A subject matter disclosed in the written description but not claimed by the patentee may not be cited in patent infringement cases as an equivalent, for the unclaimed subject matter is deemed as dedicated to the public. This has been the well-established rule of dedication, and this article will review its history, its application, and its impact on patent applications and reexaminations.

 

 

The dedication rule was developed first in Miller v. Brass Company, 104 U.S. 350 (1881), which was heard by the Supreme Court of the United States. In that case, the patent owner disclosed two lamp devices in the specification, but only one of them was claimed. Ten years later, finding that the other unclaimed device was even better, the patent owner wanted to have the unclaimed structure protected through the reissue procedure. This request was not supported by the Supreme Court. In the decision, the court pointed out “where a specific device or combination is claimed, the non-claim of other devices or combinations apparent on the face of the specification is, in law, so far as the patentee is concerned, a dedication of them to the public, and will so be enforced unless he with all due diligence surrenders his patent for reissue and proves that his omission to claim them arose wholly from inadvertence, accident, or mistake.”

 

However, for a long period thereafter, the dedication rule had seldom been applied. Since the United States Court of Appeals for the Federal Circuit (CAFC) was established, the Doctrine of Equivalents was applied more often, causing the balance of interests to tip towards the patent owner. To correct the tendency, beginning in the 1990s, the application of the Doctrine was restricted. As a result, a few cases emerged where the dedication rule was applied, such as Unique Concepts Inc. v. Brown, (Fed. Cir. 1991) and Maxwell v. Baker (Fed. Cir. 1996). However, the rule was rejected in some cases, such as YBM Magnex v. ITC (Fed. Cir. 1998). After the Festo case, with more restrictions on the equivalent rule, the dedication rule has been applied widely.

 

A typical application of the dedication rule can be found in, Johnson & Johnson Associates Inc. (hereinafter “J&J”) v. R.E. Service Co., Inc. (Fed. Cir. 2002),. This case was heard en banc. In the case, J&J, as the patent owner, had a patent related to the manufacture of printed circuit boards. In the prior art, during the layering process, the copper foil was handled manually and could be easily damaged. The related patent disclosed a technical scheme that adhered the fragile copper foil to a stiffer substrate sheet of aluminum. It prevented possible damage during manual handling. In the patent claims, the substrate was limited to aluminum. The specification read: “While aluminum is currently the preferred material for the substrate, other metals, such as stainless steel or nickel alloys may be used… In some instances … polypropylene can be used.” Stainless steel was used in the alleged infringing product that RES manufactured. During the litigation, Johnson argued that the manufactured product of RES constituted equivalent infringement. However, RES held that though J&J disclosed the stainless steel sheet in the specification, he had limited the protection to the aluminum sheets. It was obvious that Johnson had dedicated the stainless steel sheet to the public. The CAFC held that if an applicant discloses a subject matter in the specification but does not claim it, it means that the applicant has dedicated the subject matter to the public. Under this circumstance, infringement by equivalent, if established, would significantly conflict with the function of the claims, which is to define the limits of patent protection. It also pointed out that a patentee cannot narrowly claim an invention to avoid prosecutor scrutiny by the Patent and Trademark Office (PTO), and then, after patent issuance, rely on the doctrine of equivalents to claim infringement because the specification discloses equivalents. The court finally affirmed the judgment of non-infringement. The decision firmly established the dedication rule.

 

Another typical case was PSC Computer Products Inc. v. Foxconn International, (Fed. Cir 2004). In the case, the patentee, PSC Computer Products Inc (PSC) owned a patent for a, “Cam-Type Retainer Clip for Heat Sinks for Electronic Integrated Circuits,” which included an elongated strap. In the patent claims, the elongated strap was limited to a metal strap. The patent description stated “the elongated strap is made of a resilient metal such as stainless steel, although other resilient materials may be suitable for the strap… other prior art devices use molded plastic and/or metal parts.” It was a plastic strap that was used in the alleged infringing product that Foxconn International (Foxconn) manufactured.

 

During the litigation, the parties disputed as to what extent a subject matter was described, when the dedication rule could be referenced and the subject matter to be deemed dedicated to the public. PSC argued that the dedication rule did not apply only if the description of the related subject matter was clear and specific; in the case, the description did not clearly note that a plastic strap could be substituted for the metal strap and the dedication rule could not be applied. The CAFC held that if one of ordinary skill in the art can clearly and specifically understand the unclaimed disclosed informative matter upon reading the written description, the alternative matter disclosed is deemed dedicated to the public. In the case, with the description that “other prior art devices use molded plastic and/or metal parts”, a person of ordinary skill in the art could easily understand that a plastic strap could be substituted for the metal strap. The description could be deemed as clear and specific. Therefore, the application of the dedication rule was appropriate. The court finally affirmed the judgment of non-infringement. However, the court also pointed out that if the description had contained only, “other resilient materials may be suitable for the strap,” the patentee could not be found as having dedicated the plastic strap to the public.

