Patent claims: A means to an end?

The Supreme Court of China issued the Interpretation on Several Issues Concerning the Application of Law in the Trial of Disputes over Infringement of Patent Rights in 2009.

Article 4 reads: “Where a claim presents a technical feature expressed in terms of function or effect, the People’s Court shall determine the contents of such technical feature on the basis of the specific embodiment(s) of the function or effect as described in the description and the appended drawings and its or their equivalent embodiment(s).”

In short, a means-plus-function feature recited in a claim is essentially defined by the indispensable features in the specification for performing the function or effect and the equivalent features.

In spite of the provision, the courts in China have applied somewhat different criteria as to what constitutes a means-plus-function feature, as well as how to define its protection scope.

In response, article 8(1) of the second Interpretation on Several Issues Concerning the Application of Law in the Trial of Disputes over Infringement of Patent Rights, which came into effect in 2016, provides that: “A means-plus-function feature is a technical feature defining the structure, composition, step, condition or their relations, etc, by its function or effect in the invention-creation, unless a person skilled in the art can directly and explicitly determine the specific embodiment(s) for performing such function or effect by reading purely the claims.”

Case study

In a retrial case, Zui Gao Fa Min Shen No. 1804 (2017), about infringement of a utility model patent made by the Supreme Court in December 2018, one point at issue was whether the term “supporting rail” of the “sorting device of vegetables and fruits” defines a means-plus-function feature.

The Supreme Court said: “If a technical feature defines simultaneously the corresponding structural limitation besides the function or effect, and a person skilled in the art can directly and explicitly determine, by reading purely the claims, the specific embodiment(s) of the structural limitation which can perform the function or effect, such a technical feature of combining the ‘structure’ and the ‘function or effect’ doesn’t belong to the ‘means-plus-function feature’ as defined in the previous judicial interpretations.”