As my country's patent system becomes more and more perfect, it is very necessary to clarify the consistency of the protection scope defined by open claims and closed claims at each stage of the patent. In this way, the patentee and the public can be aware of the relevant regulations and ensure that the interpretation of claims can not only provide fair protection for the patentee, but also ensure reasonable legal stability for the public.
Under normal circumstances, an invention or utility model patent is inseparable from the concept of "scope of protection" at all stages such as the filing of the application, examination and the duration of the patent right. . In the application stage, the applicant requests to be granted the "scope of protection" as expressed in the claims; in the examination stage, the examiner examines whether the "scope of protection" expressed in the claims meets the conditions for authorization. During the existence of the patent right, The patentee enjoys the exclusive right to the "scope of protection" expressed in the claims.
According to Article 56 of the Patent Law, "The scope of protection of an invention or utility model patent shall be based on the content of its claims, and the description and drawings may be used to explain the claims." So, for the same technical features, is the scope of protection defined by the open-ended claims and the closed-ended claims the same? Based on the interpretation of the relevant provisions in the 2006 edition of the Examination Guidelines, the conclusion is that they The scope of protection is different.
In the 2001 version of the Examination Guidelines, the relevant provisions on open claims and closed claims are only related to combinations in Chapter 10 of Part II (Several Provisions on the Examination of Invention Patent Applications in the Chemical Field) mentioned in the section on property claims. However, in practice, the method for judging the protection scope of “semi-open” claims is the same as that for “open” claims. In addition, through extensive review practice, it has been found that “open and closed claims” are also generally applicable in other fields. In view of this, in the 2D06 version of the Examination Guidelines, two modifications were made to the relevant provisions on "open claims and closed claims".
First, the part about open and closed claims in the composition claims in Part II, Chapter 10, is modified to read:
“The composition claims are divided into open and closed claims. There are two ways of expression. The open type means that the components not specified in the claim are not excluded, and the closed type means that the composition only includes the indicated components and excludes all other components. Commonly used wordings are as follows.
(1) Open-ended, for example, "contains", "includes", "includes", "basically contains", "contains essentially", "mainly consists of..." ", "Mainly composed of...", "Basically composed of...", "Basically composed of...", etc., these all mean that the composition may also contain certain components not specified in the claims, Even if it accounts for a larger proportion in content
(2) Closed formulas, such as "composed of", "composed of", "the remainder is", etc., all indicate claims for protection. The composition consists of the indicated components and no other components, but may contain impurities, which are only allowed to be present in their usual amounts.
The modification here deletes the "semi-open rights". The concept of "claim" is adopted, and several expressions of the original "semi-open claims" are classified into "open claims".
Secondly, in the "Part 2" of the general chapter of claims Chapter 2 3 3 Provisions on Drafting Claims" adds provisions on open claims and closed claims,
"Generally, open claims should use "including", " The expressions "including" and "mainly consisting of" are interpreted to mean that they may also contain structural components or method steps that are not mentioned in the claim. Closed claims should adopt the expression "consisting of", which is generally interpreted to mean that there are no structural components or method steps other than those stated in the claim.
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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 method is improperly chosen, It has a great impact on the determination of the scope of protection of claims during the examination of patent applications and determination of infringement.
In the 2006 edition of the Examination Guidelines, "open claims and claims" were added to the general chapter of claims. The relevant provisions of "Closed Claims" unify the standards for claim review and evaluation in various technical fields. For practical operations in other technical fields other than the chemical field, applicants/agents will be more comfortable handling specific cases. There are rules to follow.
During the application stage, in order to obtain a wider scope of protection, applicants/agents often write claims that should be expressed in closed terms into open claims. , it is intended to include structural components or method steps not mentioned in the claim within its protection scope. For example, the technical solution consists only of A and B, in order to include components or steps other than "A and B". or method are included in the protection scope of the patent. When writing the claim, write "composed of A and B" instead of "includes A and B". Doing so will lay the foundation for the review stage of the application and the infringement determination process after authorization. "Foreshadowing".
During the review stage, there are two problems that need to be overcome. First, if there are technical solutions composed of "A, B and C" in the existing technology, it will affect the above rights. Claiming the novelty of the protection scope defined by "including A and B" requires paying an unnecessary price, while for the protection scope defined by the claim "comprising A and B", its novelty will not be affected by the present invention. There is a technical impact. Secondly, if there are actually no components other than those described in the specification, the use of open claims is a drafting defect. That is to say, for the claim "including A and B", The specification must also include features C or D in addition to features A and B. If not, it will need to be modified according to the actual situation during the review stage, thereby extending the review cycle. The author believes that in practical operations, it should be carefully considered in conjunction with specific technical solutions. , do not blindly choose open expressions
During the patent right survival stage, my country’s judicial practice is based on the Supreme People’s Court’s judicial interpretation of the “Regulations on Several Issues in the Trial of Patent Infringement Dispute Cases” (conference discussion draft). Among them, Article 15 clarifies the principle of comprehensive technical characteristics, that is, the principle of comprehensive coverage, in the determination method of invention and utility model patent infringement.
However, the determination method of the comprehensive coverage principle in paragraph 2 of Article 15 above is not included. Explanations are provided respectively for "open claims" and "closed claims". As long as the alleged infringement contains technical features that are the same or equivalent to all the technical features recorded in the claims, and also adds other technical features, The people's court should determine that the alleged infringing object falls within the scope of patent protection and that the alleged infringer has committed patent infringement.
Based on the current judicial interpretation of the Supreme People's Court "Provisions on Several Issues Concerning the Trial of Patent Infringement Dispute Cases", it should be understood that Article 15, paragraph 2, applies to "open claims" and "closed rights" Require". In this way, for the open claim "including A and B" and the closed claim "consisting of A and B", the basis for determination in the infringement determination process is the same, or it can be understood that their protection scope is the same .
Obviously, comparing the above understanding with the explanations about "open claims" and "closed claims" in the Examination Guidelines, we can see that the two have different opinions on "open claims". The interpretation of the protection scope of "closed claims" is the same, but the two interpretations of the protection scope of "closed claims" are inconsistent. Based on the "Provisions on Several Issues Concerning the Trial of Patent Infringement Dispute Cases", the interpretation is that the protection scope of closed claims Including all technical features and adding other technical features, based on the examination guidelines, it will be interpreted that the closed claim does not contain structural components or method steps other than those stated in the claim.
The author believes that the review guidelines are departmental regulations during the review stage of patent applications, and they should run through the process of patent application, review and patent right validity. For closed claims, the patentee seeks protection that does not contain structural components or method steps other than those described in the claim. If the principle of comprehensive coverage is adopted during the infringement determination process, it will violate the principle of estoppel. , which expands the scope of protection requested by the patentee when applying, is unfair to the public, and is inconsistent with the purpose of the patent law to adjust the balance of interests between the patentee and the public. The principle of comprehensive coverage is the basic principle for determining patent infringement. Its emergence was created by judges based on actual needs in order to ensure the fairness of the law. Our country's judicial practice has made long-term exploration and efforts for this, and it still cannot be said to be fully complete, but is still being continuously developed and improved.