Although it is stipulated in Article 5 of China’s “Interpretation (II) of the Supreme People's Court on Issues concerning the Applicability of Law in the Review of Patent Infringement Dispute Cases” that: “The people's court shall determine the scope of protection for a patent based on the technical features stated in the preamble and characterization of an independent claim and reference or restriction of a dependent claim.”, on September 14th, 2017, Shanghai Intellectual Property Court expressed its specific viewpoint on how the preamble of a patent claim affects the scope of protection through a judgment issued on the case concerning infringement of invention patent.

The plaintiff Hu Tao owns an invention patent entitled “An electrical automobile control system and its operation method” (hereafter "the disputed Patent"). The plantiff submitted a law suit to Shanghai Intellectual Property Court, claiming that Mobikes utilized a lock control system that had exactly the same technological features as those disclosed in Claim 1 and Claim 3 of the disputed Patent, which the plaintiff owns. The defendant’s production and lease of the bikes were therefore accused of infringing the plaintiff’s patent.

After thorough review, Shanghai Intellectual Property Court rejected all statements of action made by the plaintiff, and demonstrated that when determining the scope of protection regarding the preamble in a patent claim, Claim 1, having the preamble of “An electrical automobile control system”, of the disputed Patent should be treated as a product claim in regard with a lock device, whereas “electrical automobile” constitutes merely part of the preamble of Claim 1. The preamble may have pre-defined the scope of protection for the patent in question, but the actual scope of protection should be determined based on how “electrical automobile” affects the underlying patent. In this case, “electrical automobile” is not a component of the lock device; moreover, the term “electrical automobile” did not appear anywhere in the independent claim except in the preamble. Besides, “electrical automobile” is not a presupposition or foundation of the patented technology; the patented technology can be implemented for applications other than electrical automobiles. In addition, the novelty or inventiveness of the patented inventions in the disputed Patent was recognized and established without reference to electrical automobile during patent prosecution. As a result, the words “electrical automobile” mentioned in the preamble of Claims 1 and 3 of the disputed Patent do not provide substantive limitations to the scope of protection.