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.

Footnotes

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 editor@cipa.org.uk.

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions