Ideas and Innovations in Patent Law

Asia’s patent systems are evolving to balance innovation and local policy

Usage environment characteristics applied in China judicial practice

The concept of “usage environment characteristics” in patent claims has been widely applied in judicial practice since it was first mentioned in the Min Ti Zi (2012) No. 1 judgment. Academic statistics show that, as of 3 October 2024, more than 100 judgments have referenced usage environment characteristics.

However, despite the broad application of this concept in judicial practice, only one legal document currently addresses this concept: article 9 of the Supreme People’s Court’s Interpretation (II) on Several Issues Concerning the Application of Law in the Trial of Patent Infringement Dispute Cases. This article stipulates that “if the alleged infringing technical solution cannot be applied to the usage environment as defined by the usage environment characteristics in the claim, the people’s court shall determine that the alleged infringing technical solution does not fall within the scope of patent protection”. This judicial interpretation, through negative expression, clarifies that “usage environment characteristics” have a limiting function in claims. But it does not address two important issues: What constitutes usage environment characteristics and how does the limiting effect of usage environment characteristics compare to other technical features?

The Hu 73 Zhi Min Chu (2022) case, represented by the China Council for the Promotion of International Trade Patent and Trademark Office, involved usage environment characteristics and was successfully included in the Supreme People’s Court’s Annual Report on Legal Application Issues in Intellectual Property Cases by Courts Nationwide (2024). This sends a positive signal by providing legal guidance to practitioners. This case will be used to illustrate current judicial practice in determining usage environment characteristics. In the Hu 73 Zhi Min Chu case, the court held that “the determination of usage environment characteristics can be made by comprehensively considering the invention title, invention subject, descriptions in the claims regarding installation and other relationships, and the content of the specification.

When considering whether the alleged technical solution possesses the relevant usage environment characteristics of the patent claim, it is not required that the alleged infringing product necessarily contains components related to the usage environment characteristics; it suffices if the alleged infringing product can be applied to the usage environment defined by the usage environment characteristics”.

This determination is consistent with previous judicial practice. In fact, judicial practice has reached a relatively unified understanding of the two issues discussed regarding usage environment characteristics. Multiple Supreme People’s Court judgments have found that “usage environment characteristics in the sense of patent law refer to technical features in the claims that describe the background or conditions in which the invention is used”.

At the same time, courts hold that “usage environment characteristics written into the claims are essential technical features … and have a limiting effect on the scope of protection. The extent to which usage environment characteristics limit the scope of patent protection should be determined on a case-by-case basis. Generally, if the alleged infringing technical solution can be applied to the usage environment defined by the usage environment characteristics, it is deemed to possess such usage environment characteristics”. The patent in question in the Hu 73 Zhi Min Chu case sought protection for a processing cartridge, with the relevant usage environment characteristic being “the main assembly of an electrophotographic imaging device”. In other words, the subject of protection was printer consumables such as toner cartridges, and the usage environment characteristic was the printer itself. In the independent patent claim – in addition to specifying the structural features of the processing cartridge itself – technical features on the installation relationship with the electrophotographic imaging device (relevant features) were also defined. On these features, the court’s reasoning was as follows. First, determining whether the relevant features belonged to the structure indicated by the claim’s subject title. On review, the technical features on the “main assembly” in the claim were deemed to be usage environment characteristics. Second, based on the technical features and the textual description in the specification, the court determined the specific form of the usage environment characteristic.

The judgment found that the technical features related to the processing cartridge included a description of “removably installed in the main assembly of an electrophotographic imaging device”, from which it could be determined that the processing cartridge and the main assembly had an installation relationship.

From the specification and drawings, it was determined the technical features in the claim relating to the main assembly were conditions for using the processing cartridge, not components of the processing cartridge, and thus constituted usage environment characteristics.

Finally, the court determined whether the alleged infringing product could be applied to the usage environment defined by the usage environment characteristics. As the alleged infringing product could be applied to the usage environment defined by the usage environment characteristics, it possessed the relevant features.

Some suggestions

In patent enforcement, when the alleged infringing technical solution lacks certain features, the rights holder may consider whether such features can be regarded as usage environment features. Compared with ordinary technical features, this special infringement determination rule for usage environment features has lower evidentiary requirements. Usually, it is only necessary to prove that the alleged infringing product can be used in the usage environment specified by the feature, rather than proving the alleged infringing technical solution itself has that feature. Therefore, this provides the rights holder with another approach to claim infringement. For example, in the case of Zui Gao Fa Zhi Min Zhong (2021), the independent claim defined “an automatic positioning structure for the upper cover of a network plug, including a network cable containing multiple internal core wires, with a certain length of the front end of the network cable extending into the plug body”. The alleged infringing product did not have a specific network cable, so the first-instance judgment held it lacked necessary technical features and did not constitute infringement. However, in the second instance, by claiming the network cable was the object of the patented technical solution and thus a usage environment feature, the court ruled it as infringement. Conversely, as a defendant, one can defend by arguing that the feature is not a usage environment feature. At the same time, if the technical solution defined in the patent document can only be applied to that usage environment feature, the defendant can provide evidence the alleged infringing technical solution can be applied to other use environments besides the said usage environment feature, thus proving the alleged infringing product does not have the usage environment feature.

When drafting a patent – while being cautious about including usage environment features in independent claims – one should also avoid deliberately evading usage environment features, which may result in an incomplete or unstable technical solution. Due to the doctrine of complete coverage, in patent enforcement, it is necessary to prove that the alleged infringing product has all the technical features claimed in the asserted claims. If environmental technical features irrelevant to the inventive concept of the patent are included in the claims, it will not only be of no help to the authorisation and stability of the claims, but also increase the difficulty of proof and the cost of rights protection. On the other hand, if usage environment features are deliberately evaded and only features on the product side are drafted, it may sometimes fail to fully reflect the technical solution to be protected, or make it difficult to distinguish the patented technical solution from the prior art, leading to the application failing to be authorised or the patent being invalidated.

Conclusion

In judicial practice, the usual approach is to first make a preliminary determination, based on the subject title of the patent to be protected, as to whether the relevant technical features directly limit the subject matter of the invention to be protected. Next, the specification and drawings are used to determine the specific form of the usage environment characteristic. Such common characteristics often manifest as conditions and environments that limit the installation, connection or use of the patented technical solution.

However, given the complexity of the technical solutions claimed in patents, usage environment characteristics are not limited to structural features directly related to the installation position or connection structure of the protected technical solution.

Finally, the extent to which usage environment characteristics limit the scope of patent protection is determined on a case-by-case basis. Generally, if the alleged infringing technical solution can be applied to the usage environment defined by the usage environment characteristics, it is deemed to possess such usage environment characteristics.

CCPIT PATENT AND TRADEMARK
10/F, Ocean Plaza, 158 Fuxingmennei Street
Beijing 100031, China
Tel: +86 10 6641 2345 / 6851 6688
Email: mail@ccpit-patent.com.cn
www.ccpit-patent.com.cn

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Guide to Indonesia’s globalising patent laws

Indonesia’s patent system has become an increasingly important part of Southeast Asia’s intellectual property (IP) landscape. With a large and growing economy, strategic position in global trade, and government agenda focused on innovation and technology transfer, the country is taking significant steps to harmonise its patent regime with international standards.

For businesses and practitioners, understanding the Indonesian patent framework is essential to protecting innovation while navigating unique policy considerations that shape the system.

Legal framework

The current foundation of Indonesian patent law is Law No. 65 of 2024, enacted on 28 October 2024, which is the third amendment to Law No. 13 of 2016 on patents.

The amendment aims to simplify procedures, harmonise rules to international standards, provide clearer guidelines and encourage patent filings, especially by foreign entities in the country.

Indonesia is a member of the Paris Convention for the Protection of Industrial Property and the Patent Co-operation Treaty (PCT), enabling applicants to claim priority and enter the national phase of international applications.

The system is administered by the Directorate General of Intellectual Property (DGIP) under the Ministry of Law. Two forms of protection are available, namely:

• • Patents, which last for 20 years from the filing date; and
  • Simple patents, Indonesia’s equivalent to utility models, with a 10-year term.

Definition of invention

Under the new Patent Law, an invention is defined as: “An idea of an inventor embodied into a specific problem-solving activity in the field of technology in the form of product and/or process, refinement, and/or development of a product and/or process, as well as systems, methods and uses.”

This new definition highlights key changes and implications.

Broader scope: The inclusion of “systems, methods and uses” significantly broadens the scope of what can be patented. This change acknowledges the importance of protecting technological advancements that may not fit neatly into the previous categories of “product or process”.

