How the Dedication Rule Affects the Result of Patent Infringement Cases

Our patent team continues to discuss Chinese patent law related issues. The article they wrote for our Newsletter of this month is about the dedication rule which means that the embodiment of a patent in question should be deemed to have been given to the public if it is included in the patent specifications but not included in or intended to be included in the protection scope claimed in the patent application to be decided. We would be pleased if you find it helpful.
2019-05-20 16:11:39

The dedication rule means that when deciding a patent infringement case, if the patent owner discloses an embodiment in the specifications without incorporating or attempting to incorporate it into the protection scope of the patent claims in the process of the patent application, the embodiment should be deemed as a donation to the public, which the patent owner could not incorporate into the protection scope of the claims.


1.Regulations on use of the dedication rule to decide patent infringement cases

Article Five of the Interpretation by the Supreme People’s Court of Several Issues Concerning Use of Laws in Dealing with Patent Infringement Cases (L.I.[2009] No.21) that was brought into action on January 1st, 2010 is a provision about the dedication rule, stating that in a patent infringement case, if the patent owner incorporates an embodiment described only in the specifications or drawings and not included in the claims into the patent protection scope, the court should give a refusal.  

The dedication rule is essentially a limitation to the equivalence rule and intended to prevent patent applicants who want to obtain approval for their applications more easily from explaining the claims in narrow terms and explaining the specifications and drawings in broader terms. The patent owner inappropriately expanded the patent protection scope by claiming in the patent infringement action that the part of the specifications explained in broader terms was equivalent features. The dedication rule helps to protect the public access to patent claims and balance the interests of patent owners and the general public.    


2.Typical patent infringement cases decided using the dedication rule

a. The (2013) M.T.Z.No.225 civil case decided by the Supreme People’s Court: a patent infringement case regarding the invention “a process used to make plastic cloth hot water bags” with Patent No.ZL201110028289.4 between Chen Shundi and Zhejiang Lexueer Home Products Co., Ltd. (“LXE”).

The key issue of this case is that the 10th and 11th steps mentioned in the claim 1 of the patent in question were arranged in the opposite order of the alleged infringing method that produced a different outcome in technical aspects. The fact of reversing the order of the 10th and 11th steps as stated in the specifications of the patent in question was described in the specifications of the patent in question but was not covered by the protection scope of the patent claims. Does the equivalence rule apply in this circumstance? 

The Supreme People’s Court held that although it was stated on page 3 of the specifications of the patent in question that the 10th and 11th steps could be reversed, the steps in the reversed order were not shown in the claims and therefore could not be incorporated into the protection scope of the patent rights in question according to the dedication rule. Based on this, the court decided that the LXE’s extension of the method for the alleged infringing products did not infringe the patent rights in question. 

b. The (2013) S.Z.M.Z.No.0209 civil case decided by Jiangsu High Court: a patent infringement case regarding the invention “a method for building retaining walls and retaining wall blocks used in this method” with Patent No.ZL200510117473.0.

The key issue of this case is three supporting structures described in the specifications of the patent in question. The first structure is the front edge at the front end of the blocks, sticking out of the upper surface of such blocks. The second structure is the front edge at the back end of the blocks, sticking out of the lower surface of such blocks. The third structure is formed by the parts sticking out of the upper surface of most blocks and the curved parts in the lower surface of most blocks. The sticking and curved parts of one block are arranged in alternate patterns and match with each other in horizontal and vertical directions. Based on the claims of the patent in question only the first and third structures are protected, and the second structure is not protected. The supporting structure of the alleged infringing blocks is identical to the second supporting structure described in the specifications of the patent in question. Does the equivalence rule apply in this circumstance?   

The court decided based on the dedication rule that the alleged infringing technology did not fall into the protection scope of the patent rights in question. 


3. How to use the dedication rule when preparing patent application documents  

Patent applicants sometimes write the claims in narrow terms in their applications and explain the claims in broader terms in the specifications and drawings by giving alternative embodiments in order to make it easier to obtain approval. When a patent infringement action is brought, they attempt to expand the protection scope of the patent rights by arguing that the parts of the specifications explained in broader terms are equivalent features under the equivalence rule. The dedication rule, however, precludes this attempt. 

Should we include alternative embodiments or only the embodiment expressed in claims in the patent application? I think we should include as many alternative embodiments as possible in patent application documents. These embodiments should be appropriately described in broad terms in the patent claims to cover an appropriate protection scope. A patent application should be divided if the patent is too simple to be described in broad terms.          

相关资讯