufacturing the product of claim 1, … ";" A device comprising the components of claim 1, ... ";" The plug matched with the socket of claim 1, ... "and so on. For this kind of independent claim citing another claim, the characteristics of the cited claim should be considered when determining its protection scope, and its actual restrictive effect should finally be reflected in the influence on the protection theme of the independent claim. Summary: Under the above circumstances, whether various special "technical features" restrict the scope of patent protection depends on whether they affect the products protected by independent claims and whether they can distinguish the products protected by independent claims from existing products. In judicial practice, in the process of technical comparison between patent infringement litigation and patent invalidation procedure, whether the "technical characteristics" of the above-mentioned special products have a restrictive effect on the protected products and whether they should be included in the comparison scope should be proved and discussed by the party who puts forward the corresponding claim. Of course, the judiciary can also investigate and determine ex officio. Four. Product claims containing functional or effect features For product claims, the use of functional or effect features to define technical solutions should be avoided as much as possible. Only when a certain technical feature cannot be defined by structural features, or it is more suitable to define technical features by structural features than by functional features or effect features, and its function or effect can be directly and explicitly verified by experiments or operations specified in the specification or common means in the technical field, can it be allowed to define the invention by functional features or effect features. For the technical features with limited functions contained in the claims, it should be understood as covering all the embodiments that can realize the said functions. Therefore, by summarizing and expressing the functional characteristics, we can obtain a larger scope of patent protection. But at the same time, the patentee will also face a greater risk that the patent will be declared invalid.