Clarity and flexibility: By adding “and/or” between product, process, refinement and development, the law ensures greater flexibility in interpretation, making it more inclusive for different types of innovations.

Alignment with global standards: The new definition aligns more closely with international patent laws, making Indonesia a more attractive jurisdiction for inventors and businesses seeking to protect their IP globally.

Patentability criteria

A patent shall be granted for an invention that is novel, inventive, and can be applied industrially. Novelty is assessed on a global basis, meaning that any prior public disclosure can destroy patentability.

Certain subject matter is excluded, including: aesthetic creations; schemes; methods to conduct mental activities, games and business; computer programs (except for the inventions that are implemented using computers); presentations of information; and theories and methods in the field of science and mathematics.

Inventions that contravene public order, morality, health or the environment are not patentable.

Implementation requirement

Once a patent has been granted, the patent holder shall make a statement regarding implementation of the patent in Indonesia and notify the minister annually. While the law states that such statement should be submitted before the end of each year, in practice it should be submitted before the annual annuity payment deadline.

The following constitutes use or performance of patent:

• • Implementation of a product patent, which includes manufacturing, importing or licensing the patented product;
  • Implementation of a process patent, which includes manufacturing, licensing or importing the product resulting from the patented process; and
  • Implementation of a method, system and use patent, which includes manufacturing, importing or licensing the product resulting from the patented method, system and use.

Filing and examination

The process of registering a patent involves several steps including filing a patent application, publication, examination and grant. The general process is as follows.

Filing: A patent application must be filed with the Indonesian Intellectual Property Office (DGIP). For international applications under the PCT, the deadline will be 31 months from the earliest priority date. For Paris Convention priority, the deadline will be 12 months. Late filing is possible, with additional official fees for both options.

Publication: The publication period lasts for six months, after which the application will proceed to examination (as long as the applicant has filed for the substantive examination request).

Examination: After filing, the Patent Office will examine the patent application to determine if it meets the requirements for approval. This process may involve a review of the prior art and an examination of the novelty, inventiveness and industrial applicability of the invention. Note that applicants can now request an early examination in the hope that the result will be completed once the publication stage ends.

Re-examination (optional): This new procedure has been included in the system at the substantive stage. Applicants can respond against rejections, as well as corrections and applications considered withdrawn, within nine months from the notices. However, for withdrawn applications, the deadlines are capped at two months from the date of notice.

Amendment: If the Patent Office finds that the patent application does not meet requirements for approval, the applicant may be given an opportunity to respond to objections raised and amend the application to address any deficiencies. This can be in the form of an office action.

Grant: If the Patent Office determines that the patent application meets the requirements for approval, a patent will be granted and the applicant will be issued a notice of allowance or grant, followed by the issuance of a patent certificate. However, the certificate is frequently not issued for months, or even years.

Maintenance: Once a patent has been granted, the applicant must take steps to maintain the patent, including paying maintenance fees and renewing the patent as required. The first payment must be paid within six months of the notice of allowance or grant.

Compulsory licences

A compulsory licence is granted based on the principle of benefit and is non-exclusive, with its scope and duration limited to its intended purpose. It can be requested if a registered patent has not been used or worked in Indonesia within 36 months (three years) of registration. It is primarily issued to meet domestic market needs and support the national economy.

The licence cannot be transferred, except when tied to company assets or affiliated entities in the same sector. In cases where a second patent significantly improves a first patent, both patent holders must grant reasonable cross-licences, and the compulsory licence of the first patent cannot be transferred separately from the second patent.

Additionally, if a final decision by the Business Competition Supervisory Commission confirms monopolistic practices, restrictions on granting a compulsory licence do not apply.

These provisions align with article 31 of the international Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), ensuring that licences are granted based on individual merit, limited scope and non-transferability under strict conditions.

Note that previous steps need to be shown to obtain a compulsory licence. Applicants must show evidence of intended patent use based on their capability, with attempts made to contact the patent holder to obtain a licence for a maximum of 12 months, with no favourable response received.

The ministry should also agree that the patent can be performed in Indonesia on an economically feasible scale and provide benefits to society. (See Regulation of the Minister of Law and Human Rights No. 30 of 2019 on Procedures for the Granting of Compulsory Patent Licensing, which was later amended and replaced by the 2021 Regulation of the Minister of Law and Human Rights No. 14 on Procedures for the Granting of Compulsory Patent Licensing.)

