论方法专利的延伸保护范围

On the Extended Protection for Process Patents

方法专利的延伸保护不是专利权内容之延伸,而是方法专利保护客体范围之延伸。确定延伸保护范围既应公平保护专利权人的利益,又应兼顾公众的合理信赖利益。为此,延伸保护范围应当根据权利要求判定“依照专利方法”,限定于实体产品制造方法专利,不应适用于“数字产品”。同时,应当根据比例原则判定依照专利方法“直接获得的产品”,区分新产品制造方法专利与现有产品制造方法专利,使延伸保护范围与专利方法的创新程度相匹配。对现有产品制造方法专利,其延伸保护只应及于原始获得产品;对新产品制造方法专利,其延伸保护范围不仅应及于依照专利方法原始获得的产品,还应及于经过处理之后仍区别于现有产品的后续制得产品。

It is widely accepted that rights conferred on a process patent should not be limited to such process but extended to the products directly obtained by such process.The extended protection is stipulated in Article 28 entitled“Rights Conferred”of the Agreement on Agreement on Trade-Related Aspects of Intellectual Property Rights(TRIPS).However,WTO members differ in its application.The Supreme Court of People’s Court insists that“product directly obtained from a process patent”is the original product produced from such process(hereafter“original product test”).Germany and UK courts apply the“loss of identity test”,namely,a product could be obtained directly from a claimed process despite further processing if there is no loss of identity.US patent law provides that a product made by a patented process is protected except that it is materially changed by subsequent processes(hereafter“material change test”)or becomes a trivial and nonessential component of another product(hereafter“trivial component test”).It is misleading that the extended protection is subsumed under“rights conferred on a patent”,as in Article 28 of TRIPS,Article 63 of European Patent Convention and Article 11 in Chinese Patent Law.Indeed,it is the scope of protection of subject matter of a process patent—as defined in a process claim—that is extended from such process to the product obtained from it.As such,the extended protection is an exception to the generally accepted principle that the scope of protection for a patent is determined by the claims.Accordingly,rights conferred on a process patent is composed of rights conferred on the claimed process and rights conferred on the extended subject matter—the product obtained directly from such process.Consequently,the scope of extended protection should be governed by the same principle for scope of protection for a patent.It should combine fair protection for the patent proprietor with a reasonable degree of legal certainty for the third parties.To guarantee a reasonable degree of legal certainty for the third parties,for the purpose of“product directly obtained from such process”,“such process”should be determined by the claimed process,not by the“general inventive concept”of the patent description.Traditionally,Germany courts held that the inventor did not merely enjoy the protection of that which he claimed to be protected but also,according to the true inventive accomplishment,that which he could have claimed in the light of the whole state of the art at the time of the application.Not surprisingly,it was German patent practice which gave birth to the extended protection for a process patent and Germany courts still apply the“loss of identity test”.The identity of the product of the patented process is necessarily determined by its general inventive concept.Under this test,the problem is that nobody could tell where the extended protection stops.To illustrate,in 2012,Bundesgerichtshof in a patent case concerning MPEG-2 decided that the extended protection may apply to“data”,extending the extended protection further to“digital product”.As computer programs are never considered as manufacturing process with technical character eligible for patenting under Article 53 of European Patent Convention,their products“data”should not be treated as“product”under patent law.The extended protection should apply only to tangible products manufactured by a claimed process,with no reference to the general inventive concept of such process.Otherwise,there is no reasonable degree of legal certainty for the extended protection on the part of third parties.To be fair for the patentees of process patents, patented processes for manufacturing new productsand those for existing products should be distinguished for the purpose of “product directly obtainedfrom such process”, for patent protection should be proportionate with inventive contribution. Existingproduct are those which could be produced by prior art and new products are those which could not beproduced by prior art. “New” means novel and non-obvious. Natural substances found in nature whenproduced through human efforts is new, even though they are not eligible for patenting. The extendedprotection for patented manufacturing process for existing products should cover only originallyobtained products, while the extended protection for patented manufacturing process for a new productshould cover any products which are new in view of prior art. This proposed test can account for thedivergence of case law of US and UK courts for the extended protection.In conclusion, the scope of subject matter of a process patent should be extended to the productoriginally obtained from the claimed process, and if such product is new, to any product produced bysubsequent processes which is new against prior art.