A Discussion on the Rules for the Interpretation of Functional Technical Features under the Patent Law
Jianguo Huang, Wen Deng*
Watson & Band Law Offices
Abstract: Innovation depends on technological advancement, which in turn depends on protection by the patent law under the IP legal system. According to the Interpretations of Several Issues Concerning the Application of the Law in the Trial of Cases Involving the Infringement of Patent Rights promulgated by the Supreme People’s Court in 2009 (hereinafter the “Interpretations”), the scope of protection for functional technical features is restricted to the specification embodiments or equivalent means for achieving the function as disclosed in the patent specification. Such a provision actually restricts and narrows the scope of protection of the patent claims.
In March 2016, the Supreme People’s Court promulgated the Interpretations of Several Issues Concerning the Application of the Law in the Trial of Cases Involving the Infringement of Patent Rights (II) (hereinafter the “Interpretations (II)”), which further provide for the functional technical features disclosed in patent claims, but do not offer any major breakthrough with respect to the original provisions on determining the functional technical features and the scope of protection enjoyed by these features. Although the provisions on functional technical features in the current judicial interpretations are not completely reasonable, even if the provisions of the current judicial interpretations are applied, the issue of how these provisions should be correctly understood and applied in judicial practice calls for further analysis and research.
Key words: patents, functional technology, claims, specification
Innovation has gradually become a weapon for promoting social development. The constantly improving patent system plays a significant role in the protection and stable development of technical innovation. Since functional technical features define the scope of protection of patent rights under the patent system, they should receive significant concern and attention. Nevertheless, it is difficult to accurately determine how the specification provisions of current statutes and judicial interpretations should apply to functional technical features.
In judicial practice, the following issues have always been the focus of dispute in patent infringement cases: (i) whether a claim discloses a functional technical feature; and (ii) if so, how the scope of protection of the claim should be determined. Because of this, research should be conducted on functional technical features under the patent system.
1. Current Rules for the Interpretation of Functional Technical Features
Two rules for the interpretation of functional technical features have been adopted in current judicial practice. One of these rules was established in the Examination Guidelines published by the State Intellectual Property Office (“SIPO”), known as the “cover all” rule[①]. The other rule was established in the Interpretations promulgated by the Supreme People’s Court, and is known as the rule of “specification plus equivalent embodiments”[②]. In addition, the newly promulgated Interpretations (II) supplement the rule set forth in the Interpretations[③]. The scopes of protection defined by the same functional technical feature disclosed in the patent claims come out differently under the Interpretations (II).
Take invention patents, for example. Suppose a claim is characterized as a functional technical feature and only two embodiments are disclosed in the specification for the technical feature; nevertheless, a person skilled in the art can determine that there are at least three embodiments that can achieve the technical feature and that the three embodiments are not equivalents of each other. If the rule set forth in the Interpretations is applied, in the event of a patent infringement lawsuit, the scope of protection of the technical feature will be limited to the two embodiments disclosed in the specification and their equivalents only. On the other hand, if the rule set forth in the Examination Guidelines is applied, during the preliminary review the scope of protection of the technical feature will not be limited to the two embodiments disclosed in the specification only; instead, the third embodiment not disclosed in the specification will also be included within the scope of protection.
2. Problems Encountered in Judicial Practice
In the procedure for granting the patent rights as well as the procedure for adjudicating the infringement of patent rights, the current rules for the interpretation of functional technical features not only influence the patentees’ exercise of their rights, but also influence the certainty and predictability of the law itself.
(1) The Dilemma of Drafting Patent Claims
Patent claims serve as the basis for determining the scope of protection of a patent. Because of inconsistencies among the rules of interpretation, an applicant who drafts claims for an invention patent or a utility model may be confused over whether a functional technical feature should be included in the claims. Under the “cover all” rule of the Examination Guidelines, since the scope of protection covers all embodiments that can achieve the function, once an applicant uses a functional technical feature in the claims and acquires patent rights, this way of drafting the claims should be helpful to the applicant in preventing others from reducing the value of the patent by working around the claims.
