Determination of the scope of patent protection
I. Determination of the scope of patent protection for inventions and utility models
(A) to determine the scope of protection of the object of interpretation
1. 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 can be used to explain the claim. However, the contents of the specification and drawings cannot be introduced into the claims.
2. The patent independent claim reflects the technical scheme of the invention or utility model patent as a whole and records the necessary technical features to solve technical problems, and its protection scope is the largest relative to the dependent claim. Therefore, when determining the scope of patent protection, the patent independent claim with the largest scope of protection should be stated.
3. A patent sometimes has more than two independent claims. According to the patent infringement litigation request put forward by the obligee, only the protection scope determined by the relevant independent claims is explained.
4. If the obligee sues the defendant for infringement according to the patent dependent claim, the court may also interpret and define the protection scope of the dependent claim.
(two) the interpretation principle of determining the scope of protection.
5. The principle of patent validity. What the plaintiff requests for protection must be a valid patent right protected by the patent law. Rather than inventions that have passed the protection period, been revoked by the China Patent Office, declared invalid by the Patent Reexamination Board or abandoned by the patentee.
6, determine the scope of protection of patent rights should adhere to the principle of the content of the claim. The principle of eclectic interpretation should be adopted when interpreting the claims in combination with the specification and drawings. To avoid adopting the principle of "peripheral restriction", that is, the scope of patent protection is exactly the same as that recorded in the written claim, and the specification and drawings can only be used to clarify some ambiguities in the claim; It is also necessary to avoid adopting the principle of "central restriction", that is, the claim only determines a general invention core, and the scope of protection can be extended to the scope that technical experts think belongs to the patentee's request for protection after reading the specification and drawings. Compromise interpretation should be in the middle of the above two extreme interpretation principles, and the reasonable and fair protection of the patentee should be combined with the stability of the law and the reasonable interests of the public.
7. The principle of regarding the technical content recorded in the claim as a complete technical solution. That is to say, the technical content expressed by all the technical features recorded in the patent independent claim should be regarded as a whole, and the technical features recorded in the preface have the same effect as those recorded in the feature part to limit the scope of patent protection.
8. When interpreting the claims, the technical content recorded in the claims shall prevail, not the words or wording of the claims. Its technical content shall be determined by referring to and studying the specification and drawings, and on the basis of comprehensive consideration of the technical field to which the invention or utility model belongs and the known technologies, technical schemes, functions and effects before the filing date.
9. The interpretation of patent claims should follow the principle of fairness, and it is necessary to fully consider the contribution made by the patentee to the existing technology, reasonably determine the scope of patent protection, protect the rights and interests of the patentee, and not infringe upon the public interest. Known technology should not be interpreted as the protection scope of patent right, nor should patented technology be interpreted as known technology.
(three) the interpretation method to determine the scope of protection
10. When determining the scope of patent protection, the text of the patent claim finally announced by the state authorized organ or the text of the patent claim determined by the legally effective reexamination decision, revocation decision or invalid decision shall prevail.
1 1, the patent specification and drawings can be used to fairly expand or narrow the scope of protection of the technical scheme defined in the claims, that is, to interpret the features equivalent to the necessary technical features into the scope of patent protection, or to define some necessary technical features with the patent specification and drawings.
12. If the patent independent claim is inconsistent or contradictory with the patent specification, the patent does not conform to the provisions of the fourth paragraph of Article 26 of the Patent Law, and the parties concerned shall solve it through the procedure of patent invalidation.
If the parties are unwilling to solve the problem through invalid procedures, the court should take the principle of patent validity and the principle of patent claim priority as the standard and the scope of protection defined in the patent claim as the standard, instead of "correcting" the technical content recorded in the patent claim with the contents disclosed in the specification or attached drawings.
13. If the technical features recorded in the patent independent claim are ambiguous, it can be clarified and explained in combination with the dependent claim or the specification and drawings.
14. If the dependent claim contains the technical features that should be recorded in the independent claim and are necessary to solve the technical problems of the invention (without the technical features, the technical scheme recorded in the independent claim is incomplete), then this patent does not conform to the provisions of paragraph 2 of Article 2 1 of the Detailed Rules for the Implementation of the Patent Law. The parties can solve the problem through the patent invalidation procedure.
If the parties are unwilling to solve the problem through invalid procedures, the court may, when determining the scope of patent protection, limit the scope of patent protection through corresponding dependent claims according to the principle of the parties' request.
The technical scheme of 15 is only recorded in the patent specification and drawings, but not reflected in the claims, so it cannot be included in the scope of patent protection. That is, the scope of protection of patent right cannot be determined according to the specification and attached drawings.
(1) If a technical scheme is fully disclosed, described and embodied in the patent specification, but not recorded in the patent claim, it shall be deemed that the technical scheme is not within the scope of patent protection, and it shall not be included in the scope of patent protection when interpreting the patent claim.
(2) If the technical contents recorded in the claim are different from those described or embodied in the patent specification, the contents recorded in the claim shall prevail, and the contents recorded in the specification and drawings cannot be "corrected".
(3) If the technical content disclosed in the patent specification and drawings is wide, but the scope of protection requested in the claim is narrow, in principle, the protection scope of the patent right can only be determined by the technical content in the claim.
16. If the independent patent claim and its dependent claims lack the necessary technical features to solve the technical problems of the invention or utility model, and only the necessary technical features are disclosed in the patent specification or the appended drawings, then the patent does not meet the provisions of paragraph 2 of Article 2 1 of the Detailed Rules for the Implementation of the Patent Law, and the parties concerned shall solve the problem through the patent invalidation procedure.
17. When the claim refers to a reference sign, the technical features in the claim should not be limited by the specific structure reflected in the drawings. The scope of patent protection should not be completely limited by the specific embodiments disclosed in the specification.
18, the abstract can not be used to determine the scope of protection of patent rights, nor can it be used to explain patent claims.
19, patent application documents and patent reexamination, revocation and invalidation documents can be used to prohibit the patentee from going back on his word when explaining the scope of patent protection.
20. Patent application documents and patent examination, revocation and invalid documents can be used to correct printing errors in patent documents. When typographical errors in patent documents affect the determination of the scope of patent protection, the original documents in patent files shall prevail.
2 1. There are obvious clerical errors in the claim or specification, which should be interpreted correctly according to the actual situation.
Second, the determination of the scope of protection of design
22. The scope of protection of the patent right for design shall be subject to the design of the patented product shown in the picture or photograph. A brief description of the design can be used to understand the protection scope of the design.
23. In an infringement lawsuit, the patentee of a design shall submit a "design summary" of its design, explaining the original part and content of its design protection; If the patentee has submitted the "Outline of Design" to the China Patent Office when applying for a patent for design, the patent document can be used as evidence for identifying the outline of design.
24. Where the patent right of a design requests to protect the color, the obligee shall provide relevant evidence recognized by the China Patent Office to determine the protection scope of the design. When necessary, the court shall check the color content in the archives of China Patent Office.
25. Where the patent right for design requests to protect the color, the color requested for protection should be regarded as one of the elements limiting the protection scope of the patent right for design, that is, in the infringement judgment, the shapes, patterns, colors and their combinations contained therein should be compared with those of the accused infringing product one by one.
26. The protection scope of the patent right for design does not extend to the known design content that existed before the application date or priority date of the patent for design.
27, the scope of protection of the patent right of design should exclude the design content that only plays the role of function and effect, but consumers can't see it in normal use or have no aesthetic effect on the product.
Here is a case.
-Also on the enlightenment to the patent protection of enterprises.
I. Brief introduction of the case
A factory v b company for patent infringement.
Plaintiff (appellant of first instance): a factory.
Defendant (appellee of first instance): Company B.
