Patent Infringement Determination Standards and Enforcement Practical Guide

Patent infringement is the most common problem encountered by patent holders in the exercise of their patent rights and is also a key link in the protective function of the patent system. When it is discovered that someone may be infringing on one's own patent rights, how to accurately determine the existence of infringement, how to effectively collect evidence, and how to choose the appropriate enforcement path are all practical issues that patent holders must face.

In an increasingly competitive market environment, patent infringement has become more complex and covert. Infringers often use various means to circumvent patent protection, which makes infringement determination more difficult. At the same time, with the acceleration of technological development, new forms of infringement are constantly emerging, and traditional determination standards and enforcement methods are also facing new challenges.

Therefore, patent holders need to establish a systematic infringement monitoring and response mechanism, mastering both the basic principles of infringement determination and the specific techniques of practical operation. Only in this way can they effectively protect their patent rights and interests in a complex market environment.

Basic Principles of Patent Infringement Determination

Patent infringement determination is a complex process that is both technical and legal, requiring a detailed comparison of the accused infringing product or method with the patent claims. This process requires not only an accurate understanding of the technical content but also a deep grasp of legal principles.

The all-elements rule is the core principle of patent infringement determination. According to this principle, the accused infringing technical solution must contain all the technical features recited in the patent claims to be found to constitute infringement. This means that even if the accused product is similar to the patented technology in some respects, as long as it lacks any one of the necessary technical features in the claims, it does not constitute infringement.

In the actual determination process, the comparison of technical features is the most critical link. This comparison is not a simple textual comparison but requires an understanding of the substantive content and function of the technical features. The same technical function may be achieved through different technical means, which requires the application of the doctrine of equivalents to determine whether it constitutes infringement.

The doctrine of equivalents is an important supplement to the all-elements rule. It holds that if a technical feature in the accused infringing technical solution performs substantially the same function in substantially the same way to achieve substantially the same result as the corresponding technical feature in the patent claims, and it would have been obvious to a person of ordinary skill in the art to do so, then the two should be considered equivalent.

Prosecution history estoppel is another important principle in patent infringement determination. If the patent holder made a limiting statement or amendment to the scope of the claims during the patent application or invalidation procedure in order to obtain or maintain the patent right, they cannot re-include the abandoned content into the scope of protection in an infringement lawsuit.

Infringement Characteristics of Different Types of Patents

The infringement determination of invention patents is relatively complex because invention patents can protect both products and methods. For product invention patents, infringement determination mainly involves comparing the technical features of the accused infringing product with the patent claims. For method invention patents, not only the comparison of method steps but also the implementation and use of the method must be considered.

The infringement determination of method patents has its particularities because the implementation of a method is often covert and difficult to directly observe and collect evidence for. In this case, the use of the method can be inferred from the technical features of the product, or infringement can be determined through the reversal of the burden of proof.

The infringement determination of utility model patents is relatively simple because utility model patents only protect the shape, structure, or combination thereof of a product. The determination mainly compares the structural features of the product to see if the accused infringing product has all the structural features recited in the patent claims.

The infringement determination of design patents has its uniqueness, mainly comparing whether the design of the product constitutes an identical or similar design. This determination relies more on the comparison of visual effects and requires consideration of the principle of overall observation and comprehensive judgment.

Collection and Preservation of Infringement Evidence

Evidence is the foundation of a patent infringement lawsuit, and the quality of the evidence directly affects the outcome of the lawsuit. The evidence that patent holders need to collect mainly includes three categories: evidence of rights, evidence of infringement, and evidence of damages.

Evidence of rights mainly proves the validity and ownership of the patent right, including the patent certificate, a copy of the patent register, and proof of payment of patent annuities. This evidence is relatively easy to obtain, but its timeliness and completeness must be ensured.

Evidence of infringement is evidence that proves the existence of the accused infringing act, including the accused infringing product, product manuals, technical materials, sales receipts, advertising materials, etc. The collection of this type of evidence is often difficult because infringers usually do not voluntarily provide these materials.

When collecting evidence of infringement, notarized evidence collection is the most common method. Through notarization by a notary office, the authenticity and legality of the evidence can be ensured. The scope of notarized evidence collection is wide and can include purchasing infringing products, taking webpage screenshots, conducting on-site inspections, and other forms.

Evidence of damages mainly proves the losses suffered by the patent holder due to the infringing act, including evidence of decreased sales, calculation of lost profits, evidence of the infringer's profits, etc. The collection and determination of this type of evidence are often the difficult points in a lawsuit and require professional financial analysis and legal argumentation.

In some cases, the patent holder can apply to the court for evidence preservation to forcibly collect evidence controlled by the accused infringer. Although this method is effective, it requires meeting certain conditions and bears corresponding legal risks.

Choice and Strategy of Enforcement Paths

There are multiple paths for patent enforcement, including administrative enforcement, civil litigation, and criminal prosecution. Different enforcement paths have different characteristics and applicable conditions, and patent holders need to choose the most appropriate method according to the specific situation.

Administrative enforcement is a relatively fast and economical enforcement method, mainly handled by intellectual property administrative departments at all levels. The advantages of administrative enforcement are that the procedure is relatively simple, the processing speed is fast, and the cost is low. However, the result of administrative enforcement is mainly to stop the infringement, and economic compensation cannot be obtained.

