On the Influence of Different Expression Methods on Patent Infringement Judgment - Open Expression vs Closed Expression

[Introduction]

In the trial of patent infringement disputes, the premise of infringement determination is to determine the protection scope of the patent right involved. According to the Patent Law, the protection scope of the patent right for invention or utility model is subject to the content of the claims.

Claims need to describe, generalize and define technical solutions through language. Different expressions may lead to differences in meaning, and may even affect the protection scope of the claims, ultimately affecting whether the authorized patent can be effectively protected. For example, claims with open expression and claims with closed expression have different protection scopes.

[Text]

Open claims and closed claims are a group of corresponding claim types, the difference between the two is that the expression is different. The provisions on the two are mainly reflected in the relevant provisions of the second part of the Patent Examination Guidelines, Chapter 2 and Chapter 10.

More specifically, the Guidelines for Patent Examination, Part II, Chapter 2.3:

"Generally, open-ended claims should be expressed as'comprising ',' comprising ',' consisting mainly of... ', which can be construed as also containing structural components or method steps not mentioned in the claim. Closed claims should be expressed as'consisting of...', which is generally construed as not containing structural components or method steps other than those stated in the claim."

"Guidelines for Patent Examination, Part II, Chapter 10" Several Provisions on the Examination of Patent Applications for Inventions in the Chemical Field "specifically provide for composition claims:

"Composition claims are divided into two expressions: open and closed. Open means that components not specified in the claims are not excluded from the composition; closed means that only the indicated components are included in the composition and all other components are excluded. Common phrases for open and closed are as follows:

(1) Open-ended, such as'containing ',' including ',' containing ',' substantially containing ',' essentially containing ',' mainly composed of... ',' substantially composed of... ',' substantially composed of ', etc., which all mean that the composition may also contain certain components not indicated in the claims, even if it accounts for a large proportion in content.

(2) Closed: for example, 'composed of...', 'composed of', 'the balance is', etc. These all mean that the claimed composition is composed of the specified components, and there are no other components, but it can contain impurities, which are only allowed to exist at the usual content. "

From the perspective of the wording itself, the scope of protection of closed claims is usually smaller than that of open claims (as shown in the figure below).

However, in the field of chemical invention patents, the scope of protection obtained by using two expressions does not appear in the inclusion relationship shown in the figure aboveThe reason is that under normal circumstances, adding a structural technical feature to the technical solution of an invention or utility model in the mechanical field will not destroy the invention purpose of the original technical solution.

On the contrary, due to the mutual influence of chemical components, adding a component to the technical solution of the invention in the field of chemistry often affects the realization of the original technical solution, and the protection scope of the two may not coincide (as shown in the figure below).

Therefore, in order to obtain a wider scope of protection, it is preferable to write the claims in the patent application documents for inventions in the mechanical field or for utility models in an open-ended manner, but it is quite common to write the claims in the patent application documents for inventions in the chemical field in a closed-ended manner.

The above analysis is based on the Guidelines for Patent Examination, which are the basis for examination in patent authorization and right confirmation procedures. So, in patent infringement litigation, does the court adopt the same rules of interpretation for open and closed claims? How should one judge expressions not listed in the Guidelines for Patent Examination? The following will be analyzed through several cases.

Case 1:

In the case of [ (2009) Mintizi No. 20] (published in the Gazette of the Supreme People's Court, No. 7, 2010), the Supreme People's Court held that: "Patent Claim 1 is a composition claim, which adopts the expression'pharmaceutical made from the following raw materials by weight '.

This expression of claim 1 does not belong to the form of closed expressions such as'composed of... 'and'composed of' listed in Section 4.2.1 of Chapter 10 of Part II of the Examination Guidelines (2006 Edition) formulated by the State Intellectual Property Office. In addition, from the perspective of the limited relationship between claim 1 and claim 2, claim 1 is not a closed expression.

Claim 2, which is subordinate to claim 1, defines the medicament as a powder or an oral liquid. In general, the dependent claims are further definitions of the independent claims rather than expansions. In the dependent claim 2, it is further defined that the medicament in claim 1 may be a powder or an oral liquid. Obviously, claim 2 also includes other components other than active calcium, zinc gluconate, glutamine or glutamic acid. Claim 1 may include other components other than active calcium, zinc gluconate, glutamine or glutamic acid.

