In patent applications inventors or patent agents usually add qualifiers to patent names. These qualifiers may affect grant of patent rights and are very important in patent infringement cases.   

1.Effect of Patent Names on the Novelty and Originality of Patents in the Patent Right Grant Process

According to the Guidelines for Patent Examination of the National Intellectual Property Administration, adding qualifiers to patent names in patent applications may affect the patent protection scope. To what extent do patent names affect the patent protection scope? Look at the illustration example in the Guidelines for Patent Examination.

In patent applications patent agents or inventors usually indicate uses of their patents in patent names. Look at the illustration example in the claim 3.1.1 of Chapter Two Specifications and Claims of Part II Substantive Examination of the Guidelines for Patent Examination (amended in 2017). For example, in the patent name of “a mold for casting molten steel”, “for casting molten steel” is a qualifier for “mold”. The melting point of “a plastic mold used for making ice cubes” is much lower than “a mold used for casting molten steel” and cannot be used for casting molten steel and therefore is not protectable under the above patent. Uses of the two molds indicated by the qualifiers are quite different (one is for casting molten steel and the other for making ice cubes). Due to the addition of the qualifier, technical documents for the two molds are not usually considered when deciding their novelty and originality.      

If a qualifier such as “used for.....” has no effect on claims for product or equipment and is only a description of the use or usage of the product or equipment, the qualifier has no effect on deciding a quality such as the novelty or originality of the product or equipment. For example, in “the compound X used for.....”, if “used for....” has no effect on the compound X, this qualifier will have no effect on deciding the novelty or originality of the compound X. 

In the Guidelines for Patent Examination, “if there is a qualifier in the product name in a claim to indicate its use, the qualifier should be considered when deciding the protection scope of the claim”, but the role of the qualifier depends on its effect on the claim.

2.Effect of Patent Names on Patent infringement Cases to Be Decided

Qualifiers in patent names limit (narrow down) the patent protection scope in patent infringement cases.

According to Article 5 of the Interpretation (II) by the Supreme People’s Court of Several Issues Connected with the Application of Laws to Hearing and Deciding Patent Right Infringement Cases, “the introduction and feature description sections of independent claims and technical features described in references and limitations of dependent claims limit the protection scope of patents to be decided by courts”. According to Article 21 of the Detailed Rules on Implementation of the Patent Law (amended in 2010), “independent claims for an invention or a utility model should include introduction and feature description sections which should specify: (1) in the introduction: the invention or utility model name and essential technical features that both the invention or utility model and the current technology that is most similar to the technology used in the invention or utility model have”. Patent names are included in the introduction of patent claims and limits their protection scope.

3.A study of precedent patent infringement cases

In patent infringement cases a patent name that describes an aspect of the related technology such as its application, use or structure limits (and narrows down) the protection scope of the patent right to be decided. Including a qualifier of this kind only in a patent claim without adding any qualifier to the patent description is considered as narrowing down the protection scope of the patent by giving its name. Any part of the patent not claimed amounts to a “donation” to the general public.   

a.The (2013) Y.G.F.M.S.Z.Z.No.615 civil case decided by the Higher Court of Guangdong Province is a patent infringement dispute regarding the No. ZL200620064110.5 utility model, “a removable plate for connecting the pipeline to the indoor unit of an air-conditioner” between Guangdong Midea Refrigeration Co., Ltd. and Zhuhai Gree Electrical Equipment Co., Ltd.  

Being “removable” in the patent name is a technical function of the patent that should be considered when deciding if the patent was infringed. “Removable” meant being able to be “disassembled” and “assembled”. The patent description did not mention the technical function of being “removable”. However, the patent owner narrowed down the patent protection scope by adding “removable” to the patent claims. In an infringement case, in principle, the patent owner could not include a donated technology into the patent protection scope.

b.The (2015) J.Z.M.C.Z.No.1674 civil case decided by the Beijing Intellectual Property Court is a patent infringement dispute regarding the No.ZL02103777.9 invention, “a method of preventing or alleviating blood loss from unfreezing a frozen meat”. A study of the patent description, the reply to the official opinions, etc. showed that the related technology of the patent was used in treating unfrozen meat, not frozen one for the purpose of alleviating blood loss by freezing meat and then unfreezing it. The patent name limited the patent protection scope in the claim 1, causing the technology under the claim 1 to apply to any unfrozen meat.

Final Part: Adding qualifiers to patent names may not be very helpful in the patent right grant (Whether they are helpful depends on approved areas and the product structure). In patent infringement cases, however, qualifiers in patent names are used to evaluate a patent infringement and very important to narrow down the patent protection scope and considered by courts when making decision. Therefore, when preparing patent documents, avoid narrowing down the patent protection scope as greatly as “donating” the patent without compensation.