Civil litigation is the main method of patent enforcement, which can provide various remedies such as stopping the infringement, compensating for losses, and eliminating the impact. The advantages of civil litigation are that the remedies are comprehensive and the legal effect is strong, but the procedure is relatively complex, the time is long, and the cost is high.

When choosing a litigation strategy, multiple factors need to be considered. The first is the probability of winning the case, which requires a comprehensive assessment of the stability of the patent, the clarity of the infringement, the sufficiency of the evidence, etc. The second is the comparison of expected benefits and costs, including the possible amount of compensation, litigation costs, time costs, etc.

The choice of the competent court is also an important strategic consideration. Different courts may have differences in their experience in hearing patent cases, judgment standards, and trial periods. Patent holders can choose a more favorable court for themselves within the scope permitted by law.

A preliminary injunction is a special remedy that can stop the infringing act before a formal lawsuit. The advantage of this measure is that it can stop the infringement in a timely manner and prevent the expansion of losses. However, applying for a preliminary injunction requires meeting strict conditions, including the stability of the right, the clarity of the infringement, and the urgency and necessity.

Calculation of Infringement Damages

The calculation of patent infringement damages is an important issue in litigation and is also the focus of disputes between the parties. China's patent law provides for multiple methods of calculating compensation, providing flexibility for courts and parties.

The actual loss of the right holder is the most direct method of calculating compensation, mainly calculating the direct economic losses suffered by the patent holder due to the infringing act. This calculation method requires proving the causal relationship between the infringing act and the loss, as well as the specific amount of the loss. In practice, this calculation method faces difficulties in providing evidence.

The illegal gains of the infringer is another commonly used calculation method, mainly calculating the profits obtained by the infringer due to the infringing act. The advantage of this method is that it is relatively objective, but it requires obtaining the infringer's financial data, which also presents difficulties in obtaining evidence in practice.

The multiple of the license fee is a relatively simple calculation method, which determines the amount of compensation based on the patent license fee and in combination with the nature and circumstances of the infringement. The advantage of this method is that the calculation is relatively simple, but it requires comparable license fee data.

Statutory damages are an applicable calculation method when the actual loss, illegal gains, or license fee cannot be determined. The court can determine the amount of compensation within the statutory range based on factors such as the type of patent right and the nature and circumstances of the infringing act.

Punitive damages are a newly added compensation method in recent years, applicable to cases of intentional infringement and serious circumstances. This compensation method can award punitive damages of one to five times the determined amount, greatly increasing the cost of infringement.

Response Strategies for Infringement Defenses

In a patent infringement lawsuit, the accused infringer often raises various defense reasons to deny infringement or reduce liability. The patent holder needs to have a full understanding of and preparation for these defenses to respond effectively.

The non-infringement defense is the most common defense reason, mainly arguing that the accused technical solution is neither identical nor equivalent to the patent claims. This defense usually starts with a comparison of technical features, attempting to prove that the accused technical solution lacks certain necessary technical features in the claims.

The patent invalidity defense is another important defense method. The accused infringer will simultaneously file a request for patent invalidation, attempting to negate the infringement accusation by declaring the patent right invalid. This defense is very effective; if the patent right is declared invalid, the infringement accusation loses its basis.

The prior art defense is a special defense method. Even if the accused technical solution falls within the scope of protection of the patent right, if the technical solution belongs to the prior art, it does not constitute infringement. The theoretical basis for this defense is that the patent right should not cover the prior art.

The legitimate source defense is mainly applicable to sellers and users. If it can be proven that the accused infringing product has a legitimate source, they can be exempted from compensation liability, but they still need to stop the infringing act. This defense requires providing sufficient evidence to prove the legitimacy of the product source.

Development Trends in Patent Enforcement

With the continuous strengthening of intellectual property protection, the patent enforcement environment is undergoing positive changes. These changes not only provide better protection for patent holders but also pose new requirements for enforcement strategies.

The strengthening of judicial protection is the most obvious trend. Courts are becoming stricter in their determination of patent infringement, the amount of compensation is continuously increasing, and the scope of application of punitive damages is gradually expanding. These changes have greatly increased the cost of infringement and enhanced the deterrent effect of patent rights.

The improvement of evidence rules also provides better support for patent enforcement. The allocation of the burden of proof is more reasonable, the evidence preservation system is more complete, and the establishment of the technical investigator system has improved the accuracy of technical fact-finding.

The improvement of enforcement efficiency is another important trend. The establishment of intellectual property courts, the promotion of specialized trials, and the application of summary procedures all help to improve enforcement efficiency and shorten the enforcement cycle.

The increasing degree of internationalization is also an undeniable trend. As Chinese enterprises accelerate their pace of going global, the number of cross-border patent enforcement cases is constantly increasing, which poses higher requirements for enforcement strategies and capabilities.

Patent infringement determination and enforcement is a highly professional field that requires knowledge and experience in technology, law, and business. Patent holders should establish a sound intellectual property management system, doing a good job of prevention beforehand and having the ability to enforce their rights afterward. Only in this way can they fully leverage the protective role of patents in fierce market competition and maximize the value of their innovations.