Therefore, claim 1 should be understood as an open-ended claim. "

In general, the Supreme Court determined that the patent claims involved were open-ended claims based on two reasons: first, the expression of the claims involved did not belong to the closed-ended expression listed in the Patent Examination Guidelines; second, according to the limited relationship between claim 1 and claim 2, claim 1 is not a closed expression。

The author believes that this judgment method is biased：

On the one hand, the expression of the claims in question is neither a closed expression as listed in the Patent Examination Guidelines, nor an open expression as listed in the Patent Examination Guidelines. Considering that examples alone cannot exhaust all expressions, it is not appropriate to make a mechanical judgment on whether it belongs to one of the expressions listed in the Patent Examination Guidelines.

On the other hand, it is a bit like putting the cart before the horse to infer the type of claim 1 from the limiting relationship between claim 1 and claim 2. To determine whether a claim is an independent claim or a dependent claim, the essence should be judged from the scope of protection defined by the claim: if the claim is a further limitation of the independent claim it references, it is a dependent claim; if the claim describes another technical solution juxtaposed with the independent claim it references, it should be recognized as an independent claim even if it has the form of a dependent claim.

This view is also reflected in the Patent Examination Guidelines. Article 4.2.1 of Chapter 10 of Part II of the Patent Examination Guidelines, "Certain Provisions on the Examination of Patent Applications for Inventions in the Field of Chemistry", stipulates that "when using open or closed expressions, it must be supported by the description.

For example, the composition A + B + C of the claim cannot be used if the other components are not actually described in the specification. It should also be noted that a composition independent claim is A + B + C, if the following claim is A + B + C + D, then for the open A + B + C claim, the one containing D is a dependent claim; for the closed A + B + C claim, the one containing D is an independent claim.

Case 2:

In the case of [ (2019) Liao 01 Minchu No. 36], the patent claims involved in the case used the expression "made according to the following formula (by weight percentage) ", which is basically the same as the expression of the patent claims involved in the case of [ (2009) Mintizi No. 20]. The plaintiff claimed that the claim was an open-ended claim, and quoted the views of the Supreme People's Court in the aforementioned Supreme People's Court Gazette Case [ (2009) Mintizi No. 20].

However, the Intermediate People's Court of Shenyang City, Liaoning Province held that the patent claims involved in the case could not reach the conclusion of open claims from the expression of words to the application of interpretation rules, so the claims involved should be determined to be closed composition claims. Mainly based on the following three points:

1、From the perspective of writing, the text expression of the patent involved in the case is closer to the closed claimsClosed claims are usually written as "composed of...", "composed of", "the balance is", etc. These all mean that the claimed composition is composed of the indicated components, and there are no other components, but may contain impurities, which are only allowed to exist at the usual levels.

The expression of claim 1 of the patent involved in the case is "made according to the following formula", which is significantly different from the expression of the open claims, and is similar to the expression of the closed claims, indicating that the combination of the following substances can accomplish the purpose of the invention.

2. Neither the dependent claims nor the specification describe that the composition also contains other componentsThe claims should be based on the description and clearly and briefly define the scope of patent protection claimed. The patent involved describes the content of the invention in detail in the description part and lists seven embodiments, but none of them discloses other components than chrome green, chrome slag and binder.

Those of ordinary skill in the industry cannot obtain inspiration for adding other components after reading the specification and drawings. The open-ended claims claimed by it cannot be supported by the specification.

3. The reply submitted by the plaintiff to the State Intellectual Property Office records that "the total weight of the above materials" only refers to the total weight of chrome green and chrome slag, not the total weight of chrome green, chrome slag and binderIt can also be seen from this statement that the plaintiff stated to the State Intellectual Property Office that there are no other substances other than these three components.

In addition, the Shenyang Intermediate People's Court of Liaoning Province held that the principle of comprehensive coverage is adopted in the judgment of patent infringement in our country, and when applying the principle of comprehensive coverage, the scope of protection of the claims should be clearly defined first. Closed claims are a special type of claims, and closed claims, with their specific expressions, limit the scope of protection of the claims to only include the technical features and their equivalents clearly stated in the claims, excluding other components, structures or steps. Therefore, when determining whether the claims are open claims, they should not be arbitrarily interpreted, otherwise they will appear in the authorization process. Strict interpretation of the claims will make it easier for the right holder to obtain authorization In the process of infringement litigation, the interpretation is broad, covering a wider scope of protection, and the right holder obtains protection beyond the scope of the patent right. Therefore, the patent involved in the case is understood as a closed claim, which is more in line with the authorization purpose and legislative intent of the patent involved in the case.

