In Chinese patent law, "usage environment features" is a key concept that plays distinct roles in patent infringement and validity cases. This article explores the rules and practical applications of 'usage environment features' through analysis of cases from the Supreme People's Court.
Ⅰ. Basic Concept of Usage Environment Features
"Usage environment features" refer to technical elements in patent claims that describe the conditions or environment in which the invention is used. These features help define the scope of the patent and play a critical role in determining the extent of its protection.
Ⅱ. Usage Environment Features in Infringement Cases
In patent infringement disputes, the Supreme People's Court has clarified the application of usage environment features in several landmark rulings:
- Ishino v. Ningbo Sunrun Industry & Trade Co.,
Ltd:
The Court ruled that usage environment features included in patent claims are necessary for defining the protection scope. If the invention is explicitly tied to a specific usage environment, the protection scope is correspondingly narrowed. - (2020) Supreme Court Intellectual Property Final Case
313:
The Court expanded on this by stating that usage environment features encompass installation locations, connection structures, and the intended application and methods of the invention. - (2021) Supreme Court Intellectual Property Final Case
1921:
The Court clarified the definition of "usage environment features" as technical features in patent claims that describe the conditions or context of the invention's use. These features may directly describe the invention or indirectly define it via the environment. Usage environment features play a limiting role in patent scope and should be evaluated on a case-by-case basis. Simply put, if an infringing product fits the usage environment described in the claims, it is considered to possess the relevant usage environment features.
Ⅲ. Characteristics of Usage Environment Features
- 1. Connection Between the Technical Subject and Its
Environment
Usage environment features describe the interaction between the invention and its external environment rather than its internal attributes. This interaction is critical for defining the technical boundaries of the solution.
For instance, improvements in the connection between a car engine and gearbox could either be internal features or usage environment features, depending on how the solution is framed. Similarly, the interface of medical devices with the human body typically constitutes a usage environment feature.
These features are especially important when the invention's improvement lies in its interaction with the environment. Without including such features in claims, it may be difficult to protect innovations or address infringement scenarios effectively.
- 2. Inclusion in Patent Claims
Only features explicitly stated in the patent claims can be recognized as usage environment features. Features that appear in the background of the patent cannot be deemed as usage environment features.".
- 3. Limiting Effect in Infringement Cases
Usage environment features limit the scope of patent protection.
For example, in the (2012) Civil Petition Case No. 1 involving a "bicycle rear derailleur bracket," the patent claim specified that the bracket must cooperate with a particular rear derailleur and bicycle frame.
In the (2021) Supreme People's Intellectual Property Court Civil Final No. 1921 Case, the accused product did not include a network cable but was still found to apply to the described usage environment (network cable connection). This demonstrates how usage environment features can either limit the protection scope or confirm product similarity based on real-world application.
- Complexity in Defining Usage Environment Features
Defining usage environment features is complex and often requires case-specific analysis. Ambiguities, such as unclear boundaries in terms like 'powertrain,' can present challenges. Additionally, patent applicants may introduce errors by including 'pseudo usage environment features' or modifying the technical subject, leading to potential disputes.
Neither the Supreme Court nor the National Intellectual Property Administration has segmented types of usage environment features, leaving a lack of consensus in academia. Each case must be analyzed based on fundamental principles to prevent overextension of protection scope or misinterpretation.
Ⅳ. Usage Environment Features in Patent Grant and Confirmation
In infringement cases, usage environment features are critical in limiting patent scope. However, in the patent grant and confirmation process, their application remains more ambiguous. When these features distinguish a technical solution, their limiting effect and extent can significantly influence determinations of novelty and inventiveness.
Ⅴ. Case Analysis on Patent Confirmation
- (2022) Supreme Court Intellectual Property Final Case
407:
The Supreme Court ruled that even if different wording is used in claims, as long as the changes substantially affect the technical solution, they should have a limiting effect. The case involved revisions to "QR code anti-counterfeiting structure" and "product packaging" descriptions. The Court determined that the amended claims were substantively identical to the original divisional application claims, maintaining consistent protection scope. - (2022) Supreme Court Intellectual Property Final Case
No. 773:
This case concerned a "3D printing device for oral devices." While the claims referenced "use for oral devices," this limitation merely described the device's application scope and did not influence its structure or composition. Thus, it did not affect the assessment of novelty or inventiveness. - (2021) Beijing 73 Administrative First Instance No.
6064:
The court concluded that if usage environment features mentioned in the preamble do not substantively affect the technical solution, they should not be considered. - Invalidation Decision 561369:
When evaluating the novelty of product claims incorporating usage environment features, their impact on aspects like structure, specifications, or materials must be assessed. If these features influence design and there is no evidence that prior art could address the same environment or technical issue, novelty cannot be denied.
Ⅵ. Conclusion and Recommendations
In judicial practice, the rules for "usage environment features" differ between the infringement stage and the patent grant/confirmation stage. In infringement cases, the key question is whether the subject object must, can, or cannot be used in a specific environment. In contrast, during the grant and confirmation stages, the focus is on whether the usage environment features have a substantial impact on the structure or composition of the subject object. These approaches are not the same.
- Different Interpretations at Different
Stages
The rules for "usage environment features" differ in infringement and grant/confirmation stages. During infringement, the issue is whether the product can be used in the described environment. In the grant/confirmation stage, the issue is whether the usage environment features substantially affect the subject object.
It's important to use these features correctly in patent claims to avoid confusion.
- Avoid "Pseudo Usage Environment
Features"
In patent claims, avoid including "pseudo usage environment features" that don't substantively affect the technical solution. When these features are necessary to express the core innovation, ensure they are clearly defined. Be mindful of whether the feature must be used, can be used, or cannot be used in the environment. Unless the core innovation relies on avoiding a specific usage environment, avoid using negative statements like "cannot be used in this environment."
- Clarify the Technical Subject
Define the technical subject clearly when drafting claims. If the innovation involves modifying the "usage environment feature" itself, treat it as a technical subject and include it in separate claims to allow flexibility in infringement analysis.
- Be Careful in Responses to Examinations
When responding to office actions or invalidation proceedings, avoid making statements that are irrelevant to the confirmation process or disadvantageous in infringement cases. Focus on the "substantial impact" of the usage environment features and avoid unnecessary restrictions on whether the subject object must apply to the environment.
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.