The plaintiff A Factory obtained a patent. Its independent claim is: Claim 1, and the soundboard bonding processing equipment of a mechanical performance device comprises a cutter for cutting a comb-shaped gap on a flat metal blind plate and a fixing device for clamping the processed metal blind plate. It includes five technical features. Claim 9: A method for bonding the soundboard of a mechanical sounding device is characterized in that the relative motion of the blind plate is ground with a flaky grinding wheel, and the keys with a specified cutting depth are processed; each grinding wheel of the tower-shaped cutter set is always embedded in the comb groove corresponding to the guide plate and reciprocates in the whole grinding and cutting process, and the blind plate is accurately positioned and reinforced on the guide plate. The purpose of this invention is to introduce a processing method and special equipment of pure mechanical guide cutting method, which makes the bonding processing of blind plate very simple, reduces the equipment and processing cost, but improves the quality of sound board. In addition, the patent specification also shows that during the processing, because the blind plate is not cut into cantilever shape by the rotating blade, it is stuck on the thick guide plate and fixed by the pressing block, and because the guide plate has a large mass, the blind plate will not produce even slight vibration during the processing. Therefore, the soundboard sound teeth processed by the equipment and the method of the invention have good molding quality and high production efficiency.
Accused infringing products are also equipment for producing mechanical sound devices. Compared with the patented technology, it lacks the technical feature that the metal blind plate is clamped on the guide plate with comb seam. Its blind plate is not clamped on the same type of stop element device as the patented technology. In other words, its stop element device is not under the blind plate, but on one side of the grinding wheel.
The Intermediate People's Court of a city ruled in the first instance that the defendant infringer Company B did not have a guide device on the equipment for producing the soundboard and lacked the necessary technical features in the patent claim, so Company B did not constitute infringement.
A factory refused to accept it and appealed to a provincial higher people's court. The court of second instance held that the stop element device in the accused infringing product and the guide plate of patented technology were not substitutes for equivalent technology. At the same time, because the patent specification has clearly excluded the blind plate from the claim, the blind plate is not fixed on the guide plate, but cut by the rotating blade in the form of cantilever, so the accused infringing product does not belong to the scope of patent protection. Company B did not infringe the patent right of Factory A. ..
A factory refused to accept it and applied for retrial. During the retrial, with the consent of both parties, the Supreme People's Court organized relevant professional and technical personnel to conduct technical appraisal. On the basis of appraisal opinions, he pointed out that the two important parts, the guide plate and the shock-proof limit plate, are similar in structure and basically the same in function compared with the patent. For ordinary technicians with mechanical expertise, differences in technical characteristics can be achieved without creative labor. Therefore, it belongs to the substitution of equivalent technology, and Company B constitutes equivalent infringement.
One of the focuses of the dispute in this case is how to determine the scope of patent protection, that is, whether the scope of patent claims can be limited by using the characteristics appearing in the examples of patent specifications.
Second, the theoretical dispute about the scope of patent protection.
The modern patent system came into being in the first half of17th century, and then, according to the needs of dealing with infringement disputes, the "patent specification" system and the "patent claim" system came into being one after another. The patent right is defined by the patentee (when he is still the "applicant") in the form of technical characteristics, and publicized in the patent literature. Without permission, no one else may enter this circle. Theoretically, the scope defined by the claim should be very clear, but in practice, it often becomes somewhat vague. On the one hand, when applying for a patent, the patentee hopes that the patent examination department will interpret the contents of the "patent claim" as narrowly as possible, so as to avoid classifying it into the existing technical field, so as to obtain approval for its patent application. On the other hand, the patentee who is granted a patent always wants the administrative organ or the court to interpret the content of the claim as broadly as possible in order to establish the infringement. In order to make this artificial "fuzzy area" as clear as possible, it is very important to explain the claim. For the interpretation methods of claims, the theoretical circle can divide claims into three types according to their functions in patent documents:
1. Central restriction principle
In the past, the central restriction principle, represented by the German patent system, required that the patent should be the center, and the purpose and nature of invention and creation should be considered in combination with the specification and drawings to determine the scope of patent protection. When interpreting the claims, we don't stick to the written records of the claims, but take the claims as the general inventive concept, and take the technical scope that ordinary technicians in this field think should be included after carefully reading the specification and drawings as the maximum limit of patent protection. The applicant's claims in the patent are mainly used to illustrate the creativity of his invention.
