China: Patent Infringement Claims With Equivalence In China

Last Updated: 22 May 2018
Article by Toby Mak

China has a doctrine of "equivalence" – it may be the patentee's last hope. While the statistics for decisions in Europe, the US, and Japan show that it is not easy to sue successfully for patent infringement with equivalence, the numbers in China show that there is a much higher chance of success. Toby Mak compares the statistics on patent infringement in China with equivalence in other major jurisdictions and discusses differences on how Chinese businesses approach and understand patents, which may lead to these differences: ranging from the use of vague terminology, including unnecessary detail in claims. Understanding these differences may help foreign businesses better understand the patent and infringement landscape in China.

The starting point for our discussion are some interesting statistics1 on the success rate of patent infringement claims with equivalence in various jurisdictions in the last five years (2012 to 2017): You can see from Table 1 (opposite) that:

  • The success rate is around 20% in the US and Europe, and even lower in Japan (11%). In the UK, very few people even bothered to try3. Relying on equivalence for patent infringement allegation in the US, Europe, and Japan is statistically not advisable.
  • By contrast, the success rate in China is much higher, double that in the US and Europe, and four times of Japan's. The success rate was even higher in 2007 to 2012.
  • The number of attempts to rely on equivalence in China increased significantly from 2012 to 2017 compared to 2007 to 2012, but the success rate drops.
  • It is surprising that France has a similar success rate as in China.

There could be many reasons for the figures in China:

  1. Many Chinese infringers are not sophisticated – so o: en infringing products are almost a copy of the original product covered by a patent, with minimal alteration.

  2. Chinese infringers are not advised properly (or at all), that a minor alteration could get around a patent (probably due to lack of a budget or willingness to take advice).
  3. When drafting patent claims, many Chinese companies do not provide sufficient time and money, resulting in claims with narrow scope and including insignificant features. Modifying around these insignificant features may avoid literal infringement; but, ironically, as these features are insignificant, the infringing act may still be caught by equivalence.

Equivalence under Chinese law

To invoke infringement by equivalence, there must be a difference between the infringing product and the claim(s) of the patent, the difference uses basically the same means to realize basically the same function and achieve basically the same effect, and a person skilled in the art could reach the difference without inventive efforts. Readers will note that this Chinese approach is closer to that of the US "Doctrine of Equivalence": neither needs to consider what the person skilled in the art would have understood what the patentee is claiming, i.e. whether the patentee intended to limit the scope of the claim. The same approach is used in respect of both invention patents and utility models.

Successful patent infringement claims with equivalence

To understand the situation in China better, this is an example of a successful patent infringement claim based on equivalence. This was an appeal to the Beijing High Court, which upheld the decision from the Beijing IP Court. The patentee was ConST4, while the infringer was Spake5. In this case the right was a utility model ('141)6:

  1. The utility model '141 concerns a hand-held positive and negative Fluid pressure calibrator with the main claim as below:

    A handheld positive and negative fluid pressure calibrator, comprising a spiral fluid pre-pressured pump (9), a connecting base for a standardised meter (5) and a connecting base for a meter to be tested (6), characterized in further comprising:

    a Fluid reservoir (2) in the form of a sleeve outside the pre-pressured pump (9);

    a pump base (1), wherein a fluid reservoir cavity is provided to communicate with the fluid reservoir (2), and a passage is further provided to communicate with the pre-pressured pump (9), the passage communicating with the connecting base for the standardised meter (5) and the connecting base for the meter to be tested (6), and a pressure shutoff valve (3) and a fine adjustment device (4) are provided on the passage;

    a pump base upper cover (7) fixedly seal mounted on an opening of the fluid reservoir cavity of the pump base (1).

