Principle of Equivalence
Just as there are not many identical things in the world but there are many similar things, in judicial practice, it is necessary to completely imitate other people's patented products or completely copy other people's patents. Method infringement is not common, but what is more common is simply replacing or transforming one or more technical features in the claims of someone else's patent, so as to achieve the goal that can only be achieved by implementing someone else's patent. If the same principle applies in any case, then the interests of the patentee will not be effectively protected, and the patent rights obtained by the patentee in exchange for disclosing his inventions will be in vain. This is inconsistent with the patent system's encouragement to disclose inventions. contrary to its purpose. How to determine that the above behavior is patent infringement? Therefore, the principle of equivalents came into being.
The so-called principle of equivalents refers to replacing the necessary technical features in the patent claims to be protected with substantially the same way, means or product, so that the two produce substantially the same effect. In this case In this case, even though there are some non-substantial differences in form or technology between the two, they should be considered as infringement.
The country that played the greatest role in the creation and development of the principle of equivalents was the United States, which The history of adopting the principle of equivalence can be traced back to 1818. Later, this theory was adopted by Germany, Japan and other countries, and gradually became an internationally recognized theory. The modern equivalent theory was established by the U.S. Supreme Court in a case in 1950. The case proposed a criterion for judging whether equivalent infringement is constituted, that is, whether the various technical elements of the patented invention and the object of the alleged infringement are "substantially identical." way, achieve basically the same functions, and produce basically the same effects." The above criteria are called "function-means-effect" criteria.
The "Substantial Patent Law Harmonization Treaty (SPLT) Draft" incorporates the principle of equivalents into the scope of substantive harmonization of patent laws. It is recommended that: when determining the scope of protection of patent rights, the rights should be considered Technical features that are equivalent to the technical features recorded in the requirements. At the same time, it is stipulated that: a technical feature is equivalent to the technical feature recorded in the claim, means that they implement basically the same function in basically the same way, produce basically the same effect, and produce the same effect for the technology in the field to which they belong. It is obvious to the personnel.
Although the principle of equivalents has been applied in my country’s judicial practice for a long time, and although my country’s patent law has been revised twice, the current patent law and its implementation rules do not clearly stipulate the principle of equivalents. In order to make up for the legislative shortcomings, the Supreme People's Court expanded the interpretation of Article 56 of the Patent Law and clearly stipulated the principle of equivalents in "Several Provisions on the Application of Legal Issues in the Trial of Patent Dispute Cases" (Fa Shi [2001] No. 21) . Article 17 of it stipulates: “…the scope of protection of a patent right shall be based on the necessary technical features clearly stated in the claims, and shall also include the scope determined by features that are equivalent to the necessary technical features. Equivalent features refer to features that are equivalent to the necessary technical features. The recorded technical features use basically the same means to achieve basically the same functions and achieve basically the same effects, and are features that a person of ordinary skill in the field can associate without creative work." It can be seen that my country’s judicial interpretation has fully adopted the recommendations of the Draft Substantive Patent Law Harmonization Treaty (SPLT). According to the provisions of this judicial interpretation, to apply the principle of equivalents, two standards must be met at the same time: First, the objective standard, the equivalent features and the technical features clearly recorded in the claims must be insubstantial in terms of means, functions and effects. The difference is just a simple substitution or transformation. This is consistent with the "function-means-effect" criterion proposed by the U.S. Supreme Court; the second is a subjective standard that a person of ordinary skill in the field can associate without creative work, that is, for a person of ordinary skill in the field it is Obvious. The so-called ordinary technical personnel is an imaginary group. They are neither technical experts in the field,[13] nor people who do not understand technology. Generally speaking, people with junior or intermediate technical titles in this field can be regarded as ordinary technical personnel. .
