Discussion On The Application Of Doctrine Of Equivalent In Action For Infringement Of Patent

The doctrine of equivalent firstly generated from the judicial practice of United States Patent. Since theory of the doctrine of equivalent originated, it has been running for over 150 years. Development for the doctrine of equivalent of America is also changed by judicial decisions. In action for infringement of patent, for the most challenging problems, nothing is better than the application of doctrine of equivalent, i.e. if the accused product fails to be in the range of textual description concerning the claims of patented product, can the Court regard it as patent infringement in essence or not? And How to determine? For one person's infringement of patent by different means, it is a kind of fraud in essence. If to extend the claims at will, it will cause the legitimate Monopoly cross the border and hurt competitive economy. Attitude towards to doctrine of equivalent shall also tend to contract its scope of application, applicable restrictions of doctrine of equivalent is the clear proof.The application of doctrine of equivalent in action for infringement of patent in China has always been resting on old The Patent Law before 2009 as well as the understanding and identification to doctrine of equivalent in 2001 Beijing High Court Opinions on Some Problems In judgment of Patent Infringement (trial) and The Supreme People's Court on Laws Applicable to Try Patent Disputes Several Provisions. In new The Patent Law, Detailed Rules for the Implementation of the Patent Law and The Supreme People's Court on Interpretation related Several Laws Applicable Issues to Try Infringement of Patent Disputes issued and implemented in 2010, the restriction on application of doctrine of equivalent was made a further clear stipulation, which has prevented disputes and is a new reflection on development to application of doctrine of equivalent. At present, there are some discussions on application of doctrine of equivalent, but lacks of further discussion on clear stipulation of restrictive application in judicial interpretation of China. The application of doctrine of equivalent in action for infringement of patent, the concept and general situation of theoretical development of doctrine of equivalent are discussed in this paper, as well as the doctrine of equivalent concerning historic progress of its origin and development and deep economic and social reason is systematically inspected. By analyzing the root cause for the invention essence theory from England and invention theme theory from Germany eventually tending to the doctrine of equivalent, it is indicated that the establishment of scope of protection of patent rights should make suitable adjustment based on the Claims. About the theory of doctrine of equivalent in judgment of patent infringement of China, in the first Patent Law implemented in 1985, clause on scope of protection of patent is: The extent of protection of the patent right for invention or utility model shall be determined by the terms of the claims and the description and the appended drawings may be used to interpret the Claims. This clause was revised twice in 1993 and 2001 without any change in text content. From 1996 to 2000, two influential events happened: One is that intellectual property rights courts was established by the Supreme People's Court in October, 1996, mostly devoting to the second instance and retrial for major cases involving intellectual property rights and giving guidance to the work of the national intellectual property rights, which is regarded as a symbol of Chinese intellectual property rights trials having entered the professional road. The other is a series of important principles of patent trials are set in the trial of Warner-Jankinson case of the Supreme Court of the United States, which has a certain impact on patent judicial adjudication of China. In Opinions on Several Problems concerning the Determination of Patent Infringement (trial) issued by Beijing Higher People's Court, detailed stipulations on the application of doctrine of equivalent and the open closed principle in patent infringement have been made. On Laws Applicable to Try Patent Disputes Several Provision passed by The Supreme People's Court on June 19, 2001, doctrine of equivalent of patent infringement is made clear stipulation for the first time. Among of which, Article 17 stipulates that: The extent of protection of the patent right for invention or utility model shall be determined by the terms of the claims and the description and the appended drawings may be used to interpret the Claims stated by Paragraph One of Article 56 of The Patent Law refers to the extent of protection of the patent right shall be determined by scope confirmed by essential technical features clearly stated in Claims, also includes scope confirmed by features equal to these essential technical features. In The Supreme People's Court on Interpretation related Several Laws Applicable Issues to Try Infringement of Patent Disputes issued and implemented in 2010, there are not too much descriptions on doctrine of equivalent, however the applicable restrictions of doctrine of equivalent and existing technology defense are made a further illustration. Principles of contribution are the limitation to patent rights, the limitation to expand interpretation of Claims, and the result for the Patent Law realizing balance of individual benefit and the social public benefit in patent rights or taking into account both patent protection function and public function. Prosecution history estoppel originated in the Civil Law of the principle of good faith, while the doctrine of equivalent is to ensure the realization of substantive justice of inventors, which is similar to the fairness doctrine advocated in the Civil Law. As the king article, principle of good faith is prior to the fairness doctrine and any other basic principles of civil procedure. Therefore, prosecution history estoppel shall be prior to doctrine of equivalent, which reflects in the Patent Law and applicable effectiveness. The issuing of The Supreme People's Court on Interpretation related Several Laws Applicable Issues to Try Infringement of Patent Disputes on Jan. 1, 2010, it is clearly stipulated that unnecessary appointing rule will not be applied. Doctrine of equivalent is perfected gradually in China. There are still some problems in procedures of determination of tort when applying doctrine of equivalent, legislative improvement is badly in need of by doctrine of equivalent in our country, and judicial perfection of doctrine of equivalent in China needs to be strengthened.