Unfortunately, however, when the patentee is later faced with a patent infringement lawsuit, the court will apply the Interpretations, according to which the scope of protection will be limited to the specification embodiments disclosed in the specification and the appended drawings, and their equivalents.
If the patentee cannot prove that the allegedly infringing technology is identical or equivalent to the specification embodiments disclosed in the specification, it is very likely that the technology will be ruled non-infringing.
Because of this inconsistency between the rules of interpretation, a conflict exists between the administrative authorities and the judicial authorities when determining the scope of protection of a functional technical feature. This conflict influences the certainty and predictability of the law and causes confusion as to whether functional technical features should be used in drafting the claims.
(2) Unreasonable Restrictions on the Scope of Protection of the Rights of Prior Patentees
The promulgation of the Interpretations directly restricts the scope of protection of a technical feature described by a function to the specification and equivalent embodiments disclosed in the specification. Since a rights owner who applied for a patent before the promulgation of the Interpretations was not subject to this limitation, the rights owner could determine at its sole discretion (i) whether to disclose the embodiments and (ii) how many embodiments should be disclosed. This choice would not influence the scope of protection of the patent rights.
After promulgation of the Interpretations, however, the scope of protection of a functional technical feature disclosed in a claim was limited to the specification embodiments disclosed in the specification themselves or their equivalents.
Consequently, a prior patentee who did not disclose possible embodiments or who disclosed only a portion of the possible embodiments in the specification should have had the opportunity to disclose the embodiments. Failure to disclose or sufficiently disclose the embodiments in the absence of the limitations prescribed under the Interpretations will affect the rights owner’s ability to enforce the patent, since it would not be fully protected against an infringement challenge.
(3) The Error in the Subject Imposing Restrictions on Rights
Article 104 of the 2015 amendment of the P.R.C. Legislative Law mentions judicial interpretations for the first time[④]. Specifically, judicial interpretations are limited in three aspects. According to the Legislative Law, judicial interpretations should contain explanations of the meaning, content, concepts, terms and conditions for application of the currently applicable law, but should not directly define the contents of the rights. In other words, judicial interpretations should be subordinate to legislation.
Both the Interpretations (II) (promulgated in March 2016) and the Interpretations (promulgated earlier) limit the scope of protection of a functional technical feature to the specification or equivalent embodiments disclosed in the specification and the appended drawings, which provisions constitute a substantial limitation on patentees’ rights.
Based on the position of judicial interpretations in the legal hierarchy, they can serve only as an explanation of a certain functional technical feature and a summary of the definitions and conditions for the application of the technical feature. Any limitation on the substantive rights of the patentees should be imposed by legislation, not judicial interpretations.
3. A Comprehensive Exploration of the Protection of Functional Technical Features
(1) The rules of interpretation for functional technical features should be harmonized.
In the authors’ opinion, a functional technical feature used in a claim should be limited to the specification and equivalent embodiments for achieving such a function, as disclosed in the specification and the appended drawings, and the “cover all” rule of the Examination Guidelines should not be adopted.
Instead, the rules of interpretation should be harmonized by applying “specification plus equivalent embodiments”. By applying this rule, the dilemma in drafting patent claims will be solved and the certainty and predictability of the law will be enhanced.
(i) An example from U.S. judicial practice
In Wyeth v. Stone (1840)[⑤], the Circuit Court of the U.S. state of Massachusetts first explained the functional technical feature. The case involved the interpretation of a device in a patent claim, i.e., a device that could achieve the technical effect of cutting ice cubes into pieces of the same size. Although the concept of the functional technical feature was not included in the U.S. Patent Law in 1836, the Circuit Court did not directly deny the claim, but instead interpreted it as the specification device affecting the purpose of cutting ice cubes as disclosed in the specification.
