Report Q175

in the name of the Chinese Group

The role of equivalents and prosecution history in defining the scope of patent protection

Questions

1. If your country has a doctrine of "equivalents", what is it and how are equivalents assessed?

Is it provided for by statute or case law?

China has adopted the patent system since April 1, 1985. By now there haven't been definite regulations about "equivalents" or "file wrapper estoppel" in the Patent Law of China.

On August 25, 2000, China amended the Patent Law for the second time, after which the
Supreme Court of China published the juridical interpretation of " Several Provisions of Application of Laws in Inquisition of Patent Dispute Cases". Article 17 of this juridical interpretation reads: The saying that "the extent of protection of the patent right for invention or utility model shall be determined by the terms of the claims. The description and the appended drawings may be used to interpret the claims" prescribed in the first paragraph of Article 56 of the Patent Law means that the scope of protection should be defined by the necessary technical features clearly recorded in the claims, including the scope decided by means that are equivalent to these necessary technical features.

Equivalent features refer to those that are able to realize substantially the same function and achieve substantially the same result as the recorded technical features by means of same fundamental method, and the normal technical people in this field can associate the features without any creative work". This judicial interpretation for the first time defines that the People's Court is entitled to the application of equivalents to determine infringement of patent rights.

In China, equivalents means that in comparison the infringing object's technical feature with the necessary technical feature recorded in the claims of the patent right, apparently one or several of features are different, however, essentially the former one has replaced, by using the same method or technical means, one or several necessary technical features belonging to the patent and got substantially same effect as the patent. As far as this situation is concerned, the infringing object should be considered that it has not been out of the scope of protection provided by the patent. Therefore, it should still be judged as an infringement of patent right.

The technical feature of the infringing object which is in appearance different from the patent technique, or the technical feature that replaces the technical feature in the patent technical plan, is viewed as the equivalent of the necessary technical feature of patent technical plan.

When judging infringements of patent rights, the People's Court mainly considers the following points:

1.1. The "equivalency" in equivalents refers to the equivalency of technical function
and role in the technical plan's specific features, not the two patent plans of the infringing object and the patent. However, when judging infringements, we must compare as a whole the infringing object that has used equivalent with the patent to decide whether their technical results and effects are identical. Suppose a feature of some necessary technique of the substituting technical means and the substituted patent technique proves that they have the same technical effect, however, the invention's whole technical effect is different from the patent due to the substitution of some technical feature, then we still can't judge the invention as an equivalent.

1.2. The technical competence of the personnel skilled in the art should be well
considered in judging whether the alleged invention's technical feature is the
equivalent of the necessary technical feature of the patent technique. If the former
has adopted equivalent means or has used equivalent that is obvious and can be
easily thought of by a person skilled in the art, it should be judged as having used
equivalent. And only by now can we pronounce infringement according to equivalents
and vice versa.

1.3. The accused alleged invention's object and technical effect are substantially the
same to the patent technique after it substitutes the necessary technical feature
of patent by the equivalent means. The objective of invention and technical effect
are indispensable parts of the invention's content. When determining the scope of
protection of patent, we should at the same time consider the invention's objective
and technical effect other than its technical features only. If the accused has used
equivalent means that has resulted in substantially the same objective of invention
and technical effect of the accused alleged invention and the patent technique,
we should pronounce infringement according to equivalents.

2. Can the scope of patent protection change with time, or is it fixed at a particular date? If it is fixed, at what date (e.g. priority, application date or date of alleged infringement)?

In China, currently there is not any regulations concerning the scope of patent protection change with time or not.

3. Does the prosecution history play a role in determining the scope of patent protection? If so, how does it work? In particular:

a) Is there "file wrapper estoppel" and if so in what circumstances does it arise?

b) Is there a difference between formal (e.g. oppositions) and informal (e.g. discussions with examiners) actions in the patent office?

c) Is there a difference between actions taken by the patent office and by third parties?

