Research On The Identification And Protection Of Functional Limitation Claim

Research on the scope of protection of functional limitation claim has become a hotspot in the field of Patent Law. Especially, after the announcing of the "Interpretation on the Trial Application of Several Issues in the Patent Infringement Dispute Case" by our Supreme People’s Court in 2009, which takes a completely different rule on the interpretation of protection of functional limitation claim compared with "Guidelines for Patent Examination" by our Intellectual Property Office in 2010, the difference has become a direct conflict between patent authorization system and patent infringement litigation system, bringing confusion to the application of functional limitation claim.The solution to any problem must trace back to the origin. Similarly, the first thing must to be cleared about when do research on the scope of protection of functional limitation claim is how to define and identify the functional limitation feature. Therefore, this paper adopting the progressive research methods and starting from the definition and identification of functional limitation feature, studies on the scope of protection of functional limitation claim step by step, whose content can be divided into two parts. First of all, this paper based on a comprehensive analysis and comparison on the relevant domestic and international provisions, theories and cases about functional limitation, extracts several issues and takes them as the research object. Secondly, according to our countries conditions, based on the analyses and summaries above, the author do research on the definition and identification and the scope of protection of functional limitation claim, starting from the current overall logic system of our country, thus putting forward conclusions and suggestions to perfect current patent system in China.This paper is divided into four chapters structurally, using the research method of proposing the issue, analyzing the issue and solving the issue. Based on the comparative analysis of the relevant domestic and overseas situation, the author gives the following conclusions and suggestions to China’s functional limitation system.First of all, the author starts from the static definition and the dynamic identification to study on the functional limitation feature. For the former, the author concludes that the definition of functional limitation feature should be concisely. Namely, a positive universal definition for the essence of functional limitation feature is enough and there’s no need to repeat the opposite meaning of it. Functional limitation feature refers to the technical feature which expressed by the function or the effect in the claim. In addition, one thing should be cleared is that only "function" or "effect" could be the essence of functional limitation feature, here the difference between "affect", "function" and "effect" should be aware of. What’s more, "function" is not always identical to the "effect", and sometimes the identification of "function" and "effect" should not only based on the literal meaning of the claim, but also the corresponding description and drawings. On the extension of functional limitation feature’s definition, the author points out that the things correspondent with "function" or "effect" can only be "direct technical feature", rather than the "specific components". Moreover, about the word "only" in the definition, the author concludes that it refers to the performance of functional limitation feature, rather than the using conditions. Therefore, for a technical feature, even if the using of functional limitation is improper, it shall not be excluded from functional limitation feature, as long as its performance consistent with the definition. For the latter, based on the analysis and summary of the relevant provisions of our country, three legal documents refer to the "identification exception" clause of functional limitation feature. In this regard, the author divided them into three categories, which are widely-known terms, generally known superior concept and both functional and non-functional limitation feature. Based on the analysis, the author concludes that for the identification of functional limitation feature, strictly accordance with the existing definition is enough, and there’s no need to specifically set an "identification exception" clause, whether in the authorization procedures or in the judicial proceedings.Secondly, for the scope of protection of functional limitation claim, based on the comparison of relevant regulations, practices, history in our country and in America, Germany, Japan and other European countries or regions, exploring the inherent logic behind their legal system, the author re-interprets the rules in our authorization procedures and the judicial proceedings by using several point of view such as meaning, legal nature, legal effect, original intention, and points out that the rule for determining the scope of protection of functional limitation in the authorization procedures and the judicial proceedings should not be united, no legal and practical basis either. And the application of "Guidelines for Patent Examination" would not expand the reasonable scope of protection of functional limitation, or to an extent of no boundary. The thing which should be paid attention to is the strict examination of novelty, creativity, and usefulness, as well as the support by specifications. Instead, direct applying the rule in the judicial proceedings to the authorization procedures will result in the "second bite an apple", thus losing the significance of examination. Therefore, in view of the difference between administrative and judicial work, for the issue of how to reasonably determine the scope of protection of functional limitation, the two do not have to unite the provisions, but unite the understanding thereof. The difference between "understanding" and "interpretation" should be pointed out, as well as the difference between "authorization" and "infringement judgment". The two just have to do work base on their own provisions, and pay attention to the self-consistent of whole law logic system and the link with each other by the same substantive legal effect. Furthermore, the "rule" and "timing" of equivalent judgment of functional limitation should also be studied. Through comparative analysis of domestic and international regulations and judicial cases, the author further adjusts the "function-means-effect" rule and pointed out that the shortage of current "obvious" standard, advising that "Foresee-ability" should be introduced as an additional standard to find equivalent infringement. In this regard, the one to find equivalent infringement should at least have the ability equally as the person ordinarily skilled in the art. For the technical levels of patent holder higher than the ordinary level, the higher prevails. For the "timing" of finding equivalent of functional limitation, the author concludes that it should be distinguished with the doctrine of equivalent, and adopt "filing date" standard, to ensure the protection of functional limitation be limited at the reasonable scope.In addition, the author puts forward the following suggestions. In fact-finding, the author advices that the duty to find and prove the equivalent which belongs to the fact-finding problem should be bored by the parties, as well as the literal infringement, obvious or foreseeable, to reduce the technical burden on the judge. In evidence, the parties should be allowed to appeal to exterior evidence when the interior evidence is insufficient to support their claims. In technique, expert testimony or expert opinion could be referred to when necessary.