When the U.S. Patent Law was amended in 1952, the concept of functional technical features was explicitly included. Specifically, “the features of combined claims can be drafted using the method of ‘a mechanism or steps for achieving a certain function’, without necessarily disclosing the materials, movements or specification structure for achieving the function. A claim drafted using this method should be interpreted as covering the corresponding materials, movements or specification structure disclosed in the specification, as well as their equivalents”[⑥].
In both Wyeth v. Stone (1840) and Halliburton Oil Well Comenting v. Walker (1846)[⑦], the courts held that the interpretation of a functional technical feature should be limited to the specification embodiments disclosed in the specification, and that if the “cover all” rule were adopted, the scope of protection of the patent would be broadened, which would both impede technical development within the field and make it difficult for the public to identify which embodiments were not included in all of the embodiments used to achieve the functional technical feature, ultimately resulting in damage to the public interest.
Following the In re Donaldson case in 1994, the U.S. Federal Circuit Court of Appeals held that a functional technical feature disclosed in a claim should at least be limited to the specification embodiments disclosed in the specification, and the court explicitly pointed out that the rule of interpretation formerly applied by the USPTO was incorrect and should not be applied.
After the conclusion of the foregoing case, the United States harmonized the rules of interpretation of functional technical features for both the patent examination procedure and the judicial procedure, and re-interpreted Article 112.6 of the U.S. Patent Law to mean that “a functional claim included in patent claims must be interpreted as a reference to the corresponding materials, movements or specification structure disclosed in the specification, as well as their equivalents”. The United States thereby harmonized the rules by limiting the scope of protection of a functional technical feature to the specification and equivalent embodiments disclosed in the specification.
In contrast with P.R.C. law, U.S. law imposes the following restrictions on the drafting of functional technical features disclosed in the claims: (i) phrases such as “means for” or “step for” must be used; (ii) said phrases “means for” or “step for” must be modified by a functional statement; and (iii) the phrases “means for” or “step for” cannot be modified by structures, materials or movements that are sufficient to achieve the specification function. Such restrictions are actually imposed for the convenience of patent examiners or judges when determining whether a technical feature disclosed in a claim should be classified as a functional technical feature. Such a means of expression may be used as a reference for the specification provisions in the Examination Guidelines and the Interpretations.
(ii) Application of the “cover all” rule of interpretation will damage the public interest.
The legislative purpose of the patent law is to incentivize the creation of inventions and innovations, while applying the “cover all” rule for functional technical features will make it difficult to predict the scope of protection of patent claims.
In that circumstance, a subsequent applicant will find it difficult to determine whether the patent rights in application fall within the scope of protection of prior patented technology, and the public using the existing technology will find it difficult to identify whether the technology being used falls within the scope of protection of a certain functional technical feature.
Meanwhile, a patented functional technology will likely include certain public technologies within its scope of protection, which will on many occasions result in broader protection for the patentee than his contributions warrant, thereby impeding technological development.
Moreover, since the patentee is sometimes unable to exhaust all of the embodiments that are effective for achieving a functional technical feature, technologies on the market that can achieve identical or equivalent functions will be highly prone to infringement claims, and accordingly, the judicial system might become overburdened by the docketing of so many patent infringement cases.
In the O’Reilly v. Morse case heard by the U.S. Supreme Court, the disputed patent was related to a technology called an “electromagnetic telegraph”, on behalf of which the inventor wrote in Claim 8, “I do not propose to limit myself to the specific machinery or parts of machinery described in the foregoing specification and claims. The essence of my invention being the use of the power of the electric or galvanic current, which I call electromagnetism, however developed, for making or printing intelligible characters, signs or letters at any distances, being a new application of that power, of which I claim to be the first inventor or discoverer.”
The presiding judge held as follows: “If this claim stands, the problem lies in the fact that it does not rely upon any mechanical process to achieve its result. Potential inventors that we know little about are likely to discover a transmission model at any distance through the use of the power of the electric or galvanic current in future scientific research, which will not require any guidance from the process and combinations disclosed in the complainant’s specification. This hypothetical invention might be less complex, less likely to break down, and cheaper to construct and operate. If this invention is covered by a prior patent, the inventor would be unable to use it, and the public would not benefit from the invention without obtaining authorization from the prior patentee.[⑧]”
Based on the Court’s opinion, future technology that might be able to achieve the function more cheaply must be excluded from the scope of protection of a functional technical feature; otherwise, the public will not benefit from existing technological inventions and their rights may even be restricted. Such a scenario might dampen the enthusiasm for innovation by persons skilled in the art, thereby hindering the creation of new technology.