    A figure from '141, showing the fluid pressure calibrator is reproduced below:

  2. According to the specification of '141

    • This calibrator was an improvement over the same patentee's previous pressure calibrator described in an earlier Chinese utility model for improved portability while preventing liquid waste from blocking the controlling unidirectional valve, while at the same time providing for negative pressure calibratiown.
    • The following components are all installed on the pump base for device miniaturization: the fine adjustment device 4, the connecting bases 5 and 6, the pressure shutoff valve 3, and the Fluid reservoir 2.
    • The spiral fluid pre-pressured pump is used for better durability and sealing ability.
    • The removable pump base upper cover is provided on the fluid reservoir to ease cleaning liquid waste or replacing oil liquid.

The infringing product is shown below:

In the first instance decision at the Beijing IP Court, the Spake argued that:

  • Its product did not provide passages communicating with the connecting bases for the meters.
  • The connecting bases of '141 were located at the two sides of the pump base body, and their connecting passages pass through the inside of the pump body base.
  • Spake's product did not have these technical features. It had an isolated rectangular manifold block outside, and connecting to, a front end of the pump body, connecting bases for a standardised meter and a meter to be tested respectively located at the le: and right sides of this manifold block, and the connecting passages for each connecting base on the manifold block. The connecting bases and their connecting passages in the manifold block formed an independent structure portion connecting to a pump base.
  • The connection design of Spake's product is convenient for maintenance, reduces the possibility of leakage with multiple seals of passages in the pump base, and ensures improved stability of test results.
  • Spake asserted that its product implemented its own utility model. [Comment: As mentioned in my previous articles "Recorded high compensation rewarded by Beijing IP court in patent infringement case, with compensation of attorney fees", this is yet another demonstration of a typical misunderstanding by many Chinese companies that having their own patent gives them rights to work the invention.]

Other than "a pump base (1), wherein... a passage is further provided to communicate with the pre-pressured pump (9), the passage communicating with the connecting base for the standardised meter (5) and the connecting base for the meter to be tested (6)", Spake admitted that its product has all the other features of claim 1 of '141.

Even though SIPO7 issued a positive patentability evaluation report before the first instance, Spake still tried to invalidate '141, but failed. Specifically, Spake relied on an advertisement as a secondary reference to combine with the main reference, ConST's own Chinese utility model for a previous product. However, the Chinese Patent Re-examination Board8 opined that this advertisement failed to clearly disclose the relevant features that Spake relied on to attack the inventiveness of '141.

At first instance, the Beijing IP Court decided that Spake infringed, awarding RMB500,000 (£56,200) statutory damages and RMB57,000 (£6,400) legal fees in the first instance. The reasoning, affirmed by the Beijing High Court (second instance), was:

  • Spake's product had connecting bases for a standardised meter and meter to be tested connected to the manifold block, and the manifold block and the pump body were two physically separable objects. On comparing the positions of the connecting bases and their connecting passages, it was found that Spake's product and claim 1 of '141 are different.
  • However, Spake's product only arranged the pump body and connecting bases and their connecting passages separately on the manifold block. There was no difference in working principles of Spake's infringing product compared to '141: both used basically the same means to realize basically the same functions, achieved basically the same effects, and features with which a person skilled in the art can reach at without inventive efforts.

As can be seen from the above, it should not be a surprise that an infringing product with such a slight modification is found infringing in China by equivalence, resulting in the relatively high success rate.

To read this article in full, please click here.


1. These have been compiled from information obtained from Darts-IP

2. The statistics were collected too early to capture the decision in Actavis v Eli Lilly

3. At CIPA Congress 2017, I was told at the that prior to Actavis v Eli Lilly, based on the Catnic/Improver tests, arguing patent infringement with equivalence in the UK is unlikely to go anywhere, and many such cases were settled before full trial.

4. Beijing ConST Instruments Technology Inc

5. Beijing Spake Technology Co Ltd

This article was published in the February 2018 issue of the UK Chartered Institute of Patent Attorneys (CIPA) Journal, and are re-posted here with the kind permission from the UK CIPA. The UK CIPA Journal covers updates, articles and case law reviews on IP in the UK, Europe, and around the world. The Journal is available for subscription at GBP130 per year, and for free by becoming a foreign member at GBP405 per year. For more information on the CIPA Journal please email

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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