On June 30, 2009, the vice-president of Unitalen, Dr. Lideshan, brought forward his opinions on such issues as “scope of protection of the claims of a patent” in the Provisions when taking part in a program of “IP Solon, People’s Daily Online” upon invitations from the Intellectual Property Channel of People’s Daily Online and from the magazine China Intellectual Property.

Dr. LI Deshan: the problem of “the scope of protection of claims of a patent” is solved by the Provisions.

Articles 1-8 in the exposure draft of the Provisions promulgated by the Supreme people’s Court are all intended to provide detailed provisions to solve an important problem: the scope of protection of claims of a patent.

As a lawyer, I’m very glad to see that the issue of “the scope of protection of claims of a patent” is focused on so much in the exposure draft of the Provisions. Article 59 of the Chinese Patent Law 2008 just provides a general provision regarding the “scope of protection of a patent” , that is, the scope of protection of a patent right for invention or utility mode shall be determined by the contents of the claims, and the Description and the Drawings may serve to interpret the contents of the claims. In Article 17 in the version of 2001 of the present Provisions, the scope of protection of a claim is broadened to cover the scope covered by equivalent technical features. There are only two Articles, which are not sufficient. From the view of lawyers, we hope that results of patent infringement cases are predictable. For predictability, a set of systematic and unambiguous rules are necessary to guide the judges on how to interpret the claims. The exposure draft of the Provisions does very well in this aspect.

Dr. LI Deshan: Cheer for the Word “Shall” in Article 2!

In accordance with the provision of Article 2, when interpreting a claim, the scope of protection shall be determined based on the contents of the claim understood by those ordinarily skilled in the art having read the Description and the Drawings. The word “shall” mentioned in Article 2 differs from the word “may” in the Patent Law and such a difference is meaningful in practice. In my opinion, the word “shall” in Article 2 in the present judicial provisions is proper. In whatever cases, the scope of protection of a claim shall be interpreted with reference to the Description and the Drawings, because a patent involves a technique which is quite complicated while the expressing capability of a language is always limited.

Dr. LI Deshan: There is a conflict to some extent between Article 3 and Article 2 in the Provisions In accordance with the provision of Article 3, a vague term in a claim cannot be understood to have the meaning generally understood by those ordinarily skilled in the art unless the meaning of the term cannot be clearly understood from the Description, the Drawings, the claims and patent examination records. In other words, if the meaning generally understood by those skilled in the art differs from the meaning understood from the Specification, the meaning provided in the Specification shall prevail. However, in accordance with the provision of Article 2, if the contents of a claim understood by those killed in the art differ from the literal meaning of the claim, the contents understood by those skilled in the art shall prevail. Article 3 and Article 2 are conflicting with each other. The provision of Article 3 shall be correct.

Dr. Deshan Li Patent Attorney　Attorney at Law deshan.li@unitalen.com

Rules for Assets Evaluation -Intangible Assets scientifically defines that intangible assets include both recognizable intangible assets such as patent right, trademark right, copyright, proprietary technique, sales network, customer relationship, franchise rights, contractual rights and so on, and irrecognizable intangible assets such as business reputation. Meanwhile, some new types of intangible assets, such as sales network and customer relationship, are considered in the rules. The Guiding Rules for Patent Assets Evaluation is based on the Rules for Assets Evaluation -Intangible Assets, and explicitly provides for that the object of patent assets evaluation is proprietary rights of a patent, including patent ownership and right of use of a patent, which provision removes a blank area in the current system of laws, regulations and rules relating to assets evaluation. The Guiding Rules for Patent Assets Evaluation also explicitly provides for the requirements on the operation and disclosure in patent assets evaluation.

Meanwhile, it is provided for in the Regulations that regarding the cases mentioned above, if the concerned party is not satisfied with the decision or judgment made by the court and requests the court of the higher level for review, the examination of the request and the review will be handled by the intellectual property division of the court of the higher level.. The Written Reply Regarding Work Division of Cases Relating to Patent and Trademark after the Amendments to the Patent Law and the Trademark Law issued by the Supreme People’s Court on May 21, 2002 is abolished at the same time.

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