Avoiding direct infringement

The latest Supreme People's Court judicial interpretation, issued in 2016, concerned the following principles:

  • inducing infringement; and
  • contributing to infringement.

Although these are both indirect infringement principles, the direct infringement precondition generally applies. Further, compared with the direct infringement principle, both of the above principles require additional conditions to be met (eg, the infringement must have been intentional, which increases a patent owner's evidence burden in patent enforcement).

In order to avoid indirect infringement, a good strategy may be to avoid using only system claims that cover the subject matter carried out by different entities. For example, when an invention refers to a system which includes several associated components that can be produced separately, it is recommended that patentees:

  • evaluate whether each of the system's components is patentable; and
  • use different patent applications or different groups of claims in a patent application – in addition to claims that cover the system as a whole – in order to protect the components separately.

By doing so, the system and component claims may cover more potential direct infringement acts than a mere system claim, giving the invention greater protection.

Drafting defence claims

Under the previous Guidelines for Patent Examination, patentees could amend a patent's claims during invalidation proceedings only through:

  • a claim combination;
  • a claim deletion; and
  • a technical solution deletion.

Patentees could not freely add any features of the patent's claims into a claim.

Following the latest amendments to the guidelines, patentees have relative flexibility to amend patent claims during invalidation proceedings by freely adding any features of the claims to form a new claim, provided that the post-amended claim meets the other legal requirements (eg, not exceeding the original scope, as recorded in the original specification and claims). However, during invalidation proceedings, patentees cannot add features that are in the description, but not the claims.

Thus, in order to better defend the validity of a patent, patentees should draft defence claims that include as many specific features as possible, so that more specific features are available for claim amendments during invalidation proceedings to enhance the patent's strength.

Drafting patent claims

According to the Supreme People's Court's judicial interpretation, a finding of patent infringement that is based on a patent claim concerning an allegedly infringing product can be established only when the accused product contains features that are identical or equivalent to the claim's recited features.

In general, it is relatively easy to obtain infringing evidence regarding a claim's structural or component features, as such features can be deduced from the product on the market. However, it can be extremely difficult to obtain infringing evidence on a claim's process features, as such features are usually confined to an infringer's factory and cannot be deduced from the product on the market.

Thus, in order to facilitate patent enforcement, patentees should include no process features in their product claims where possible, as all of the features in the claim should be deducible from the allegedly infringing product.

In addition, during the prosecution of a patent, arguments to obtain the granting of a patent generally constitute estoppels, which affect not only the patent's scope, but also that of its Chinese patent family. As such, patentees are advised not to clarify or argue a claim's structural or component features based on process features to avoid construing a claim based on the process features during patent enforcement.

This article was first published by the International Law Office, a premium online legal update service for major companies and law firms worldwide. Register for a free subscription.