2. The principle of perimeter restriction
The principle of peripheral restriction is represented by the Anglo-American patent system, and the American patent law 1870 establishes the principle of peripheral restriction, which requires that the patent claim must clearly define the nature and protection scope of the patent right. According to this principle, it is required to determine the scope of patent protection in strict accordance with the written statement of the claims, and the scope recorded in the claims is the maximum of patent protection, and the interpretation of the claims is very strict. Claims are not technical descriptions of inventions, but legal documents describing the scope of patent protection. For example, when buying and selling land, the title deed is signed by both parties. The function of the claim is to draw the boundary line of this land as clearly as possible, rather than specifically describing what crops grow on this land and what the terrain is like.
In these countries, the patent authorities and courts generally determine the scope of patent protection and determine patent infringement according to the specific expression of the applicant's claim in the patent. Once the text of the claim is examined and determined by the Patent Office, the scope of patent protection is also determined. In this case, the applicant always uses the most general technical features and abstract language to express his invention and creation in the claims, which makes it a general concept. In this way, when interpreting these claims, the interpretation can often be expanded, thus obtaining a wider scope of protection.
3. The principle of compromise
This principle is a compromise between the above two principles, which is most typically expressed in the protocol of Article 69 of the European Patent Convention (1): "Article 69 should not be understood as the protection provided by a European patent is only limited by the strict literal meaning of the claim, and the description and drawings are only used to explain the ambiguities in the claim; Nor can it be interpreted that the claims only define a general invention core, which only has a guiding role. From the understanding of the specification and drawings by the technicians in this field, the protection scope can be extended to the protection scope expected by the patentee. We should proceed from the middle position of the above two extreme interpretations, so that the interpretation of the claims can not only provide fair protection for the patentee, but also ensure reasonable legal stability for the public. " According to this principle, the scope of patent protection should be determined according to the content of the claim, and the claim can be illustrated by the specification and drawings.
Third, the research conclusion
(1) The conclusion of relevant theoretical disputes.
The author believes that China should adopt the compromise principle to determine the scope of patent protection for the following reasons:
The principle of center limitation absorbs some technical elements around patent creativity (center) into the scope of claims. In countries that implement this system, the patentee does not need to describe his invention and creation abstractly in the claims, but only needs to truthfully state the essence of his invention and creation. This principle can give the patentee fair legal protection because of its wide scope of protection. However, due to the uncertainty of the scope of patent protection, the function of patent claims to inform the public is greatly inferior, which often damages the legitimate interests of the public, thus limiting the pace of technology to a certain extent.
To some extent, the principle of peripheral restriction meets the requirements of the accuracy of claims, adapts to the needs of the development of patent system, and is of great significance for ensuring the public to freely use existing technologies and freely develop unknown technologies in the public domain. This principle strictly limits the scope of protection and the exercise of private rights, and tends to safeguard public rights. However, peripheral restrictionism often falls into the dilemma of mechanical rigidity, because "the inventor can't foresee the right claim and future infringement form that the development of science and technology should be protected under the specific technical background", and the infringer can easily escape the tort liability through intangible modification, so that the interests of the patentee can't be effectively protected.
The two interpretation methods advocated by the central definition principle and the peripheral definition principle are diametrically opposed. The former can ensure the effective protection of the patentee, but it is not conducive to the public to accurately predict the scope of patent protection. The latter is convenient to ensure the legal certainty of the scope of patent protection, but it is not conducive to providing flexible and effective patent protection for patentees. The serious defect of both is that they hinder the good operation of the patent system.
