When construing the patent claims to determine patent infringement in China, the principle of equivalence will be applied, that is, the protection scope of a patent right is not only determined by the technical features recorded in the claims but may also be determined by equivalent features. Therefore, the protection scope may be wider than the scope of the written claims when determining the protection scope of the claims in China.
For the purpose of protecting the patent right and maintaining the publicity and credibility of the claims, as well as balancing the interests of the patentee and the public, it is necessary to properly restrict the application of the principle of equivalence, so as to prevent the inappropriate expansion of the protection scope of the patent right, in addition to the estoppel doctrine, China also applies the donation(disclosure-dedication)doctrine.
According to relevant judicial interpretations, for technical solutions that are only described in the description or drawings but not recorded in the claims, the people’s court shall not support the inclusion of the technical solutions in the scope of patent protection by the right holder in the patent infringement dispute case.
Accordingly, if the patentee discloses a certain solution in the patent specification, but does not include it or attempts to include it in the claims of the patent application during the prosecution stage, the solution is deemed to be donated to the public, and after the patent application is granted, the patentee shall not attempt to reincorporate it into the protection scope of the claims through the principle of equivalence when enforcing the patent right.
The application of the donation(disclosure-dedication)doctrine has been found in many judicial precedents in China. E.g.:
Case Study
--In the Supreme Court retrial case of Zhejiang Lexueer vs. Chen Shundi, the patent in dispute involves a method for making a hot water bag. The judges believe that the exchange of steps 10 and 11 has indeed produced the technical effects of simplifying procedures, saving time, and improving efficiency as claimed by Zhejiang Lexueer. As a result, the replaced steps do not have equivalent technical features to steps 10 and 11 of claim 1 of the patent in dispute.
The description of the patent in dispute clearly states that steps 10 and 11 can be exchanged, but it is not included in the claims, so during the litigation, the exchanged steps cannot be included in the protection scope of the patent in dispute. Zhejiang Lexueer's claim, that the donation(disclosure-dedication)doctrine should be applied to steps 10 and 11, is supported by the Supreme Court. Therefore, the Supreme Court ruled that Zhejiang Lexueer's producing method does not infringe the patent rights in dispute.
Conclusion
There are substantially two reasons for the patentee to make technical solution donations: one is negligence, and the other is to make it easier for the patent application to be granted by claiming a smaller scope of protection. But in either case, the patentee should bear the legal consequences of the donation(disclosure-dedication)doctrine.
Thus, when drafting the patent, it is necessary to incorporate all possible technical solutions into the scope of protection. So in order to obtain a useful patent weapon, you need to pay attention from the drafting stage.
First, we should use precise wording as much as possible, highlight the innovation points that need to be protected, and establish the widest possible scope of protection.
Second, When drafting the patent applications, the drafters often refer to the specific product design and are limited by it, but the experienced patent drafters will consciously overcome the influence of specific product design, so as to take into account various possible design ideas and form the largest possible scope of patent protection.
Last but not at least, we will pay special attention, when narrowing the claims in the prosecution stage, not to abandon the valuable protection scope. See less -
