Supreme Law Rules for the Determination of Intellectual Property Disputes | Application of the "Donation" Rule in Patent Litigation
Published:
2020-11-16
1. the source of the problem
Article 5 of the "Interpretation of Patent Disputes" that came into effect on January 1, 2010 stipulates the rules of donation, which is the application rules of the principle of equivalence and has been further clarified and improved. This rule means that for the technical scheme recorded in the specification but not in the claim, the patentee shall be deemed to have donated it to the public, and shall not claim in the patent infringement lawsuit that the above-mentioned donated content belongs to the scope determined by the equivalent feature. The contribution rule is essentially a restriction on the application of the principle of equivalence. The reason for this provision is to take into account the following circumstances: the patent applicant sometimes in order to easily obtain authorization, the claim adopts a more inferior concept, and the description and drawings expand its interpretation. In the infringement lawsuit, the patentee claims that the expanded part of the specification belongs to the equivalent feature, thus unduly expanding the scope of protection of the patent right. In fact, this is a "two-headed" behavior. The value of the patent system should not only reflect the protection of the interests of the patentee, but also maintain the publicity of the claim. Therefore, the establishment of the donation rules is conducive to maintaining the publicity of the claims and balancing the interests of the patentee and the public.
2. Supreme Court Judgment Rules
Trial court: Supreme People's Court
Case No.:(2020) Supreme Law Zhimin Zhong No. 981
Cause of action: Infringement of patent right of utility model
Referee Date: September 22, 2020
In this case, the disputes between the two parties over the interpretation of the patent claims involved include: 1. Claim 1 of the patent involved records the technical feature of "at least one plate forming an oblique angle with the horizontal plane and then connecting with a vertical plate to form a matrix". Sun Xixian appealed that the original judgment misinterpreted the "re" of the technical feature, thus wrongly excluding the "matrix directly formed by a mold" from the scope of protection. 2. The subject name of claim 8 of the patent involved is "special ecological block and its built-up green body". Sun Xixian believes that the original judgment on "the 'special ecological block' defined in claim 8 should refer to the 'special ecological block' defined in claim 1" is wrong.
Explanation of the technical features of claim 1 of the patent involved in the case "at least one plate is inclined to the horizontal plane and then connected with the vertical plate to form a base"
First, it is understood from the literal meaning and sentence structure of the claims. The meaning of "again" itself is "again; Repeat or continue; Take over the previous action". The word "again" connects the two actions, indicating that the two actions have sequence and are independent of each other. Claim 1 places "again" between "at least one plate at an oblique angle to the horizontal plane" and "connected to the vertical plate", indicating that "at least one plate at an oblique angle to the horizontal plane" and "connected to the vertical plate" have sequential order and belong to structures independent of each other, I .e. the vertical plate and the plate at an oblique angle to the horizontal plane belong to separately manufactured parts rather than integrally formed.
Next, it will be understood from the contents of the specification and the drawings. Article 5 of the "Interpretation of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Patent Infringement Disputes" stipulates: "For technical solutions that are only described in the specification or drawings but not recorded in the claims, the right holder is in the infringement of patent rights. The people's court will not support it if it is included in the scope of patent protection in a case of patent infringement dispute." According to the above provisions, if a person skilled in the art can understand by reading the specification that the technical solution disclosed but not claimed is specified by the patentee as an alternative to the technical features in the claim, then this technical solution is considered to be donated to society. In this case, the patent specification [0069] involved in the case records that there are two implementation methods for forming the matrix by mold molding in utility model example 1, I .e. directly forming the matrix by mold, and connecting the two to the matrix after making vertical plate 2 and plate 3 respectively, which is beyond the literal meaning of claim 1. According to the principle of donation, it should be determined in accordance with the law that the patent involved has donated the "integrated" technical scheme. In addition, those skilled in the art can determine that the manufacturing method of the substrate defined in claim 1 of this patent should be divided manufacturing in combination with the basic mode of interconnection recorded in paragraphs [0013]-[0018] of the invention content section of the patent specification, the forming method of the substrate in embodiment 2-34 recorded in the specific implementation mode of the specification, and the vertical plate and the basic structure of the plate shown in Figures 1-6, that is, the vertical plate and the plate are made first, and then the two are connected to each other to the base body.
Again, from the relevant patent patent examination file to understand. The reexamination decision No. 91487 records that in the reexamination procedure of the related invention patent application, Sun Xixian deleted the technical feature of "directly forming the matrix by mold" recorded in his revised claim, especially emphasizing that "the comparison document 1 does not disclose the characteristics of" making vertical plate 2 and plate 3 respectively first, and then connecting vertical plate 2 and plate 3 to each other into the matrix 1 ", this application" first do vertical plate 2 and plate 3, and then the vertical plate 2 and plate 3 connected to each other to the base 1 "this method" so that the green combination block components can be high-density overlap, and greatly reduce the special ecological block transport volume and cost, storage volume and cost ". It can be seen that Sun Xixian clearly ruled out the technical scheme of directly molding products with molds, and emphasized the beneficial effect of making plates first and then connecting to the base body in sequence.
Finally, it is understood from the purpose of the invention. The patent specification excludes the prior patent scheme No. CN2914640 in the background art, believing that the ecological block "directly stamped out of the mold" can only be afforested on one side ". "This patent enables the various components of the green composite block to overlap at high density, and greatly reduces the transportation volume and cost, storage volume and cost of the special ecological block", and this is also in line with the "The purpose of the utility model is to provide a special ecological block with very simple structure, very easy demoulding production, low cost, good effect and large-scale industrial mechanization production" stated in the specification.
According to the above analysis, although the embodiment of the patent in question records the scheme of integral forming, and also records the scheme of connecting the plate (3) and the vertical plate (2) to form the base body after manufacturing them respectively, the technical scheme of the above-mentioned first implementation method, that is, the vertical plate (2) and the plate (3) integrally forming the base body, is not written in claim 1, claim 1 protects only the second implementation method. Therefore, the technical solution constituted by "directly forming a matrix by a mold" as a technical means does not fall within the protection scope of claim 1 of the patent involved.
3. depth analysis
The provisions on patent disputes, which came into force on July 1, 2001, established the principle of equivalence in the determination of patent infringement, and made it clear that the scope of protection of patent rights includes not only the scope determined by the technical characteristics recorded in the claims, but also the scope determined by the equivalent characteristics. Since then, the applicable rules of the principle of equivalence have been further clarified and improved in the Interpretation of Patent Disputes. Equivalent features refer to features that achieve substantially the same functions and achieve substantially the same effects by substantially the same means as the recorded technical features, and can be associated by those of ordinary skill in the art without creative labor. In essence, the principle of equivalence extends the scope of protection of the patent in question to the part equivalent to the patent claim, and expands the scope of protection of the patent right. It is therefore necessary to limit it and prevent it from unduly expanding the scope of application of the principle of equivalence.
The donation rule is a legal principle in the determination of patent infringement, which can be expressed as that if the patentee discloses an implementation scheme in the patent specification, but does not include it or try to include it in the scope of protection of the claims during the approval process of the patent application, the implementation scheme is deemed to be donated to the public. When a patent application is granted, the patentee may not attempt to bring it back into the scope of protection of the claims through the doctrine of equivalents when claiming the patent right. The contribution rule, like the estoppel rule, is a limitation on the application of the principle of equivalence.
We should accurately grasp the new rules of the new judicial interpretation on all technical features, estoppel, donation, etc., do not accept the so-called redundant designation rules, fully respect the publicity and delimitation role of patent claims, ensure the certainty of the scope of rights, and provide the public with clear legal expectations.
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