The nature of patent region has been rationalized in several ways, one of which is that the patent, by granting to an inventor for his technical contribution the exclusive right commensurate with his technical contribution, will encourage all to endeavor for technical contributions, thereby promoting progress of useful arts. The exchange theory of quid pro quo of patent rights in exchange for technical contribution expounds the basic principle that the patent is granted only for technical contributions; and the patent power reaches no more than the limit of the technical contribution. Comprehensive understanding of this basic principle of quid pro quo will help us solve the various problems in evaluating patent validity. From the perspective of technical contribution, this article will make a brief analysis on how to solve the problems related to patent validity evaluation in judicial practices.
I. A theoretical analysis of technical contribution
Why the considerations of technical contributions? The various philosophical rationales of patent regime, from natural right theory to the theory of reward for services rendered, from monopoly profit incentive theory to exchange for secrets theory, have implicit requirement for technical contribution. The natural right theory is derived from John Locke’s labor theory of property, advocating labor producing value. The labor creating property right such as a patent needs not be physical labor, but ought to be the labor that produces technical contributions. The reward for service rendered theory argues that the inventor has rendered a useful service and therefore deserves a reward. What is the useful service rendered by the inventor? It is the technical contribution. According to the monopoly profit incentive theory, technical innovation is good for the society, and monopoly benefit is thus allowed to encourage technical innovation. Technical innovation here is merely another expression for technical contribution. The exchange for secrets theory believes that disclosure of the technical contribution will promote technical progress in that patent protection will prompt the inventor to opt out of trade secret protection of the technical contribution. The subject emphasized by the exchange theory is necessarily the technical information with technical contribution. Therefore, all theoretical bases of the patent regime are inseparable from the key element of technical contribution.
What is technical contribution? It contains at least two shades of meaning. Firstly, contribution means improvement over the prior art, which has a bi-fold significance, the first being the difference, and the second, non-obviousness. A subject matter is considered as an improvement if it is not obvious in the eyes of a technician skilled in the art in comparison with the existing technology. In patent term, it is the patentability conditions of novelty and inventiveness. Secondly, the contribution must have technical features. It means that the technical contribution must, by applying the laws of nature, solve a technical problem and achieve certain technical results in line with the laws of nature; it is capable of being manufactured or used in industry, which is the patentability requirement for utility and for patentable subject matters.
Will technical contribution guarantee patentability? It has to be noted that technical contribution is a necessary condition for patent, but it does not necessarily lead to patentability. Patent protection will not be available without technical contribution, but technical contribution alone will not necessarily lead to patent protection. Naturally, there won’t be any patent if no application is filed for the technical contribution; and even if an application is filed, it has to comply with the examining process of the Patent Office, failing which, no patent can issue. The scope of patent protection is determined by the patent claims; nor would patent protection be available if the technical contribution, though specified in the written description, is not incorporated into the claims in appropriate form.
Has the requirement for technical contribution been reflected in statutory provisions? Some statutory documents have highlighted patent protection from the perspective of technical contribution. For example, Article 4 of EU’s Directive on the Patentability of Computer- Implemented Inventions in 2002 required that, a computer program to be patentable, must possess inventiveness, one of the conditions of which is that the computer program must have technical contribution. This provision in effect emphasizes that the inventor’s technical contribution must be taken into consideration when evaluating patent validity. In the Supreme People’s Court Opinions on Fully Implementing the Judictory Functions as Judicial Protection in Deepening Science and Technology Institutional Reform and in Speeding up Institutional Construction of National Innovation System (FaFa (2012) NO.15), the Court emphasized on stronger protection by a wider range for pioneering inventions that are highly innovative, and have breakthrough and motivating effect on technological innovation. By this, it means the inventions that have greater technical contributions, which is the emphasis of the impact for the technical contribution upon the scope of patent protection.
II. Patent claim construction rules from technical contribution perspective
How is the perspective of technical contribution in claim construction? One of the basic requirements is to avoid denying validity to a truly innovative invention on basis of glaring typographic errors, which basic principle has been confirmed by the Supreme People’s Court. In the 2012 Annual Report of Intellectual Property Cases, the Court commented on the administrative dispute on the utility model for “precision rotating compensator,” ((2011) XingTiZi No. 13), pointing out that drafting errors in patent claims do not necessarily lead to the conclusion that the claims are not supported by the written description; if the obvious errors in the claims can be unequivocally detected with a positive understanding by a person having ordinary skill in the art in accordance with the contents of the written description and the accompanying drawings, the scope of protection should then be ascertained accordingly upon modified construction of the claims; on that basis, determination may be made as to whether the claims, thus construed, can be supported by the written description. The Court was in essence requiring moderate tolerance on typographic errors when construing patent claims.