(iii) Functional technical features should facilitate the drafting of patent claims.
Judging from the conditions provided in the Examination Guidelines[⑨] for the application of functional technical features disclosed in patent claims, disclosing functional technical features in the claims is not recommended – only when it is indeed impossible to describe a certain claim using structural features will use of functional technical features be allowed.
Nevertheless, since under the “cover all” rule, protection for functional technical features covers all embodiments that can achieve the function, patentees tend to use functional expressions in hopes of a broader scope of protection, a practice that runs counter to the need to reduce the use of functional technical features when drafting patent claims under the Examination Guidelines.
The consistent adoption of the “specification plus equivalent embodiments” under the Examination Guidelines and the Interpretations can completely solve this problem. Since the scope of protection of functional technical features will be limited to the specification embodiments disclosed in the specification, the scope of protection of the relevant claim will be substantially narrowed, thereby encouraging patentees to refrain from describing their claims using functional technical features.
Furthermore, when it becomes truly necessary to use a functional technical feature, this rule will encourage the patentee to disclose as many embodiments as possible in the specification, in order to maximize the scope of protection for the claim.
(2) The protection of functional technical features of patents granted before the promulgation of the Interpretations should be broadened.
China adheres to a legal principle known as the Ex Post Facto Prohibition, also known as non-retroactivity. Presently it is still controversial whether the judicial interpretations of the Supreme People’s Court represent the implementation of legislation or the formulation of new, judge-made law.
Some scholars believe that judicial interpretations are not law by nature, but should instead function as interpretations of the true meaning of the law, and that the law already provided for the issue before promulgation of the judicial interpretations.
On the other hand, other scholars assert that judicial interpretations, although so named for the purpose of interpretation of the law, function in practice as new law, and that judicial interpretations should be understood as a type of normative legal principles. If the latter view holds, the Ex Post Facto Prohibition should apply; in other words, judicial interpretations should not be binding upon conduct that occurred before the corresponding interpretations went into effect⑪. This view is widely accepted by the Chinese judiciary.
Presently, neither the P.R.C. Patent Law nor the Implementing Rules of the Patent Law mention functional technical features. The interpretation of functional technical features and the limitation on the scope of protection of technical features under the Interpretations should then be characterized as new law.
Consequently, a patent granted before promulgation of the Interpretations should benefit from the Ex Post Facto Prohibition, meaning that the scope of protection of a technical feature described by a function in its claims should not necessarily be limited to the specification and equivalent embodiments disclosed in the specification. Even if it is necessary to impose certain limitations, the standard for determining “equivalent embodiments” should be relaxed.
(3) Functional technical features should be provided for through legislation.
The scope of protection of a claim is, in essence, the scope of rights granted to a patentee. The Interpretations should be more focused on interpreting the specification application of the law. Although the Interpretations serve as the guiding rules for the Supreme People’s Court in trying cases involving patent disputes, they should be more focused on the meaning, content, concepts, terms and conditions for the application of the various provisions of the Patent Law.
Since legislatively speaking, the Interpretations are subordinate to the Patent Law; since Article 59 of the Patent Law explicitly provides that the scope of protection of an invention patent or a utility model should be subject to the contents disclosed by its claims, and since no other special legal provision specially defines the scope of protection of a functional technical feature, the Interpretations should not contradict or supplement the provisions of the more authoritative Patent Law.
The authors suggest that the scope of protection of a functional technical feature should be directly provided for in the Patent Law, or that a principle provision should be incorporated into the Patent Law, after which judicial interpretations would provide supplements and explanations regarding the principal provision. Such a practice would be more consistent with the original intent of applicable legal theory.