As for the standard for judging equivalence, the U.S. Supreme Court has proposed that the criterion for judging whether two technical features are equivalent should be whether they "achieve basically the same functions in basically the same way and produce basically the same effects"; The German Supreme Court believes that the most important point in determining equivalence is to determine whether a person of ordinary skill in the field can easily think of the alleged infringing product or method based on the technical solution defined in the claim. This is actually equivalent to the judicial interpretation in my country. Subjective standards. Judging from the expression of our country's judicial interpretation, our country adopts the unification of objective standards and subjective standards. Only when both standards are met, it can be considered to be equivalent. There are differences among judges in the United States as to whether equivalent judgments are factual or legal issues, but most judges believe that they are factual issues. The U.S. Supreme Court believes that equivalent judgments are factual issues, and both parties can submit expert testimony, existing technology Information and related documents, etc., the equivalent judgment in the United States is made by a jury. In China's judicial practice, the judgment of equivalence is also a matter of fact, and whether it constitutes equivalence can be technically assessed by an appraisal agency [13][14], but the appraisal conclusion is ultimately determined by the judge. The judgment of identical infringement is an objective judgment, and the parties have enough confidence to foresee the judgment results of the court or patent administration agency, while the judgment of equivalent infringement is different, and it involves a certain degree of subjective judgment. Since there is subjectivity in judgment, it is best to have subjective judgment standards. The above-mentioned judicial interpretation of our country absorbs both the objective standards of the United States and the subjective standards of Germany. It should be said to be an ideal standard.
After having equivalent judgment standards, how to apply the judgment standards is also crucial. When making the determination of equivalent infringement, both the U.S. Court of Appeals for the Federal Circuit (CAFC) and the German Supreme Court believe that it is not only necessary to compare the object of the alleged infringement with the technical solution claimed, but also to compare the object of the alleged infringement with the technical solution claimed. Compare the existing technology to determine whether the object of the alleged infringement is closer to the patented technology or closer to the existing technology. If it is closer to the existing technology, it cannot be considered to be equivalent to infringement [14]. In fact, the same is true in our country. In our country's judicial practice, a public technology defense can be made against accusations of equivalent infringement. For technology that is closer to the well-known technology but has certain differences from the patented technology, it should be determined that it does not constitute infringement.
The judgment of equivalents still exists. Regarding the timing issue, some people believe that the technical status of the patent application date or priority date should be used as the benchmark. German courts adopt this view; the judgments of the United States and Japan use the technical status of the infringement date as the benchmark. In this regard, there is no clear provision in our country's laws and there is no uniformity in practice. The author believes that it is more preferable to use the technical status on the date of infringement as the benchmark, because patent rights are time-sensitive and should be equally protected during the validity period. This is fair to the patent holders. With the development of technology, things that were difficult for ordinary technicians to think of ten years ago may become common sense ten years later. If the technical status of the patent application date or priority date is used as the basis, in the later period of the patent's validity period, the patent will be The right may exist in name only, which is unfair to the patentee and inconsistent with the legislative purpose of the patent law.
The principle of estoppel in patent infringement litigation
During the patent grant and/or maintenance procedures, the patent applicant and the patentee make a written statement or record in the patent law in order to meet the requirements of the patent law. Any waiver, restriction, modification, or commitment made in the case statement to the scope of protection of the invention or utility model patent claims is prohibited in patent infringement litigation, and the people's court shall not interpret it to the scope of patent protection.
Legal basis: Article 56 of the Patent Law of the People's Republic of China
The principle of estoppel means that during the patent application process, the applicant ( That is, the content that the subsequent patentee explicitly waives when revising or stating opinions cannot be used as the scope of patent protection in an infringement lawsuit. The main function of the estoppel principle is to prevent content abandoned by the patentee during the application process from being re-incorporated into the scope of patent protection.
In the process of applying for a patent, in order to obtain the patent right, the applicant often takes the initiative to limit its claims according to the examiner's request, or emphasizes that a certain technical feature in the claim is important for determining the validity of the application. Novelty and inventiveness are important (that is, they are necessary technical features). However, when it comes to infringement litigation, the patentee tries to cancel the restrictions made in the application, or proposes that the technical features are dispensable when applying the principle of equivalents. (that is, non-essential technical features) to expand the scope of protection.
The principle of estoppel has been widely used in patent infringement litigation in various countries. Although there are no provisions on the principle of estoppel in my country's patent law, some courts have made precedents applying the principle of estoppel in the trial and handling of infringement cases, indicating that this principle has been recognized to a certain extent in my country.
There are two main situations in which the principle of estoppel applies: first, the patentee modifies the claims during the application process; secondly, the patentee makes a statement of opinion during the application process. However, it should be noted that not all modifications or comments made to the claims during the application process will lead to the application of the estoppel principle. Only modifications or statements made in order to highlight the novelty and inventiveness of the invention claimed in the claims, or to make the examiner believe that the invention is novel and inventive, will produce the effect of estoppel. Modifications or statements of opinions that have nothing to do with the novelty and inventiveness of the invention, such as modifications made to overcome the defect of unclear claims, modifications made to make the claims supported by the description, etc., do not trigger the principle of estoppel. Applicable.
