The concept of “usage environment characteristics” in patent claims has been widely applied in judicial practice since it was first mentioned in the Min Ti Zi (2012) No. 1 judgment. Academic statistics show that, as of 3 October 2024, more than 100 judgments have referenced usage environment characteristics.
Haitao Yu
Patent Attorney
CCPIT Patent and Trademark Law Office
Beijing
Tel: +86 10 6604 6759
Email: yuht@ccpit-patent.com.cn
However, despite the broad application of this concept in judicial practice, only one legal document currently addresses this concept: article 9 of the Supreme People’s Court’s Interpretation (II) on Several Issues Concerning the Application of Law in the Trial of Patent Infringement Dispute Cases. This article stipulates that “if the alleged infringing technical solution cannot be applied to the usage environment as defined by the usage environment characteristics in the claim, the people’s court shall determine that the alleged infringing technical solution does not fall within the scope of patent protection”. This judicial interpretation, through negative expression, clarifies that “usage environment characteristics” have a limiting function in claims. But it does not address two important issues: What constitutes usage environment characteristics and how does the limiting effect of usage environment characteristics compare to other technical features?
The Hu 73 Zhi Min Chu (2022) case, represented by the China Council for the Promotion of International Trade Patent and Trademark Office, involved usage environment characteristics and was successfully included in the Supreme People’s Court’s Annual Report on Legal Application Issues in Intellectual Property Cases by Courts Nationwide (2024). This sends a positive signal by providing legal guidance to practitioners. This case will be used to illustrate current judicial practice in determining usage environment characteristics. In the Hu 73 Zhi Min Chu case, the court held that “the determination of usage environment characteristics can be made by comprehensively considering the invention title, invention subject, descriptions in the claims regarding installation and other relationships, and the content of the specification.
When considering whether the alleged technical solution possesses the relevant usage environment characteristics of the patent claim, it is not required that the alleged infringing product necessarily contains components related to the usage environment characteristics; it suffices if the alleged infringing product can be applied to the usage environment defined by the usage environment characteristics”.
This determination is consistent with previous judicial practice. In fact, judicial practice has reached a relatively unified understanding of the two issues discussed regarding usage environment characteristics. Multiple Supreme People’s Court judgments have found that “usage environment characteristics in the sense of patent law refer to technical features in the claims that describe the background or conditions in which the invention is used”.
At the same time, courts hold that “usage environment characteristics written into the claims are essential technical features … and have a limiting effect on the scope of protection. The extent to which usage environment characteristics limit the scope of patent protection should be determined on a case-by-case basis. Generally, if the alleged infringing technical solution can be applied to the usage environment defined by the usage environment characteristics, it is deemed to possess such usage environment characteristics”. The patent in question in the Hu 73 Zhi Min Chu case sought protection for a processing cartridge, with the relevant usage environment characteristic being “the main assembly of an electrophotographic imaging device”. In other words, the subject of protection was printer consumables such as toner cartridges, and the usage environment characteristic was the printer itself. In the independent patent claim – in addition to specifying the structural features of the processing cartridge itself – technical features on the installation relationship with the electrophotographic imaging device (relevant features) were also defined. On these features, the court’s reasoning was as follows. First, determining whether the relevant features belonged to the structure indicated by the claim’s subject title. On review, the technical features on the “main assembly” in the claim were deemed to be usage environment characteristics. Second, based on the technical features and the textual description in the specification, the court determined the specific form of the usage environment characteristic.
The judgment found that the technical features related to the processing cartridge included a description of “removably installed in the main assembly of an electrophotographic imaging device”, from which it could be determined that the processing cartridge and the main assembly had an installation relationship.
From the specification and drawings, it was determined the technical features in the claim relating to the main assembly were conditions for using the processing cartridge, not components of the processing cartridge, and thus constituted usage environment characteristics.
Finally, the court determined whether the alleged infringing product could be applied to the usage environment defined by the usage environment characteristics. As the alleged infringing product could be applied to the usage environment defined by the usage environment characteristics, it possessed the relevant features.
Some suggestions
Yazhuo Qian
Patent Attorney
CCPIT Patent and Trademark Law Office
Beijing
Tel: +86 10 6604 6483
Email: qianyzh@ccpit-patent.com.cn
In patent enforcement, when the alleged infringing technical solution lacks certain features, the rights holder may consider whether such features can be regarded as usage environment features. Compared with ordinary technical features, this special infringement determination rule for usage environment features has lower evidentiary requirements. Usually, it is only necessary to prove that the alleged infringing product can be used in the usage environment specified by the feature, rather than proving the alleged infringing technical solution itself has that feature. Therefore, this provides the rights holder with another approach to claim infringement. For example, in the case of Zui Gao Fa Zhi Min Zhong (2021), the independent claim defined “an automatic positioning structure for the upper cover of a network plug, including a network cable containing multiple internal core wires, with a certain length of the front end of the network cable extending into the plug body”. The alleged infringing product did not have a specific network cable, so the first-instance judgment held it lacked necessary technical features and did not constitute infringement. However, in the second instance, by claiming the network cable was the object of the patented technical solution and thus a usage environment feature, the court ruled it as infringement. Conversely, as a defendant, one can defend by arguing that the feature is not a usage environment feature. At the same time, if the technical solution defined in the patent document can only be applied to that usage environment feature, the defendant can provide evidence the alleged infringing technical solution can be applied to other use environments besides the said usage environment feature, thus proving the alleged infringing product does not have the usage environment feature.
When drafting a patent – while being cautious about including usage environment features in independent claims – one should also avoid deliberately evading usage environment features, which may result in an incomplete or unstable technical solution. Due to the doctrine of complete coverage, in patent enforcement, it is necessary to prove that the alleged infringing product has all the technical features claimed in the asserted claims. If environmental technical features irrelevant to the inventive concept of the patent are included in the claims, it will not only be of no help to the authorisation and stability of the claims, but also increase the difficulty of proof and the cost of rights protection. On the other hand, if usage environment features are deliberately evaded and only features on the product side are drafted, it may sometimes fail to fully reflect the technical solution to be protected, or make it difficult to distinguish the patented technical solution from the prior art, leading to the application failing to be authorised or the patent being invalidated.
Conclusion
In judicial practice, the usual approach is to first make a preliminary determination, based on the subject title of the patent to be protected, as to whether the relevant technical features directly limit the subject matter of the invention to be protected. Next, the specification and drawings are used to determine the specific form of the usage environment characteristic. Such common characteristics often manifest as conditions and environments that limit the installation, connection or use of the patented technical solution.
However, given the complexity of the technical solutions claimed in patents, usage environment characteristics are not limited to structural features directly related to the installation position or connection structure of the protected technical solution.
Finally, the extent to which usage environment characteristics limit the scope of patent protection is determined on a case-by-case basis. Generally, if the alleged infringing technical solution can be applied to the usage environment defined by the usage environment characteristics, it is deemed to possess such usage environment characteristics.
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