A compulsory licence terminates when the specified period expires, or a final and binding court decision cancels it. Additionally, the patent holder may request cancellation if the grounds for the licence no longer exist, the licensee has failed to implement the licence, or the licence has not prevented patent misuse that harms the public interest, within two years.

A cancellation request due to non-implementation can be filed after two years, ensuring that licences are not granted indefinitely without active use. The licensee is also required to pay royalties and adhere to the defined scope as specified in the minister’s decision.

These rules ensure that compulsory licences remain an effective tool to balance public interests, innovation and fair competition while complying with international IP standards. For more information concerning patent protection in Indonesia, please contact the author at patent@affa.co.id.

AFFA INTELLECTUAL PROPERTY RIGHTS
15/F Graha Pratama Building
Jl. MT. Haryono Kav. 15
Jakarta – 12810, Indonesia
Tel: +62 21 8379 3812
Email: emirsyah.dinar@affa.co.id
www.affa.co.id

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An overview of Taiwan’s patent laws

In Taiwan, the primary legal framework governing patents is the Patent Act, which establishes the substantive law concerning patentable subject matter, eligibility criteria, application procedures, and liabilities and remedies arising from patent infringement. Additionally, the Intellectual Property Case Adjudication Act (IPCAA), along with the Code of Civil Procedure and the Administrative Litigation Act, provides the procedural rules applicable to the resolution of patent disputes in both civil and administrative litigation.

Types, criteria, ownership

Patents protected under the Patent Act are categorised into invention patents, utility model patents and design patents, and are required to meet three fundamental criteria: industrial applicability; novelty; and non-obviousness.

Patent terms are 20 years for invention patents, 10 years for utility models, and 15 years for design patents, all calculated from the application filing date. Patent rights are enforceable only after the patent is granted.

Invention patents protect creations based on technical ideas utilising natural laws and are subject to a stringent non-obviousness standard, requiring a significant inventive step. Utility model patents cover innovations in the shape, structure or configuration of an article that improves its function or efficiency. Design patents protect the aesthetic features of an article (such as shape, pattern or colour) that enhance its visual appeal, perceived quality and market competitiveness.

Regarding ownership, unless otherwise agreed by the parties, the right to apply for patents and the resulting patent right for inventions, utility models or designs developed by employees while performing their duties belong to the employer. Although the employer must provide reasonable remuneration to the employee for such inventions, the Intellectual Property and Commercial Court (IP Court) has clarified that such payment obligation does not constitute a condition or consideration for the employer’s acquisition of patent rights.

Enforcement, infringement, remedies

Patent rights and enforcement. Under article 58 of the Patent Act, the patentee has exclusive rights to manufacture, sell, use or import the patented product. For method patents, these rights also extend to the use of the patented method, as well as the use, sale or importation of articles directly obtained from such use.

However, since utility model patents are granted without substantive examination, the holders are required to obtain a favourable technical examination report from the Taiwan Intellectual Property Office (TIPO) under articles 116 and 117 of the Patent Act before patent rights can be enforced. Failure to do so may expose the patent holder to liability for damages incurred by an alleged infringer if the utility model patent is later invalidated.

Determination of patent infringement. Patent infringement is primarily determined based on two principles: literal infringement; and the doctrine of equivalents. Literal infringement occurs if the accused product or process meets every technical limitation in the patent claims. If such limitations are not met, the doctrine of equivalents may apply, under which infringement may be determined if the accused product performs substantially the same function, in substantially the same way, to achieve substantially the same result as the claimed invention.

Legal remedies for patent infringement. Pursuant to articles 96 and 97 of the Patent Act, in case of patent infringement, the patentee or the exclusive licensee is entitled to seek injunctive relief (including the destruction or other appropriate disposition of the infringing products, as well as the materials used in the infringing activities) and monetary damages.

Regarding the calculation of damages, the patentee (or the exclusive licensee) may elect one of the following methods:

1. 1. The amount of the damages and lost profit of a patentee (or the exclusive licensee);
   2. The amount of the infringer’s profits attributable to the infringement; or
   3. An amount based on reasonable royalties that could have been collected from licensing the patented invention. Punitive damages may be awarded if the infringement is found to be intentional. The awarded amount (actual damage plus punitive damage) can be as much as three times the proven damages.