The drive for innovation is inseparable from intellectual property rights, since the advancement of technology relies on the protection provided by intellectual property law. In particular, the role of patent law in safeguarding technological development and promoting technological advancement should be fully exploited. Meanwhile, the reform of the patent system should be deepened and more attention should be paid to the protection of patentees’ rights.
Plaintiffs, defendants, the Patent Reexamination Board and the courts make conflicting decisions on the scope of protection of the same functional technical feature disclosed in the same patent claim, all because the rules for the interpretation of claims containing functional technical features have not been harmonized for many years.
This results in recurring obstacles in judicial practice when granting rights to a functional technical feature and deciding patent infringement claims. In addition, unreasonable limitations are often imposed on patentee rights, thereby significantly impairing technological innovation.
In principle, the scope of protection of functional technical features should be interpreted in light of the “specification plus equivalent embodiments” rule. Nevertheless, when determining the scope of protection of a functional technical feature granted before the promulgation of the Interpretations, the standard for determining “equivalent embodiments” should be relaxed.
In the meantime, provisions concerning functional technical features should be incorporated into the Patent Law so as to harmonize the rules of interpretation and solve various problems concerning the regulation and application of functional technical features under the current legal regime.
* About the authors:
Jianguo Huang, Watson & Band partner, specializing in litigation concerning patent rights, can be contacted at 13636588900
Wen Deng, Watson & Band apprentice lawyer, specializing in litigation concerning patent rights, can be contacted at 18801751962
[①] Article 3.2.1.(8) of the 2010 Guidelines for Patent Examination: “a functional technical feature incorporated into a patent claim should be interpreted as covering all embodiments that can achieve the said function.”
[②] Article 4 of the Interpretations of Several Issues Concerning the Application of the Law in the Trial of Cases Involving the Infringement of Patent Rights: “With respect to a technical feature in a patent claim represented by a function or an effect, the People’s Court should determine the content of the technical feature by combining the specification embodiments and their equivalent embodiments for the said function or effect, as disclosed in the specification or the appended drawings.”
[③] Article 8.1 of the Interpretations of Several Issues Concerning the Application of the Law in the Trial of Cases Involving the Infringement of Patent Rights (II): “Specification embodiments that a person skilled in the art can directly and definitely determine as being able to achieve the said function or effect by merely reading through the claims will be excluded from the scope of protection of such technical feature.”
[④] Article 104.1 of the P.R.C. Legislative Law: “Firstly, judicial interpretations should aim mainly at the specification legal provisions; secondly, judicial interpretations should conform to the purpose, principles and original intent of the legislation; thirdly, in the event that a legal provision needs further clarification of its specific meaning and in the event of a new situation arising after the effective date of the relevant law, for which the basis for the application is the law, a request or a proposal should be submitted to the Standing Committee of the National People’s Congress.”
[⑤] Wyeth and Tudor v. Stone, 30 F.Cas.723 (N0.18, 107) (C.C.D.Mass.1840).
[⑥] P458, Specification Explanation of the P.R.C. Patent Law (Abridged Edition), by Xintian Ying, Beijing Intellectual Property Publishing House, Second Version, September 2012.
[⑦] Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946).
[⑧] O’Reilly v. Morse, 56 U.S. 62 (1853).
[⑨] With respect to the conditions for an application that incorporates a functional technical feature into a patent claim, the Guidelines for Patent Examination point out that only when (i) a certain technical feature cannot be defined by structural features, or (ii) a definition by structural features is less appropriate than a definition by functional or effect features; and only provides that the said function or effect can directly and definitely be demonstrated by the experiments or operations disclosed in the specification or by other conventional means in the relevant technical field, will the functional or effect feature be allowed to define the invention.
⑪ Meaning of the Principle of Non-Retroactivity for the Rule of Law, by Fengjing Liu, Page 22, Academic Journal of Xinjiang Normal University (Philosophy and Social Sciences page), Volume 3, 2013.
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