Consideration Of Prior Art In Prior Art Defense

The prior art defence is the most common way in patent infringement litigation,in which the accused infringer claims non-infringement by proving that the technology he has implemented is prior art.The case of a small electric submersible pump with a welded motor casing was selected as a guiding case,and the gist of the decision is instructive for the trial of prior art defence cases in China.This case could lead the identification of the scope of prior art in the existing technology defence.The scope of prior art is of great significance to the determination of novelty and prior art defences,as it is applied at the examination stage of a patent and in infringement proceedings.However,the courts in infringement proceedings usually do not distinguish the scope of prior art,resulting in an improper expansion of the scope of prior art.There are two specific situations,one is the combined use of prior art,where a technical solution combining a prior art with a customary means or common knowledge is considered prior art;the other is the determination of implied disclosure of prior art,where the prior art disclosure includes both explicitly documented and implied technical content.The combined use of prior art is a product of practice and has no specific definition.Article 67 of the Patent Law provides for the prior art defence principle,but judicial practice has interpreted prior art expansively.Courts have allowed prior art to be combined with,for example,common knowledge or customary means in the prior art defence.This expansion has no basis and goes beyond the scope of prior art.This article seeks to sort out the various situations in existing decisions from the substance of the prior art and explore the limits of combined use of prior art in conjunction with the separate and contrasting principles of novelty determination.The determination of implied prior art disclosure is directly related to the scope of the prior art,and determining the content of the implied art is in fact determining the outer edge of the scope of the prior art.The doctrine of implied disclosure is a very common issue in US law,but almost no one in China’s theoretical community has mentioned it,and there are many problems with its application in practice.Firstly,neither the Patent Law nor the Implementing Rules of the Patent Law in China contain any provisions relating to implied disclosure.Secondly,there are no specific principles and criteria for the courts to determine the application of implied disclosure,and they tend to make subjective judgments based on similar provisions in the Patent Examination Guidelines,which has the problem of hollow reasoning.This article seeks to demonstrate the principles and standards to be followed in the determination of implied disclosure,to sort out the judicial logic of the decisions in such cases,especially in light of the cases at the level of the Supreme People’s Court,and to make suggestions for improving the determination of implied disclosure and further clarifying the scope of prior art in prior art defences.The first chapter introduces the case of "Small Electric Submersible Pump with a Welded Motor Housing" and the main points of the judgment,which leads to the question of the scope of the prior art in the prior art defence.Two types of expansion of the scope of prior art are introduced,namely,the combined use of prior art and the implied disclosure of prior art.The second chapter focuses on the determination of the combination of prior art in the prior art defence,discusses the limits of the determination of the combined use of prior art in the context of the case,and makes suggestions for improving the determination of the combination of prior art.The third chapter focuses on the determination of implied disclosure of prior art,examining the principles and criteria for the determination of implied disclosure of prior art from the theory of implied disclosure,discussing whether the prior art drawings in this case impliedly disclose common parts in the light of the case law,and proposing suggestions for the improvement of implied disclosure.The conclusion chapter concludes the findings of the previous study and briefly reviews the decisional thinking of the guiding case.