Case three:

In the case of [ (2012) Mintizi No. 10] (included in the 2012 Annual Report of the Supreme People's Court on Intellectual Property Cases and the "Guidelines for Intellectual Property Trial Cases of the Supreme People's Court"), the Supreme People's Court held that: The patent claim 2 in question expressly adopts the closed expression "composed of..." stipulated in the "Guidelines for Examination", which belongs to the closed claim, and its protection scope should be determined in accordance with the general interpretation of the closed claim, that is, the injection of adenosine disodium triphosphate magnesium chloride lyophilized powder claimed in the patent claim 2 in question is only composed of adenosine disodium triphosphate and magnesium chloride , with the exception of impurities that may have normal levels, there are no other components.

The excipients are not impurities, and the excipients are also within the exclusion scope of the patent claim 2 involved. The original retrial judgment held that the patent claim 2 involved in the case should not be construed as an error that does not include the ingredients of the excipients, and this court corrected it.

In addition, the Supreme People's Court also expressed its opinion on the patentee's argument that "the alleged infringing product has added insignificant excipients, which is equivalent to the patent in question." The view also expressed: the use of the closed expression of "composed of..." in the claim itself means that the patentee has limited the protection scope of the patent right through its writing, and explicitly excluded other undefined structural components or method steps from the scope of patent protection.

In this case, the patent claim 2 in question is a closed claim, and the wording used in it has excluded components other than adenosine disodium triphosphate and magnesium chloride from the scope of patent protection. If the principle of equivalence is adopted, the structural components or method steps explicitly excluded by the patentee are re-included in the protection scope of the closed claim, and it is determined that the alleged infringing product constitutes the overall equivalence of claim 2, which neither meets the basic purpose of applying the principle of equivalence nor complies with the provisions on the equivalence of technical features in the judicial interpretation.

Therefore, the Supreme People's Court revoked the original judgment.

From the above cases, it can be seen that in order to safeguard the trust of the public, in patent infringement disputes, the people's court will usually respect the relevant provisions of the Patent Examination Guidelines and the terminology of patent claims applicable in the patent authorization process, that is, take a consistent position with the patent authorization process.

In addition, due to the different protection scopes of the two claims, the difficulty of obtaining authorization in the patent examination and authorization procedures is also different:The scope of protection of closed claims is usually smaller, and it is easier to obtain authorization through substantive examination; the scope of protection of open claims is usually larger, and it is vulnerable to "novelty", "creativity" or "claims are not supported by the specification" and other aspects of questioning。

Therefore, if the patentee chooses a closed claim with a relatively small scope of protection in the patent grant process, resulting in the failure of its technical solution to be effectively protected, the patentee should accept this consequence. On the other hand, if the patentee chooses an open claim with a relatively large scope of protection in the grant process, this wide range is not unlimited. In patent infringement disputes, the people's court will also be more cautious in the interpretation of open claims, which needs to be supported by the specification.

Note: Versions not specifically indicated in the Patent Examination Guidelines refer to the 2010 edition.

Lawyer Profile

Yang Xiaoming, lawyer

Director, Patent Law Professional Committee, Zhiheng Intellectual Property Center

Member of the 11th Shenzhen Lawyers Association Trade Secret Committee

Lawyer Yang Xiaoming has been focusing on corporate compliance and intellectual property legal services for more than eight years. He is a dual-certified lawyer with both patent agent qualifications and lawyer qualifications. Lawyer Yang has rich experience in corporate risk control management and intellectual property management and rights protection. He can not only deeply understand the difficulties and pain points faced by business operations, but also comprehensively avoid risks, clear the market, and escort enterprises.

During his career, he provided intellectual property non-litigation and litigation services to many well-known enterprises, including but not limited to Breville, Dyson, Comba, Coconut Tree, Tencent, etc., and served clients in various fields such as communications, home appliances, bathroom, food, makeup, and digital. His conscientious, professional, and high-quality legal services were widely praised by his clients.