Today, we will look at intellectual property rights, especially “the scope of patent claims and the effect of patent rights”.
1. Claims
Let's take a pencil as an example. It is an invention with an eraser attached to a pencil with a normal hexagonal body. Components include a pencil lead, a hexagonal body, and an eraser. In this case, the case where the claim is too narrow is when the claim is made as it is (hexagonal eraser pencil). In this case, for example, the question arises as to whether a claim can be made on an octagonal pencil with an eraser. However, claims that are too broad can also be problematic. For example, if the eraser pencil is defined as a writing instrument equipped with an erasing means, there is a problem that there is no reason for invalidation by the prior art (pencil, eraser, sharp eraser, etc.). In this case, there is a possibility that the patent may be invalidated. In this pencil example, a proper claim is to be written as an independent claim with a writing instrument equipped with an erasing means, and as a dependent claim, the erasing means is an eraser and the writing instrument is a polygonal pencil. As such, when writing the specification, the assertion of the claims becomes a very important element, and it is necessary to carefully prepare independent claims and dependent claims without omitting the elements of the invention. For example, if there are components a, b, c, and d, then the essential components a + b are independent and the dependent clauses a + b + c, a + b + d, or a + b + c + d.
2. Interpretation of claims
The following elements are included in the interpretation of claims.
(1) Principle of Priority of Claims - The scope of patent protection is made based on the elements of the invention listed in the claims, their complementary combinations, and drawings, etc..
(2) Principle of Integrity - Since an invention is made by reciprocal combinations of technical components, the entire component is judged as one occurrence. And thus, infringement of a patent means that the later invention contains all components, or elements that are considered to be equal to the former invention’s componenet (refer to the Equivalence requirement below), of the former invention.
(3) Equivalence requirements - If the components of the invention in the later application are similar to those in the earlier application, patent infringement is judged based on whether the substituted component actually performs the same function as in the earlier application, that is, whether it brings the same operation and effect as a technology, and whether it is easily used by a third party. This is called the doctrine of equivalents, and if it conforms to the doctrine of equivalents, it is patent infringement, and if it does not conform to the doctrine of equivalents, it is not an infringement. That is, the interpretation of the claims goes through the order of whether it is written in the claims, analysis of the components, and application of the doctrine of equivalents of the components
(4) Estoppel principle: The matter that the applicant said not to claim as a right in the specification cannot be recognized as a right in the future. If the claims in the specification are reduced or changed mainly by agreement between the applicant and the examiner, the initially claimed right will not be recognized.
(5) Exclusion of public notice: The known prior art cannot be recognized as its own right.
3. Effect of patent rights
Patentee monopolizes the right to practice the invention as a means of earning money (*Execution of a patent not for the purpose of making money by a third party is not included in the scope of protection)
- When the invention is a thing, the case of production, transfer, sale, import, etc. monopoly of all rights
- If the invention is an invention of a method, monopoly on the use of the invention (the invention of a thing has a larger scope)
- In the case of an invention of a method of production, implementation of the method and the method.
Accordingly, the patentee may hold the manufacturer, agent, and user liable for the alleged infringement of the patent.
4. International Effect of a patent
- Independent patent examination procedure for each country (territoriality)
- Independent procedure for exercising rights by country
- Due to the different examination procedures for each country, the results of patent applications may be different.
Taken together, it can be seen that a strategic approach to which country to issue a patent is required.
Today, we looked at intellectual property rights, especially “the scope of patent claims and the effect of patent rights”. Next time, we will have time to discuss “the process and prevention of patent disputes”.
*The above is what I learned from Professor Moon's intellectual property lecture, which can be viewed through K-mooc. Here is the link to the lecture (you may not be able to view it without logging in).
kmooc.kr/courses/course-v1:YeungnamUnivK+YU21900+2021_01/course
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