The author believes that the intermediate position established in Article 69 of the European Patent Convention can not only provide good protection for the patentee, but also provide reasonable legal certainty for others, thus coordinating the balance of interests between the patentee and the public. In the early 1990s, in order to coordinate the related patents in the Paris Convention for the Protection of Industrial Property, the World Intellectual Property Organization (WIPO) organized experts from various countries to formulate the Patent Coordination Agreement. The main content of article 2 1 of the agreement is basically the same as article 69 of the European patent convention and its interpretation protocol, but it is much more detailed and specific. This shows that this principle formulated by the European Patent Convention has been generally accepted by the international community. The eclectic principle takes care of the interests of both the patentee and the public when determining the scope of rights protection, balances the interests of both, and provides a theoretical basis for applying the principle of equivalence to determine patent infringement, which should be said to be highly scientific.
Article 56 of China's Patent Law also refers to the statement in the Protocol of Article 69 of the European Patent Convention (1): "The scope of protection of the patent right for an invention or utility model shall be subject to the content of its claim, and the claim may be explained by the specification and drawings." Where "the specification and drawings can be used to interpret the claim" means that when determining the protection scope of the claim, the specification and drawings can be used to explain the meaning of the technical features recorded in the claim, clarify the ambiguity of the technical features and technical terms recorded in the claim, and can also be used to exclude the technical scheme that is the same as or obviously similar to the existing technology described in the specification and drawings from the scope of patent protection, and prohibit the patentee from going back on his word. It can be seen that the principle of compromise has also been adopted in China's judicial practice.
The author thinks that the following problems should be paid attention to when interpreting the claims by the principle of compromise in China's judicial practice: (1) If the patent independent claim is inconsistent or contradictory with the patent specification, the patent does not conform to the provisions of Article 26, paragraph 4, of the Patent Law, and the parties concerned should solve it according to the patent invalidation procedure. If the parties are unwilling to solve the problem through invalid procedures, the court should take the principle of patent validity and the priority of patent claim as the standard, and should not "correct" the contents recorded in the patent claim with the contents disclosed in the specification and drawings. (2) The technical scheme only recorded in the patent specification and drawings, but not reflected in the claims, cannot be included in the scope of patent protection, that is, the scope of patent protection cannot be determined according to the specification and drawings. (3) The patent specification and drawings can be used to appropriately expand or narrow the scope of protection of the technical scheme defined literally in the claims. Where there are multiple interpretations, the interpretation that is not conducive to the patent right shall be adopted. In any case, the court can only interpret the claim, but not rewrite it. (5) Patent documents other than the patent specification and drawings can be used as references for interpreting the claims. However, the abstract of the patent specification cannot be used to explain the claim, nor can it be used as the basis for determining the scope of patent protection. (6) In the patent specification, examples and specific implementation forms are important parts of the specification. The more examples, the higher the degree to which claims can be summarized. The description of examples and implementations can concretize every technical feature of patent claims and fully support the implementation of inventions and utility models. However, the interpretation of the claims should not limit the protection scope of the patent right to the specific embodiments and examples disclosed in the specification. It is pointed out in the supplementary draft of the Paris Convention on Patents coordinated by experts from various countries of the World Intellectual Property Organization that if a patent contains an embodiment of an invention or an example of the function or effect of the invention, the patent claim should not be interpreted or limited to these examples.
(2) The research conclusion of the relevant disputes in this case.
