Discussion On Issues Related To Functional Limit The Claims

The substantive examination of functional claim of the patent and the trial of such issue is based onthe explanation for the scope of protection. Based on the Guidelines for Examination, The StateIntellectual Property Office of China makes the explanation as all the feasible embodiment of thefunction which is record in the claim. And based on the fa shi [2009] No.21，the People’s Court makethe explanation as specific embodiments and equivalents of the technical characteristics defined byfunction in combination with the specification and the figures described. This inconsistency harmsthe interests of the patentee and the public, and causes the impact of the Patent Law.About this issue, The United States and the European Patent Office has already formed its own set ofmature provisions. The United States provides for a special way to write functional limit, and claimsubstantive examination without manual support review. The United States makes the protectionscope as the claim limitation cover the corresponding structure, material, or acts described in thespecification and equivalents thereof. The EPO claims that the use of the functional claim ispermitted only when the skilled in the art can achieve the technical means of the features of the casewithout paying any creative labor.Compare with the United States and the EPO, our country needs a Unified approach for the issue ofthe functional claim. The explanation of the protection scope of the functional claim should beinterpreted in accordance with the principle of compromise, and makes it as all the way to cover thefunction. We should provide that the use of the functional limited writing the invention is permittedonly when the invention point is either not the technical issues or the architecture of the functionalmodules. And substantive examination shall require the skilled in the art easy to find an alternativeembodiment. The functional limited claims trial is no longer suit for the use of the principle ofequivalents.With the proposed solutions, the State Intellectual Property Office and the Courts can be unified inthe issue of the explanation of the functional claim. And it is beneficial for patent holders and thepublic to know the protection scope of the functional claim.