Litigation

Patent invalidation and administrative litigation. Once a patent right has been granted, any person or interested party who believes that the patent was improperly granted may, pursuant to the Patent Act, file a petition for patent invalidation with the TIPO. If, on examination, the petition is determined to be well-founded, the patent right shall be revoked and deemed void from the beginning. Any party dissatisfied with the TIPO’s decision may seek relief by filing an administrative appeal, followed by administrative litigation before the IP court.

Patent infringement lawsuit.

1. 1. Forums for patent infringement litigation. Taiwan courts can exercise jurisdiction if either the infringement or its effects occur within Taiwan. The IP court has exclusive jurisdiction over patent infringement lawsuits, except in instances where jurisdiction is conferred by the mutual or implied consent of the parties.
   2. Filing of lawsuits. According to paragraph 6, article 96 of the Patent Act, patent infringement claims must be filed within two years of discovery of the infringement and the identity of the offender, or within 10 years of the act, whichever is earlier.
   3. Interim remedies for civil litigation. Interim remedies available in patent infringement litigation pursuant to the Code of Civil Procedure and the IPCAA include provisional attachment, provisional disposition, and preliminary injunctions. Such interim remedies aim to preserve the plaintiff’s claims, ensure future execution, or maintain the status quo of the disputed legal relationship until a final judgment is rendered. For preliminary injunctions, the IP court considers the factors similar to the
      “four-factor test” established by the US Supreme Court in eBay Inc v MercExchange LLC (2006).
   4. Trial procedures. Courts typically conduct multiple preparatory hearings, during which the parties may present arguments, submit evidence, clarify issues, and examine witnesses. Following these sessions, the judge will schedule an oral hearing and subsequently issue a judgment. The court generally rules independently on the validity of the patent without staying the procedure to wait for the TIPO’s validity determination.
   5. Evidence collection and investigation. At trial, the IP court may appoint a technical examination officer to assist the judge in resolving technical issues involved in the case. Although such officers may provide opinions, prepare reports and question the parties involved, their statements do not constitute evidence and cannot be relied on as proof of the facts at issue. The parties bear the burden of presenting admissible evidence to satisfy the “preponderance of the evidence” standard, which requires demonstrating that the claim is more likely true than not.

Either party may request the court to appoint a neutral expert as an inspector to examine documents, devices or equip-ment held by the opposing party or third parties for evidence collection. With court approval, parties may also appoint expert witnesses to submit written opinions. The court has the authority to compel testimony, permit cross-examination of opposing experts, and order joint expert consultations and reports within set deadlines.

1. 6. Disclosure rules and restrictions. Taiwan does not adopt the discovery system. If a document is held by the opposing party or a third party, the other party can request the court to compel its production, although the court has discretion to determine the credibility of such requests. Non-compliance with an order to produce documents may lead to fines.

Under article 36 of the IPCAA, courts may, on petition of a party or a third party, issue confidentiality orders to protect trade secrets, restricting unauthorised use or disclosure by the opposing party, counsel, experts or witnesses. Violating such orders can result in criminal penalties.

The court may impose further restrictions or prohibitions on the opposing party’s access to review, copy or reproduce litigation files containing trade secrets or confidential business information of any party or third party.

1. 7. Appeal. Parties dissatisfied with the judgment of the first-instance court may file an appeal with the IP court within 20 days from the date of the judgment. Appeals from second-instance decisions to the Supreme Court are permitted solely on the grounds that the lower court’s judgment contravenes the law.

Recent developments

The TIPO has recently proposed draft amendments to the Patent Act aimed at addressing developments in digital technologies. Key changes include expanding design patent protection to cover digital images, permitting multiple similar designs to be included within a single application, and extending the grace period to 12 months, as well as relaxing the timing requirements for filing divisional applications, and eliminating ownership disputes as grounds for invalidation.

LEE AND LI, ATTORNEYS-AT-LAW
8F, No.555, Sec 4, Zhongxiao E Rd,
Taipei 11072, Taiwan, ROC
Tel: +886 2 2763 8000
5F, Science Park Life Hub, No.1,
Industry E 2nd Rd, Hsinchu Science Park,
Hsinchu 30075, Taiwan, ROC
Tel: +886 3 579 9911
Email: attorneys@leeandli.com
www.leeandli.com

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