As for the file wrapper estoppel, it is the principal of honesty and credibility of the General Rule of the Civil Law of the PRC in patent judicature. In the process of patent protection,

it is very frequent that the court applies the rule of "file wrapper estoppel" to judge
whether the defendant's activity constitutes an infringement or not.

Patentee's explanation for the claim should be constantly the same when judging the
patent claim's validity and the constitution of infringement of patent claims. The patentee is prohibited to ask for a narrower explanation or an explanation of the patent claim in narrow sense in order to get the patent, however, a broader explanation or an explanation of the claim in broader sense in order to testify other's infringement in infringement litigation. In other words, a patentee is not allowed to go back on his words about the commitments, approvals or desertions in the documents coming and going between him and the Patent Office. This is the principal of "file wrapper estoppel" in the patent judicature of China. It is one of the important principals in litigation of infringement of patent claims.

Any inventor that applies for a patent tries to get a relatively broader scope of protection.

However, it would encroach the interests for the public if the scope of protection fixed by the claim is too broad. Therefore, sometimes the patent applicants have to follow the opinion of the examiners in the Patent Office and make descriptions on the over-extended scope of protection some vague technical features and similar technical plans and features in claims in order to get a patent right. Sometimes they have to desert or amend some technical content as well as make some commitments, otherwise they are likely to fail in getting the patent. A patentee is not allowed to reuse the content he has deserted during the application process. That means, a patentee should keep his promise and not to break it.

Put it more detailed, in China file wrapper estoppel means that in the prosecution of applying, examining, canceling or invalidating a patent, the patentee gets a patent right by making a commitment of limitation or partly disclaiming the protection through literal announcements or amending the documents in order to ensure the patent is new and creative.

The court should prohibit bringing the excluded or deserted content again into the
scope of protection of the patent right when applying the rule of equivalents to determine the scope of protection of patent.

In practice, file wrapper estoppel can be used only when the following conditions are fulfilled:

(1). The commitment of limitation or the desertion made on the technical feature should be clearly presented and recorded in the patent files; (2). The limited or deserted technical content has already functioned in essence on conferring the patent or on maintaining its validity.

The posing of a request by the defendant is the precondition of the application of file wrapper estoppel in judgment of infringement of patent claims. The defendant is responsible for offering the corresponding testimony testifying the plaintiff has gone back on his words. In case that contradiction exists between application of equivalents and file wrapper estoppel, meaning that the plaintiff insists on the defendant's infringement of patent rights based on equivalents while the defendant maintains that his activity didn't constitute infringement of patent rights based on file wrapper estoppel, priority should be enjoyed by file wrapper estoppel.

4. Is there any way the scope of claims can be limited outside prosecution, e.g. by estoppel or admissions?

In China, when a patent is conferred by the Patent Office after examination of its application, the scope of protection provided by the claim is fixed accordingly. The prosecution of invalidation is the major way to limit the scope of patent protection. In cases of patent infringement proceedings, the same result can be achieved through explanations of the claim, the file wrapper estoppel and the principal of refuting by prior art known to the public.

5. Do you have recommendations for harmonization in this area?

It is worth and necessary to discuss the issue of harmonization in this area. This is because, at this time, different courts in the same country may make different judgments on the same patent infringement case and different countries may apply different standards I the judgment of patent infringement cases. Further, in most occasions, it is quite difficult to apply the doctrine of equivalents. There are many issues that need to be solved. Before harmonization, there should be a common understanding with respect to the definition of the following: (1) what are the purposes of applying the doctrine of equivalents; (2) what are the pre-conditions of applying the doctrine of equivalents; (3) who is entitles to assess the equivalents, the persons skilled in the art, the ordinary technical person, the technical expert or somebody else; (4) how to evaluate the "balance between the patentee and public" or equity when applying the doctrine of equivalents; (5) what elements should be considered before applying the doctrine of equivalents; (6) what is the effect of
applying the doctrine of equivalents, enlarging the scope of the claims or the scope of the patent right; (7) what are function, way and result and the relations therebetween; (8) what is pioneer invention and improved invention; (9) how to consider the differences of level of technology between developing and developed countries; and many others.