determination of protection scope of functional technical characteristics

Publish Time:2017-08-30 Views:338

Three steps and nine points of determination of protection scope of functional technical characteristics

After infringement of equivalents become the most vague and flexible standard of patent infringement judgment, the determination of the protection scope of functional technical characteristics may become a new hot spot in recent patent litigation cases. The concept of functional technical features originated in the United States, usually called Functional Feature( functional attributes) or Functional Limitation( functional qualification). The description in Claim usually uses Means for or Step for, about the functional features, the protection range has been experienced in the United States, the process of "covering all" to "defining specific embodiment and their equivalents". The same is true in our country. The author briefly combed as follows.

Functional technical characteristics and authoritative legal provisions

Law [2009] No.21, Interpretation of the Supreme People's Court on Several Issues concerning the application of law in the trial of cases involving infringement of patent rightsⅠ, article IV, for the technical features expressed in terms of function or effect in the claims, the people's court shall combine instructions and drawings or the specific embodiment of the effects and their equivalent embodiment, determine the content of the technical features.

Law [2016] No.1, Interpretation of the Supreme People's Court on Several Issues concerning the application of law in the trial of cases involving infringement of patent rights Ⅱ, article VIII, functional attributes, it refers to a structure, component, step, condition, or relationship between, through its function in the invention creation or effect of the limited technical features. However, the ordinary technical personnel in this field can directly and unambiguously determine the specific embodiment of the above functions or effects only by reading the rights requirements.

As compared with the technical features described in the specification and the drawings for achieving the functions or indispensable effects referred to in the preceding paragraph. The corresponding technical features of the technical scheme for alleged infringement are based on the same basic means, to achieve the same function and achieve the same effect. And the ordinary technical personnel in the field are at the time of the alleged infringement, it can be remembered without creative labor and be able to associate. The people's court shall determine that the corresponding technical features are identical or equivalent to the functional features.

Explanation One relationship with Explanation Two

 Explanation One, clear functional features protection range, it shall be determined in accordance with specific embodiment and their equivalent embodiment. It is easy to understand or misunderstand the scope of protection is specific implementation and equivalent implementation methods. An example that we usually understand. But as you all know, examples the functional technical feature content will generally be described in detail. Then, if no distinction is made, all descriptions of functional technical features will be presented, which are similar to the manner in which technical features are necessary. Content that limits functional technical features will significantly narrow the scope of protection. Also inconsistent with the legislative intent of patent law, protection innovation and encouragement of innovation, nor is the applicant's true intentions. It will be caught in the wrong logic the public the more protection is less. We found the provision, it is only clear that the scope of protection should be determined in accordance with the specific implementation methods and the equivalent implementation methods. But it is not clear how to determine. Based on this, Explanation Two further defines the standard of functional technical characteristics, and the standard of its protection scope. making up for the deficiencies in  Explanation One.

The historical differences and status of the empowerment and rules of interpretation of tort procedures

In the prior authorization procedure, the interpretation of functional technical features is covered by the "cover all" rule. The tort procedure interprets the "specific plus equivalent implementation" rule for functional technical features. But according to the judicial tooth bite, the theory of tooth imprinting must be left behind. Authorization procedures must also begin and must follow the "specific plus equivalent implementation" to determine the scope of protection. The scope of the protection of functional technical features is limited to the specific embodiment of the implementation of the function and the equivalent methods disclosed in the specification, this has reached a consensus.

Three steps of defining the protection range of functional technical characteristics

When the functional technical features are involved in the determination of infringement, the following three steps shall be carried out:

First Step: Determine which technical features are functional technical features;

Second Step: According to the specific embodiment, the necessary technical characteristics of realizing the function are determined as characteristic groups;

Third Step: The scope of protection is the same or equivalent feature or the whole of the feature group.

The following three steps may also involve the following points of attention when conducting a tort comparison:

.confirm defining functional technical standard

Functional technical features, refers to the coordination relation between parts or parts of a product in a claim,or the steps of the method to use the technical features that are limited by the effects, functions, or effects produced in the creation of the invention.

Generally speaking, the following situations should not be considered as functional technical features:

Expressed in a functional or productive language and technical features of a technical term commonly known to ordinary technical personnel in their technical field, such as conductors, heat sink, binder, amplifier, transmission, filter and so on;

Using functional or effective language expressions, but it also describes the technical features of the corresponding structures, materials, steps and so on.

Ⅱ. Identify the technical features necessary to implement this function as content

Since the detailed embodiment generally describes the detailed technical feature content for realizing the function, if all the contents are included in the scope of functional features, it will significantly narrow the scope of protection. Therefore, only the technical features necessary to implement the function are selected and eliminate non essential technical features.

The scope of the protection of functional technical features is limited to the specific embodiment of the implementation of the function and the equivalent methods disclosed in the specification. In its form, it limits the scope of protection of patent claims. Limit the scope of protection to all technical features related to functional technical characteristics, then, the public will be easy to circumvent patents, functional features will become a stumbling block to patent protection, is not conducive to encouraging innovation. Therefore, it is necessary to limit the necessary technical characteristics of the implementation of the function.

.The necessary technical characteristics of functional technical characteristics are determined as a whole of the feature group, same or equivalent

After identifying the necessary technical characteristics to implement functional technical characteristics, the necessary technical features need to be treated as a whole. Of course, there may be multiple functional technical features in a claim, then each functional technical feature corresponds to a feature group, a plurality of functional technical features correspond to a plurality of feature groups. How to classify technical features, we can refer to the method of dividing the technical features which can basically realize independent functions.

When judging whether functional technical features are identical or equivalent to infringement, due to functional technical characteristics in the claim regard as an independent technical feature, its content is the necessary technical characteristics of the specific implementation of the group. It should not be applied at this time Interpretation of the Supreme People's Court on Several Issues concerning the application of law in the trial of cases involving infringement of patent rights, the full technical features of the seventh provisions cover the principle of full coverage. The technical features of the feature group are decomposed again. Avoid narrowing the scope of protection due to excessive decomposition.

. The superordinate concept should not be equated with functional technical features

Not because of technical features contain words or term of function or effect, it is directly classified in functional characteristics. If some of the common technical personnel in the field can be generally known or used, and some of the basic structures or steps of the language are to be understood, they should not be identified as functional features, such as conductor, catalyst, brake device, etc.

The superordinate concept supported by the specification of the claim can not be simply listed as functional technical features.

. The subordinate claim may be applied preferentially when the subordinate claim has described the functional features

If the subordinate claim describes the functional features, the concrete embodiment usually records the detailed technical features of the function. The author believes that if the subordinate rights have overcome the functional technical characteristics, the functional features of the subordinate claim can be read into the corresponding functional features as a whole. Of course, rights can be also claimed according to the subordinate claims. When the subordinate claim claims the right, many characteristics of the subordinate right can not be regarded as a whole characteristic group.

. Whether the electronic and computer software functional modules are more tolerant

Due to technical differences, it is sometimes difficult to describe electronic and computer software technologies through institutional description. The review guide also allows the writing of such patents to be modestly allowed to be recorded in a functional way. Therefore, this kind of patent should be cautious in recognizing the functional characteristics and should be given a moderate tolerance.