 

Another leading case is Rosby v. Stoughton, (N.D., Il. 2003). In the judgment, the court pointed out that when a patentee narrows an original broad claim in response to an office action, the dedication rule does not apply to the subject matter disclosed, but eliminated by the amendment.

 

From the above cases, one can find that the dedication rule is founded on two theories. One is that the claims function to publicize the protection scope of the patent. The other is that the patent rights come from approval by the state. In the application of the rule, whether the description of the related subject matter is clear and specific will be determined based on the standard of a person of ordinary skill in the art who has read the entire specification of the patent. If the subject matter is only described in general terms, the dedication rule will not be applied generally. If the related subject matter is covered by the original claims of the patent applicant, it means that the applicant intends to protect the subject matter. In this situation, the dedication rule is also not applicable.

 

 

In the recent Supreme People’s Court interpretation on patent infringement, the dedication rule was formally introduced to China. The introduction was said to be based on the following considerations: The applicant would make a narrower claim, out of a broad-based coverage in the description, in order to get a patent; and later in infringement suit, he would turn around and contend that the broad coverage is equivalent to what he has claimed, thereby improperly extending the protection scope of his patent. This is actually a “second bite.” It is contrary to the fundamental principle of quid pro quo – allowing patent by protecting public interest – on which the patent system was premised. The introduction of the dedication doctrine is to foster what has been made public as the patent claims, and will strike a balance between the patent right and public interests.

 

To determine whether a new rule will benefit the patent system of China, one should take into account the balance of interests between the patentee and the public, the current stage of economic development and the current operation of the patent system in China. Also, the tendency of the international society to handle the related issues should be considered.

 

In the opinion of this author, generally speaking, the introduction of the dedication rule will be beneficial to the healthy growth of the patent system. In China, by the end of 2009, the patent applications were more than 5.8 million and the grants were more than 3 million. For the public, the more the patent applications and grants, the larger the “mine zone” - the scope of exclusive rights of the patentees. The costs of developing or releasing to the market new products will be higher. The situation will be even worse if the mine zone has a vague boundary. For this sake, if the publicizing function of the claims is appropriately strengthened, it will help strike a balance between the interests of the patentee and the public. As the redundant element rule is abandoned and the prosecution history of estoppels is strengthened, the introduction of the dedication rule will undoubtedly increase the publicizing function of the claims.

 

In addition, with the dedication rule and the strengthened publicizing function of the claims, the Chinese patent system will be more in line with the growing international patent system as represented by the United States. It will become more predictable for foreigners.

 

However, we must be fully aware that the dedication rule may have negative effects. First, for a long period of time, the doctrine of equivalent has been widely applied in judicial practice of China. It has played a significant role in the effective protection of patentees’ rights and interests and the establishment of an international image of China. As the dedication rule is introduced and the prosecution history of estoppels is strengthened, the doctrine of equivalent and its protection will be greatly weakened. This will somewhat affect the recent positive image of China in patent protection. Second, for a long period of time, patent applicants will continue to include as many embodiments into the specification as possible. With the introduction of the dedication rule, the applicant will want to disclose the content of its invention as little as possible. This goes against the legislative intention to use the patent law to encourage the spreading and application of inventions. It is not quite in line with the state intellectual property strategy of China to build a creative country. Third, recently, the patent examination has become stricter. For example, the requirement on the time frame to file self-initiated amendment to the application documentation, the examination on overly amendments, the restriction on the filing of divisional applications and the examination on application for software implementation, etc. Coupled with this, more restrictions were imposed on the exercise of patent rights. Under the current situation, any additional restriction will affect the enthusiasm of patent applicants to file their applications and exercise their rights.

 

For this reason, in the opinion of this author, currently, a cautious attitude will be needed with respect to the dedication rule. The practice of the United States may be worth consideration, e.g., by imposing certain limitations to the rule. First, the dedication rule will not be applied unless the specification contains a specific description of the related subject matter. It will be inapplicable if what the specification includes is only a general description. Second, if the related subject matter has been included in the original claims or the amended claims (whether amendment being accepted during prosecution), it means that the applicant does not want to dedicate the subject matter to the public. As a result, the dedication rule cannot be applied. This seems to be an extra burden on the public - they have to examine both the documentation as published and the prosecutorial history in order to determine whether the related subject matter has been dedicated. It is actually not. In fact, the public is burdened anyway even without such restrictions, for dedication of the subject matter cannot be presumed from the text of the patent documents alone, as what is unclaimed here might be subject matters of related patents.

