The patent war party can win -- the supreme law judicial interpretation patent infringement equivalent principle limits the application of several cases.
Published:
2019-05-21
The second instance of patent disputes reverts to the highest law, which requires us to constantly study the principles of the highest law patent infringement determination. The scope of protection of a patent right shall be determined by the scope of all the technical features expressly stated in the claims, including the scope determined by the features equivalent to the technical features. The patent law determines that the same infringement of technical characteristics is the principle of equivalent infringement as auxiliary. The so-called equivalent features refer to the features that are basically the same as the recorded technical features, achieve basically the same functions, achieve basically the same effects, and the ordinary technicians in the art can associate without creative labor when the alleged infringement occurs. Prudent application of the principle of equivalent infringement is the basis for judicial determination in patent dispute cases, and the risk of litigation will increase significantly if the right holder relies on claiming equivalent infringement in individual cases.
The determination of patent infringement is mainly based on the same infringement, and the application of equivalent infringement is supplemented by the judicial interpretation of the Supreme People's Court, which has been strictly grasping the application of the principle of equivalence, fully respecting the publicity and demarcation of claims, and moderately and strictly grasping the applicable conditions of equivalent infringement to prevent excessive application of equivalent infringement. Therefore, the identification of equivalent infringement is only a reasonable expansion of patent protection, not an invincible weapon. As a right holder, we must have a clear understanding of this.
1. the limitation of the application of the principle of estoppel to the principle of equivalent infringement, the court may apply the principle of estoppel on its own initiative even if the alleged infringer does not defend it.
(I) the application of the principle of estoppel is without cause, as long as it is confirmed that restrictive modifications or statements have been made, it has no effect on whether causation actually occurred or whether it was adopted by the examiner or not.
The rule of estoppel means that when a party has done an act and is trusted by others, the party can no longer deny the act. Article 6 of the Interpretation of Patent Disputes provides for the rule of estoppel in the theory of patent law, which is also a restriction on the application of the principle of equivalence. The content that the patentee has waived in the authorization or confirmation procedure cannot be included in the scope of protection of the patent right through the application of the principle of equivalence. It should be noted that this article emphasizes the restrictive amendments or statements of opinion objectively made by the patent applicant and patentee. Such statements are unilateral statements and have no influence on the reasons for making them. Whether the amendment or statement is made on the initiative of the right holder or at the request of the examiner, whether it has a legal causal relationship with the conditions of patent authorization and whether it is finally accepted by the examiner, does not affect the application of the rule. The so-called "superfluous designation" principle is not accepted.
Is there no way back? Of course, if the restrictive modification or statement is explicitly denied, the people's court should determine that the modification or statement does not lead to the abandonment of the technical plan, and the principle of estoppel does not apply at this time. In this regard, the right holder should submit the relevant authorization to confirm the process of the instrument as evidence to confirm, full proof can resolve the corresponding risks.
The (II) court may, on its own initiative, apply the principle of estoppel on the basis of the facts already ascertained, without making it conditional on whether the alleged infringer defends.
The Supreme People's Court held that even if the alleged infringer did not claim the application of the principle of estoppel, the people's court may, on the basis of the facts already ascertained, apply the principle of estoppel to impose necessary restrictions on the scope of equivalence. (Cf. Shen Qiheng and Shanghai Shengmao Transportation Facilities Engineering Co., Ltd. Infringement of Utility Model Patent Dispute [Supreme People's Court (2009) Min Shen Zi No. 239 Civil Ruling]), that is, the court can actively apply the principle of estoppel based on the evidence in the case to achieve the balance between technological monopoly and innovation. No matter whether the accused infringer claims to apply the principle of estoppel, the people's court can still be based on the facts, by applying the principle of estoppel, the scope of equivalence should be limited to reasonably determine the scope of protection of patent rights.
The principle of 2. donation is a further limitation on the application of the principle of equivalence.
The use of the specification is limited to interpret the technical features described in the claims. The scope of protection of the patent right of the invention is subject to the content of the claims, and the description and the drawings can be used to interpret the claims. When the patentee and the accused infringer have different understandings of the technical features recorded in the patent claims, the relevant contents recorded in the patent specification can be used to explain the meaning of the technical features recorded in the claims.
However, in practice, in order to obtain authorization easily, the patent applicant often adopts a more inferior concept, and the description and drawings explain its expansion. 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 order to solve the patent applicant's "secret" practice, the donation rule has been established, which means that the technical scheme recorded in the specification but not in the claim is regarded as donated by the patentee to the public, and the above-mentioned donated content shall not be claimed to be within the scope determined by the equivalent characteristics in the patent infringement lawsuit. This theory has been accepted by judicial interpretation.
In a word, the application of the Supreme Law to the principle of equivalence needs to take into account the interests of the patentee and the public, not only to protect the patentee's technological contribution based on the existing technology, but also to promote the progress of science and technology, but also to prevent the infringer from simply replacing the emerging technology to avoid the occurrence of infringement; on the contrary, as the obligee, if it is necessary to file an equivalent infringement lawsuit, we should first review and examine whether restrictive amendments or statements of opinion have been made in the patent specification and authorization process, conduct a full legal risk analysis and assessment, and then formulate a practical strategy to protect the rights, so as not to overturn the water.
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