The Judicial Application Of The Principle Of Prosecution History Estoppel

Prosecution History Estoppel is an important restrictive principle of equivalent principle in the judicial practice, both of which exist for mutual interdependence and restriction. Comparatively speaking,theoretical research on Prosecution History Estoppel has not been intensive enough, and judicial application is not clear enough as well. At the same time,the development period of China’s patent system period is relatively short, and there is not enough experience in China’s patent system. Therefore, no legislation has been set up in the patent infringement determination in terms of how to apply the principle of Prosecution History Estoppel to provide arigorous, specific and operational standard in China. In order to solve the problem of judicial application of Prosecution History Estoppel and perfect thejudicial application of the principle in our country, this paper discusses and studies from the following couple of aspects.The introduction section,beginning with “a dispute of infringement of the patent for utility model between Chung Yu Electronics(Shanghai) Co., LTD and Shanghai Nine Eagles Electronic Technology Co., LTD”(hereinafter referred to as the Chung Yucase), briefly illustrates the problems of the case to be clarified, and introduces both the role and the legislation situation of the principle ofProsecution History Estoppel in China.The body, as the main part of this article, consisting of six parts, introduces the result of the judgment of the case, namesa couple of questions concerning legal application, analyzes the problems and finally puts forward some applicable Suggestions. Finally a conclusion is made.The first part is mainly about the result of the judgment of the case andthe controversial issues in order to introduce the questions.The second part analyzes whether unmodified patent claim can lead to the application of the principle of Prosecution History Estoppel. It elaborates that unmodified patent claimdoes not lead to apply the principle ofProsecution History Estoppel based on subjective intention, the principle of good faith, rights protection scope and technical characteristics, etc.The third part discusses whether adding new technicalcharacteristics should be considered abandonment. It makes a discussion based on from“adding new technical characteristics can be a modifying mode” to “how adding the technical characteristics and modes like thatisconsidered abandonment”,and finally a conclusion is made, namely once adding the technical features can lead to narrowing the scope of the patent protection, it is considered “abandonment”.The fourth part is about whether the court can takeinitiative to apply the principle of Prosecution History Estoppel. In this part, the author discusses the feasibility and necessity for the court taking initiative to apply the principleand further discusses the rationality of two rules after the principle is applied.The fifth part illustrates under what circumstances Prosecution History Estoppel can be applied in the process of invalidation when patent claim modificationtaking place, then further points out that only a technical deletion can naturally lead to the application ofProsecution History Estoppel.The sixth part summarizes problems of Prosecution History Estoppel in the judicial application and puts forward some applicable suggestions, so as to perfect the application ofProsecution History Estoppel in our country.