As far as this case is concerned, the determination of the scope of patent protection involved by the court of second instance is problematic. Because as mentioned above, the determination of the scope of patent protection should be based on the contents of the claims, and the description and drawings are used to explain the claims. Only when the content recorded in the claim is unclear can the specification and drawings be used to clarify the ambiguity in the claim, and the specification and drawings cannot be used to limit the scope of the claim that has been clearly recorded in the claim. Examples in the specification are an integral part of the specification and the best way to implement the patented technology, not the whole content of the patented technology. Examples cannot be used to determine the scope of protection of the patent right. If the patent contains examples of embodiments of the invention or functions or effects of the invention, the claims should not be interpreted as being limited to these examples. As far as this case is concerned, although the example part of the patent specification contains the words "the blind plate does not cantilever during processing", this feature is not written in the patent claim 1 or 9, so the scope of the patent claim cannot be limited by the features appearing in the example. The court of second instance limited the scope of claim 1 or 9 with the characteristics in the example of the instruction, so it is inappropriate to exclude "the blind plate cuts into the rotating blade in cantilever form" from the scope of patent protection in the alleged infringement method.
The author believes that the invention patent of "Bonding method and equipment for sound board of mechanical sound generating device" involved in this case belongs to two inventions of a general inventive concept, namely, the bonding method for sound board of mechanical sound generating device and the equipment specially designed to realize this method. In the claims of the invention patent, two independent claims are recorded respectively: Claim 1 is the independent claim of the equipment for realizing the sound board bonding method of the mechanical performance device; Claim 9 is an independent claim of the sound board bonding method of mechanical playback device. According to patent claim 1, the necessary technical features of bonding processing equipment can be decomposed into five items. According to patent claim 9, the necessary technical features of the bonding method can be decomposed into three. As long as the bonding method of the sound board of the mechanical playback device used by the accused infringer or the equipment manufactured to realize the bonding method covers the necessary technical features recorded in patent claim 1 or claim 9, or belongs to its equivalent, it belongs to the protection scope of patent right and constitutes patent infringement. The retrial court followed the above analysis in determining the scope of patent protection, which should be said to be appropriate.
(C) Enlightenment to the patent protection of enterprises
Through the above analysis of this typical case, we have solved the controversial focus in this case and made clear how to determine the scope of patent protection in China's judicial practice. But at the same time, we should also see the practical problems reflected by the specific legal issues involved in this case: as the main body of economic benefits brought by patent rights, how should enterprises expand the protection scope of patent rights as much as possible, so as to protect the economic interests of enterprises as much as possible?
The author believes that when applying for a patent, enterprises should write high-quality patent claims and specifications according to the provisions of China's patent law and the requirements of the compromise principle adopted in China's judicial practice, so as to clearly and concisely express the scope of protection. Specifically, it includes the following requirements:
(1) The patent claim shall state the scope of patent protection on the basis of the specification. The claims should be based on the specification, that is, the claims should be supported by the specification, that is, the technical scheme required by each claim in the claims should be the technical scheme that the technicians in this field can obtain or summarize from the contents fully disclosed in the specification, and shall not exceed the scope disclosed in the specification.
(2) The claim shall specify the scope of protection. This mainly includes two aspects, one is that each claim should be clear, and the other is that all the claims that constitute the claim should be clear as a whole.
(3) The claim shall briefly explain the scope of protection. Not only should each claim be short, but all claims as a whole should also be short.
(4) The specification shall give a clear and complete description of the invention or utility model, which shall be subject to the realization of the technical personnel in the technical field. If the description gives a clear and complete description of the invention or utility model, so that technicians in the technical field can realize it, the technical content of the invention or utility model has been fully disclosed.
(5) Paragraph 4 of Article 26 of China's Patent Law stipulates that the claim shall be based on the specification, explaining the relationship between the claim and the specification, that is, the specification shall support the claim.
(6) The contents of the manual should be standardized in words and clear in sentences, and the written expression should strive to enable the technical personnel in the field to correctly understand the technical content of the invention or utility model.
To sum up, when determining the scope of patent protection, the interpretation of the claim should adopt the principle of compromise, that is, the scope of protection of the invention or utility model patent should be based on the content of the claim, and the description and drawings can be used to explain the claim. Only by taking this as a standard and writing high-quality claims and instructions according to the above requirements can enterprises clearly and concisely express the scope of protection and protect their own interests.
You should know something through analysis.