Process claims (i.e. method claims) usually constitute many steps. The order of those steps are sometimes explicitly specified, such as a, b, c; and sometimes not in a particular order. This leaves room to the question of “whether changing the order of steps in a process claim can fall into the doctrine of equivalents in China”.
A recent China Supreme Court decision gives clarification on the above. This is a China domestic IP dispute case, with the patentee being a Chinese individual and the other party being a Chinese company. The subject patent relates to a method of making hot water bags (picture below). There are twelve steps in total for making such a hot water bag. Out of the 12 steps, the defendant reversed the order of step 10 and step 11. Hence, the key issue here is whether changing the order of step 10 and step 11 out of the total twelve steps falls into the doctrine of equivalents.
In the judgment, the supreme court laid out the principle that the following two elements must be considered in determining whether changing the order of steps in a process claim can fall into the doctrine of equivalents in China:
- Whether the steps in a process claim should be carried out in a particular order; and
- Whether changing the orders of a few steps will bring substantial technical advantage.
The court found that reversing the order of steps 10 and 11 does bring technical progress in terms of efficiency. Hence the defendant’s method does not constitute equivalent features to the subject patent, and thus does not infringe.
Learning from this case, it is advisable that all feasible orders of steps in a process should be contemplated and claimed, when drafting a patent process claim. Furthermore, it is suggested that there are languages in the patent specification showing that which steps can be interchanged. It is better not leave the court to decide on which features are equivalent, but to have all feasible order of steps clearly written into the patent.
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