The Research On Patentee’s ‘specific Exclusion’

The Supreme People’s Court issued The Supreme People’s Court’s explanation about the application of law in patent infringement disputes, which illustrates that claim adopts the specific words or phrases such as “at least” or “at first” to limit the numerical characteristics as well as the step of sequences in Article 15. Besides, it also clarifies that ordinary technical personnel in this field holds the opinion that the obligee lays much emphasis on the specific roles played by certain terms in order to limit and define. And those who advocate the different technology that belongs to the same characteristics shall not be supported by people’s court, which demonstrates the intention of people’s court to establish the specific exclusion in patent infringement disputes in China.Specific exclusion refers to the patentees specially limit the scope of protection of patent claims and give up part of technical features in patent filing so that the technical features consciously abandoned by people cannot be reintegrated into the protection scope of patent in future patent infringement suits. There are two modes of specific exclusions around the world, one is British and American mode, the other is Japanese mode. The major difference between these two modes lies in the restrictions on patentees, which can be well illustrated in Britain and America that they pay much more attention to the real intention of patentees about whether to expressly abandon orimplicitly abandon the technical features in self-statements in their patent documents, including claims, specifications, patent review files. And such kind of intention is interpreted by ordinary technical personnel who have read a lot patent documents in related fields. However, in Japanese mode which can also be called presumptive specific exclusion, the restrictions on patentees are stricter. The presumptive specific exclusion is the summary of scholars in our country who think that such rule is one of the forms of specific exclusion which is called “limitation on consciousness” in Japan. Presumptive specific exclusion refers to the opinion that ordinary technical personnel in related field think that certain transformational technical features can be easily brought into the protection scope of patent claim, from which we can presume that patentees give up the transformational technical features if they don’t do what has mentioned above. The nature of presumptive specific exclusion is to ask patentees to bring all the transformational specific exclusions into the patent claim before applying, which is approximate to America’s predictability.These two modes both have research values because there are a lot of problems in our judicial practices which involve many cases in British and American mode. According to the certain case and the Article 15 of exposure draft, both the scope of application and the structure of specific exclusion in our country are narrower and stricter than that of Britain and America. The author holds that the scope regulated in Article 15 is too much narrow. The ideal effect can not be achieved and the patentees can easily get around the regulations if the specific exclusion is only applied to the two claims mentioned under the application of some key words such as “at least”. Therefore, the purpose of establishing the specific exclusion cannot be achieved. Then, according to the regulations in exposure of draft and the judicial cases in China, specific exclusion in China refers to the specific exclusion of claims while the specific exclusion in Britain and America include more about specifications. At last, as for presumptive specific exclusion in Japan, there are more stringent regulations. Almost all the transformational technical features not brought into the claim before the applicationdate are considered as the content of specific exclusion, which is much closer to the predictability of America. There are some contradictions in the attitudes of Supreme People’s Court although our judicial practices have involved such kind of cases. And there are still a lot of discussions on this topic in the theoretical cycle.In this paper, the second chapter points out that whether patentees form the specific exclusion in Britain and America is much more flexible than that of China through the research on a series of cases of the U. S. Court of Appeals for the Federal Circuit and some classic cases of UK High Court. In the first place, the U.S. Court of Appeal for the Federal Circuit do not pay attention to the fact that whether patentees have used such kind of key words such as “at least” when it judges whether patentees have given up part of technical features. Certainly, using these key words may constitute specific exclusion but it is not absolute. And in some cases, the use of “at least” may not constitute specific exclusion. In the second place, CAFC do not restrict the scope of specific exclusion to both the methods and the numerical range of claim type. Nevertheless, the range is very broad because the claim types such as the architectural features, the structural arrangements and the materials may constitute the specific exclusion, which is the same with the practices of UK High Court. In the last place, among the practices both in CAFC and UK High Court, the specification is the important evidence, which can be well shown in over ten cases of CAFC of which three cases are about the specific exclusion of the specification. And the teaching materials about patent law in America also mention this point. Besides, patent review files may lead to specific exclusion, the recognition of which is strict because patentees must give it up expressly. Although there are a few differences between the doctrine of prosecution history estoppels and the recognition about whether the patentees have abandoned part of the technical solutions, the meaning of both is similar to each other.In this paper, the third chapter talks about the presumptive specific exclusion by studying both the theories and the judicial practices in Japan and America. Certainly,the discussion about it in America is related to the word “predictability” while the research about it in China adopts the “presumptive specific exclusion” summarized by scholars in our country. It can be found through researches that the Supreme Court of Japan has acknowledged presumptive specific exclusion. In four related cases which involve presumptive specific exclusion, there is only one case where the courts of Japan don’t confirm that patentees have abandoned related technical solutions, which has reached an agreement with Japanese scholars. In America, presumptive specific exclusion has never reached the mainstream although it has been mentioned in some cases. Supporters think that the public announcement of claims can be intensified, the ambiguity of the principle of equality can be reduced and the function of protection and public announcement can be balanced in this way. However, the opponents hold the opinion that it is difficult to carry out and it is also contradictory to the equivalent concepts, which actually leads to greater ambiguity in judicial practices. In a recent case, the application of such regulation has been officially negated by CAFC due to the obvious conflicts with the principle of equality.In the fourth chapter, the author comes up with some advice according to the judicial practices abroad. At first, the author thinks that the use of certain words such as “at least” cannot be the only basis to constitute specific exclusion. The author suggests that China should adopt the attitudes of CAFC in the case of Bicon that the scope of specific exclusion is extended not only to the use of explicit determinative language which is similar to the function of the phrase “at least”, but also to the fact that patentees describe a certain structure that excludes other structures apparently different from what has described. The reasons are as follows. On one hand, China is still a developing county in high-end technology. In order to keep up with the international advanced level, the researchers in our county need a relatively comfortable environment. Therefore, the protection scope of patent shall not be too wide. On the other hand, there is a considerable gap between the patent writing skill of China and that of America. And the patent system in China doesn’t providepatentees with enough opportunities to make up for the writing mistakes. Thus, the flexible methods adopts by America doesn’t fit our country. And these two ways mentioned are very practical in judicial practices.Besides, the author also suggests that the specification can be a basis for the specific exclusion because, as a matter of fact, the claim cannot always be clear. So it is very necessary to explain the claim in order to determine the scope of patent claim. The public read the released patent literatures under the circumstance of the whole patent documents, so it is actually difficult for them to digest the materials by reading the patent claim only. As for people’s understandings, reading the whole patent document is very different from reading the patent technical solutions. When applying to the specification to explain the claims, people should be cautious not to prescribe a limit to the claims, which is similar to the author’s suggestions that only the part expressly abandoned by patentees can constitute specific exclusion.At last, the author proposes that China hold a negative attitude towards presumptive specific exclusion which just protects the technology after the patentees have applied it instead of providing the identical help to the patentees as for the transformational technical features existing before the application date. Meanwhile, it is too strict for the patentees due to the impossible mission that the patentees should incorporate the transformational technical features already existing in the world into the claim. On the contrary, the potential infringers can easily take advantage of loopholes in law, which will bring about the inequality. In addition, the principle of equality plays its role in making up for the writing mistakes patentees have made. Even America where there exists high patent writing level and opportunities for patentees to make up for the mistakes doesn’t stand in this position, let alone China, a country lacks high level of patent writing skill.