 

Moreover, it should be noted that the dedication rule can be applied only with respect to infringement by equivalent, not literal infringement. In the determination of patent infringement, to interpret the claimed protection scope, the content of the specification will often be referred to. In practice, it often occurs that the claimed element A can only correspond to element B in the specification, and what the alleged infringing product uses is the element B. In this situation, the dedication rule cannot be relied on, nor can a conclusion of non-infringement be reached on the grounds of the unclaimed element B.

 

 

As this author mentions above, for a long period of time it has been the practice of patent applicants to disclose as many modes of embodiment as possible in the specification. There are four reasons for this. First, the patent law requires that the claims need must be supported by the specification. Claims should be supported by several of embodiments to support the claim. This is especially true when they are written using an upper concept, if a functional feature invention claims a genus, or, when it is drafted in means-plus-function language, it ordinarily requires multiple modes. Second, during the examination, the examiner may find more relevant prior arts which will render literature defined by the original claims to lose its novelty or inventiveness. In this situation, the claims may be amended or rewritten according to the other modes which are unclaimed embodiments described in the description. Third, during the examination, the applicant may find new variants of his own product or of the applicant or its competitor’s which may be changed and the changed product cannot be covered by the original claims, which calls for modification of the claims. In this situation, the claims need be amended. Apparently, the more the written description discloses, the more maneuverability a claim has for modification. If the specification contains more, it will provide more space for amendments. Fourth, in an infringement suit, the doctrine of equivalents applies when an element in infringement is an equivalent. The judge will determine whether a certain feature of the alleged infringing product performs substantially the same function, in substantially the same way, to achieve substantially the same result (F/W/R). A parallel with a claimed element, which could be done by any one feature of the alleged infringed patent, has employed basically the same means, realized basically the same functions and reached basically the same result, and whether a person of ordinary skill in the art can associate with this feature without using creative efforts. Apparently, if such an element has been disclosed in the description, a conclusion of equivalency could easily be arrived at.

 

With the introduction of the dedication rule, the practices usual applicant practices above should be adjusted in an appropriate way to avoid dedicating embodiments that are or will be useful. Specifically, the following writing strategies may be considered.

 

First, include as few as possible embodiments in the specification. This strategy requires the applicant to make a comprehensive search of the prior arts before writing the application so that the application will not be rejected for lack of novelty or creativity. In addition, for any embodiments left non-described in the specification to be easily protected under the equivalent rule, a disclosure in other ways may be considered.

 

Second, describe other possible embodiments using language that is as general as possible. It is necessary that this strategy be founded on the first restriction mentioned above. Again, it requires the applicant to do a comprehensive search for prior art before writing the application so that the application will meet novelty and inventiveness requirements.

 

Third, as is usual practice, include as many embodiments possible in the description, but use a general independent claim which covers all the embodiments and then write one claim for each of the individual embodiments.

 

Fourth, as is usual practice, include as many embodiments as possible in the specification and claim each of the embodiments through divisional applications. This is the most reliable and yet the most expensive of the strategies. Also, this strategy is restricted by the time frame required for filing of divisional applications.

 

 

In patent examination practice of China, the applicant is strictly restricted with respect to amending its application. Applicants have little chance of amending the application on their own initiative, except when a substantive examination application is filed or within three months from the notification date that the application has entered into the substantive examination procedure. In response to the office action, the applicant can only amend the defect notified. For example, suppose an applicant includes an alternative for a certain technical feature in the specification, but fails to claim this alternative. Later, it finds that this alternative is used by a competitor. As a result, it wants to add this alternative into the claims when responding to the office action. Under these circumstances the proposed amendment will be rejected by the examiner on the grounds that it is not related to the office action. Obviously this would be unfair to the applicant.

 

In the United States, where the dedication rule is applicable, an applicant has much latitude to amend its application during the examination. Additionally, when granted a patent, it may amend the claims again through the reissue procedure.

 

Therefore, to mitigate the possible negative affects that the dedication rule may have on the patentee, this author proposes that the provision of more latitude for application amendments should be considered. At a minimum, the examiner should apply looser standards when determining whether the applicant’s amendment is specific to the defect notified in the office action.

 

The negative affects of the dedication rule will be better mitigated if the restriction is removed regarding the time frame for filing of divisional applications, the post-grant amendment procedure is introduced and the patentee is allowed to claim non-claimed technical features described in the specification during the invalidation procedure.