It is generally believed that the application of the principle of estoppel is opposite to the application of the same infringement. That is, when the same infringement is constituted, there is no need to consider the principle of estoppel. It is only necessary to consider the principle of equivalents when the same infringement is not established and the principle of equivalents is considered. Consider the doctrine of estoppel. so. The principle of estoppel is only a restriction on the principle of equivalents, and its function is exactly opposite to that of the principle of equivalents. ***Benefit.
Publicly known technology refers to technology that has been publicly published in domestic and foreign publications, publicly used domestically, or otherwise known to the public before the date of patent application. Well-known technology is also called existing technology or existing technology. In patent infringement litigation, it has become a principle accepted by most countries in the world that the defendant uses publicly known technology to defend. In our country, public knowledge defense has gone through a process from non-acceptance to conditional acceptance.
1. Restrictions on the application of the common knowledge defense principle
Ten years ago, the common knowledge defense principle “only applied to patent infringements in the category of equivalents, but not to identical patent infringements” Condition". According to this point of view, if the defendant wants to raise a public knowledge defense in a patent infringement lawsuit, the prerequisite is to first clarify whether it is an equivalent patent infringement or an identical patent infringement. If the same patent is infringed, the defendant may not use publicly known technology to defend the infringement.
2. Reflect on the restrictions on the application of the common knowledge defense principle
In patent infringement litigation, the judge’s job is to distinguish the alleged infringing object (product or method) from the patent. Comparing the claims or pictures and photos of the design to draw a conclusion on whether there is infringement is based on the provisions of Article 56 of the Patent Law, that is, the scope of protection of an invention or utility model patent is determined by the claims. The content of the product shall prevail, and the scope of protection of the design patent shall be subject to the design patent product shown in the picture or photo. In a patent infringement lawsuit, if the defendant raises a common-know technology defense, the common-know technology defense will be given priority, that is, the common-know technology defense will be applied first. Only after a negative conclusion is reached in the defense of known technology, a comparison between the alleged infringement and the patent claims will be carried out in accordance with the routine.
3. Comparison between the alleged infringement and the publicly known technology
After the defendant raises the defense of public knowledge, how to compare the alleged infringement and the publicly known technology? The Beijing Higher People's Court stated in " Article 101 of the Opinions on Several Issues in the Determination of Patent Infringement (Trial Implementation)" stipulates: "When using existing technology to defend against infringement, the existing technology should be an independent technical solution that existed before the patent application date. Or a technical solution that is a simple combination of existing technologies that a person of ordinary skill in the field considers to be obvious." That is, the comparison object of the alleged infringement is a well-known technology recorded in a technical solution, or an obvious and simple combination of more than one technical solution. In other words, non-simple combinations of more than one technical solution cannot be used as comparison objects. As for what constitutes an "obvious and simple combination", the subject of judgment is "a person of ordinary skill in the field." The author believes that the above comparison method is essentially similar to the novelty and inventiveness judgment in the patent examination procedure. During patent examination, if a comparative document recording a well-known technology clearly and completely discloses the technical solution of the patent application, then the technical solution of the patent application lacks novelty; if two comparative documents documenting the well-known technology are obviously combined, Or a combination of a reference document and common knowledge discloses the technical solution of the patent application, then the technical solution of the patent application lacks creativity. When defending against infringement by using well-known technology, the object to be compared is the alleged infringing object. At this time, the alleged infringing object can be assumed to be a patent application document. If the publicly known technology recorded in a technical solution discloses the alleged infringing If the alleged infringing article lacks novelty compared to the known technology, that is, the alleged infringing article is the same as the known technology, so it can be concluded that it is not infringing; similarly, if the alleged infringing article is If the technical solution of the alleged infringing article is considered by those of ordinary skill in the field to be an obvious and simple combination of existing technologies, then the alleged infringing article lacks inventive step compared to the known technology.
It is worth pointing out that whether the defendant submits a request to the Patent Reexamination Board to declare the patent invalid after raising the defense of public knowledge is entirely up to the will of the parties, and the People's Court has no right to interfere; and, the People's Court has no right to interfere; The court should review the claim of public knowledge defense.
Source: Zhonggu Patent Rights Network