Why such tolerance on the typos for truly innovative inventions with technical contributions? This is due to the generally unsatisfactory quality of drafting skills outpaced by the fast growing number of patent applications in China. If a higher standard of patent drafting is imposed on the truly innovative inventions, it may well leave out some truly innovative invention for patent protection that have insignificant drafting errors, which in fact is not intended by the patent regime. Fully aware of this, the Court pointed out in its decree (FaFa (2012) No. 15) that by fully considering the circumstances in patent drafting, the best effort should be exerted in ensuring patent protection for truly innovative inventions within the scope of disclosure, so as to accord the patent applicant the rights correlative to his technical contribution, thereby maximizing the momentum of science and technology in supporting and leading social economic development.
III. Typical cases of claims interpretation from technical contribution perspective
How should the above basic principles be applied in specific judicial cases? In the administrative dispute case on the invalidation decision of a utility model named “An Apparatus for Heating Rotating Wheel” ((2013) GaoXingZhongZi No. 732), this author corrected the typographic errors in the patentee’s claims by taking into consideration of an implied limitation. In this case, a certain Mr. Yang owned a utility model patent for “An Apparatus for Heating Rotating Wheel.” A certain Mr. Han filed a request in 2011 with the Patent Reexamination Board (Board), seeking a declaration for invalidation of said utility model patent. The Board sustained the patent by Decision No. 18200 on February 24th 2012. Han, dissatisfied, proceeded with judicial review of the administrative decision. The Beijing First Intermediate People’s Court remanded the case for a new decision. Both Yang and the Board were not satisfied with the first instance decision, and appealed to the Beijing Higher People’s Court.
The issue on appeal was focused on the construction of claim 1, “the magnetic conductors (4) being laid out along axial direction of said wheel body (5) and evenly distributed on a cylindrical surface (10) of said bobbin (2),” which, viewed from the above language, could be construed in two different ways. By one construction, a bunch of discrete magnetic conductors are laid out parallel to axis of the bobbin cylinder, and are evenly distributed on the cylindrical surface, it coincided with the preferred embodiment depicted in the drawing; by the other, it fell into the structure of reference 1 that the magnetic conductors are made into annular tubes, which are laid out parallel to each other along the axial direction of the bobbin and are evenly distributed on the cylindrical surface.
In the view of this author, when construing patent claims, in order to balance the interests of patentee and those of the public, two factors should be taken into consideration: first, the rule of construction must prompt the patent applicant for definitive delineation of the patent scope, to avoid uncertainties resulting from equivocal ambiguities; and the applicant must bear the adverse effect for using ambiguous terms in drafting patent claims to define the relevant limitation leading to indefiniteness or over breadth in the patent scope as claimed. Second, when ambiguities arise in construing the claims to ascertain their scopes, such ambiguities should be resolved for concise meaning by the standard of a personal having ordinary skills in the art, in conjunction with the written description and drawings, or even the prosecution history, for a comprehensive consideration on the claim language. For truly innovative inventions, best efforts should be exerted to avoid invalidation due to conspicuous drafting errors. Full consideration should be given to the circumstances for drafting the claims, and ensure patent protection for those truly innovative commensurate with the scope of disclosure, so that the patent rights obtained by patent applicants can match with their technical contributions.
In this case, the claim language in claim 1 was derived from the technical solution disclosed in the written description, which, by a person having ordinary skills, could directly and unequivocally be determined as to pertain to the first instance above discussed. Beijing Higher People’s Court held that, in this case, if the patent owner indeed made a technical contribution and a skilled technician would not misunderstand when referring to the written description and the drawing, moderate tolerance should be accorded to the drafting flaws. Therefore, the contents from claim 1 should be construed as a situation described in the first case rather than the second case. The argument by the Board and the patentee should be sustained. Based on the foregoing reasons, the first instance decision was reversed and the invalidation decision was reinstated.
IV. Summary
One of the basic principles of patent system is to the grant and to protect patent based on its technical contribution. Sometimes, the perspective of technical contribution can reach the essence of the rules for patent grant and protection. It is necessary to try to understand and determine the rules for evaluating patent validity from the angle of technical contribution. When interpreting patent claims, the actual situation of China’s patent drafting requires for a moderate tolerance to the flaws in the application files or documents of the patents that do make actual technical contributions.
(Translated by Li Yu)
