Haiwen IP Memo of March 24, 2016

New Judicial Interpretation by the Supreme People's Court Concerning Patent Infringement: Articulates Rules on Claim Construction to Strike an Optimal Balance between Patent Owners and the Public
On March 22, 2016, the Supreme People's Court ("SPC") issued the Judicial Interpretation on Several Issues Concerning the Application of Law on Patent Infringement (II) ("Interpretation II") which will take effect on April 1, 2016. Among others, it is notable that Interpretation II has been designed to strike a delicate balance between the interests of, on one hand, inventors who rely on the law's provision of a temporary monopoly as to their inventions, and on the other hand, the public who is encouraged to pursue innovations beyond the inventors' exclusive rights.
A patent is a type of property right, and like any other property right, its boundaries should be clear and certain. But the language is always imperfect to define what exactly should be included in the patent, not to mention the vagueness appeared from time to time. This gives rise to the necessity of clear and definitive claim construction rules. Article 59 of the Patent Law of the PRC lays out the fundamental principles of claim construction. It stipulates that the scope of protection of patent rights for an invention or utility model shall be defined by the contents of the claim, while any specification or appended drawing may be used to further explain the contents of the claim. Modern jurisprudence ideology believes that the rationale for an effective patent system is that a patent right is an exchange (quid pro quo) between the inventor and the general public. A patent may be treated like a contract. Thus, claims play important roles in defining the scope of rights and serves crucial notification purposes. On one hand, claims define the invention as to what exclusive rights a patent holder is entitled to. On the other hand, claims give notice to both patent examiners during prosecution and the general public, including potential competitors. In sum, claims illustrate to a patent holder as to what rights he actually owns, and to the public as to what rights the patent holder does not own.
In 2001, the SPC issued an interpretation regarding patent disputes. An inclusive "essential elements" rule was adopted and it was the very first time the doctrine of equivalents was being addressed by the SPC. In 2009, the SPC issued the Judicial Interpretation on Several Issues Concerning the Application of Law on Patent Infringement ("Interpretation I"), to first, replace the "essential elements" rule with an exhaustive "all elements" rule, second, emphasize the importance of the understanding of claims by a person of ordinary skill in the art in claim construction, third, introduce the rule of prosecution history estoppel, and fourth, stipulate the sequence of utilizing evidentiary sources for claim construction when language is vague. All such efforts by the SPC were made for the sake of balancing the interests of patent owners and the general public.
Interpretation II is another significant step moving forward. The timing of its issuance is rather sensitive as it is on the eve of the fourth amendment to the Patent Law of the PRC, and there is a noticeable tension between the administrative and judicial authorities concerning their respective roles in dealing with patent infringement. Interpretation II sets out more detailed rules on claim construction, indicating the SPC's reluctance to interpret patents overly broad and its will to underscore the importance of all features of patent claims. Articles 4 through 13 of Interpretation II together provide for a robust regime of claim construction.
Article 4: In the event there is any ambiguity in the claims, description or appended drawings, if a person of ordinary skill in the art is only able to come to one single interpretation, such interpretation shall be respected by courts.
Article 5: All elements in the preamble and characterizing portion of an independent claim and those in the recitation and defining portions of a dependent claim shall all have limitation effects.
Article 6: Divisional patents, relevant prosecution history as well as effective decisions and judgments on patent issuances are all relevant in claim construction.
Article 7: Claims of composition with the transition phrase "consisting of" are closed to additional elements other than normal impurities, with exception to Chinese herbal medicine
Article 8: If a technical feature of a patent is described by a functional claim, that feature is protected within the scope of the necessary solution (structures, materials, or acts) disclosed in the specification and drawings. Moreover, equivalents are identified as performing the same function in substantially the same way and obtaining the same result with no creative efforts by a person of ordinary skill in the art. Here, the "function/way/result" equivalency analysis is not entirely consistent with the analysis under the traditional doctrine of equivalents articulated in the SPC's interpretation in 2001. On the contrary, a more rigorous standard is applied to ascertain equivalents in functional claims. The doctrine of equivalents is premised on the language's imperfection to fully capture an invention. However, a broad doctrine of equivalents may undermine the notice function of claims and thus conflict with the statutory role of claims of defining rights and providing notice. Therefore, the doctrine of equivalents should be invoked only within a certain limit, especially with regard to functional claims as the drafter of a functional claim may tend to unduly utilize the functional claim to encompass all known ways that will facilitate the invention.
Article 9, Article 10: Specific use environment and producing process inform claim construction.
Article 11, Article 12: The opinion of a person of ordinary skill in the art should be probative with respect to sequence of procedures and the interpretation of quantity qualifications phrases in claims.
Article 13: If any amendment or statement made by a patent applicant for the purpose of narrowing the scope of the patent is not accepted by the patent office, the application's subject matter between the broader and the narrower language is not surrendered. We believe that the underlying rationale is that it is simply analogous to a deal between the patent applicant and the patent office in which an offer from one party is not accepted by the other.
Conclusion
In terms of claim construction, Interpretation II provides clarity and definiteness in determining the scope of protection for patents through giving sufficient weight to limitations of the claims. In particular, patent applicants and patentees will be burdened with a more stringent rule regarding claim drafting and claim construction. The general public may create and utilize technical solutions that are not claimed by patents, thus encouraging innovation as well as stimulating economic and technological development.
Interpretation II is issued at a time when the technological developments in patented inventions are becoming increasingly comprehensive and complex. Meanwhile, the dilemma of having the number of patented inventions ranked high globally while such inventions are of low quality is taken into account. In light of the rapid technological innovation as well as the social and economic challenges, claim construction in the patent system needs to be adjusted accordingly so that an optimal balance between the patent right holderMarch 24, 2016s and the general public can be reached.
March 24, 2016