by Qing Qiao
In the adjudication of patent infringement cases in China, a key judicial principle significantly influences the determination of the scope of patent protection, the so-called “donation principle.” This principle acts as an important limitation on the application of the doctrine of equivalents and embodies the fundamental notion that the scope of patent protection is determined by the claims.
This article aims to outline the legal origin, judicial application, and standards of the donation principle in China, and to analyze its implications for domestic and foreign right holders by comparing similar systems in the United States and Europe.
Legal Origin and Basis of the “Donation Principle” in China
The donation principle was first introduced in Article 5 of the Interpretation of the Supreme People’s Court on Several Issues Concerning the Application of Law in the Trial of Patent Infringement Disputes (Fa Shi [2009] No. 21):
“Where a technical solution is only described in the description or drawings but not recorded in the claims, and the patentee attempts to incorporate it into the scope of patent protection in a patent infringement dispute, the people's court shall not support such claim.”
Furthermore, Article 58 of the “Understanding and Application of the Guidelines for Patent Infringement Determination (2017) by the Beijing Higher People’s Court” clearly states:
“Technical solutions only described in the specification or drawings but not incorporated into the claims shall be deemed as abandoned by the patentee. If the patentee claims such a technical solution falls within the patent protection scope, it shall not be supported.”
In other words, the donation principle prevents patentees from invoking the doctrine of equivalents in litigation to include technical content disclosed in the specification but not claimed in the patent claims. The core rationale is to prevent a “have-it-both-ways” approach: narrowing claims during prosecution to improve grant chances, while later attempting to broaden protection via the specification during enforcement.
Purpose of the System: Safeguarding Public Reliance and Defining Patent Boundaries
From a policy perspective, the donation principle reflects a fundamental balance within patent law:
- On one hand, it protects the legitimate reliance of the public on the patent claims to understand the scope of protection;
- On the other hand, it reinforces the patentee’s duty to clearly express the scope of invention.
If technical features disclosed but not claimed in the specification are allowed to be protected under the doctrine of equivalents, it would severely undermine the predictability and transparency of the patent system.
Therefore, the donation principle reflects the Chinese courts’ evolving emphasis on clarity and certainty in patent scope determination, aligning with the development trends of international patent systems.
Standards and Case Practice from the Supreme People’s Court
According to research, between 2019 and 2024, the Supreme People’s Court of China handled 19 patent cases involving the donation principle:
- In 14 cases, the court held that the accused solution did not fall within the scope of patent protection, applying the donation principle;
- In 5 cases, the principle was not applied, but this did not necessarily result in findings of infringement.
Through these decisions, the Court gradually established the following standards for applying the donation principle:
1. Perspective of Technicians
Whether technical content has been “donated” must be assessed from the understanding of a technician after reading the specification and claims.
2. “Alternativeness + Specificity” Standard
The technical content in question must be explicitly disclosed in the specification as an alternative solution that was not claimed in the patent.
3. Clear Intent Not to Claim Protection
The courts may also infer the patentee’s intent from whether the technical solution was written in other dependent claims or deleted during prosecution. This can demonstrate an intentional abandonment of protection, thus invoking the donation principle.
Example: In case (2020) Zui Gao Fa Zhi Min Zhong No. 981, the court held that the specification disclosed two molding methods for a component, but the claims only protected one of them. Although the other method was disclosed in the specification, it was not claimed, and thus deemed donated.
Comparative Perspectives: Equivalent Systems Abroad
Though the donation principle is uniquely named in China, similar doctrines exist in the United States and Europe that also restrict the scope of the doctrine of equivalents. This reflects a global convergence toward clearer patent boundaries.
1. United States: Disclosure-Dedication Rule
The U.S. Court of Appeals for the Federal Circuit established this rule in Johnson & Johnston Associates Inc. v. R.E. Service Co. (2002):
If a technical feature is disclosed in the specification but not claimed, it is deemed dedicated to the public and cannot later be recaptured through the doctrine of equivalents.
Requirements for application include:
- The relevant feature is clearly disclosed in the specification;
- The specification does not express an intent to claim or reserve the feature.
The policy rationale mirrors China’s: to preserve public reliance on the claim language and prevent post hoc expansion of patent scope through litigation.
2. Europe: Interpretation Boundaries of Claims
Although the European Patent Convention (EPC) does not explicitly provide for a “donation principle,” the Protocol on the Interpretation of Article 69 EPC requires that claims be interpreted in light of the description, not to expand the claims.
Thus, features disclosed in the description but not claimed are not normally considered within the scope of equivalents, unless it is clear that the patentee intended to include them. Functionally, this is highly similar to China’s donation principle.
Practical Guidance for Foreign Patent Owners Enforcing Rights in China
For foreign right holders seeking to enforce patents in China, the donation principle has significant implications:
- Claim Drafting Strategy is Critical: All essential features — especially alternatives — must be explicitly included in the claims. Mere disclosure in the specification is not sufficient.
- Risk of Losing Infringement Claims: If the accused product adopts a technical solution disclosed in the specification but not claimed, infringement will likely be denied based on the donation principle.
- Maintain Global Consistency: Drafting strategies should account for the U.S. Disclosure-Dedication Rule, the Chinese donation principle, and the European interpretation boundaries, to avoid jurisdictional compliance gaps.
Chinese courts are placing increasing emphasis on claim clarity and reasonable boundary assertion, which demands higher standards of patent, but also provides greater judicial certainty.
Conclusion
The donation principle plays a critical role in limiting the expansion of patent scope through the doctrine of equivalents in Chinese patent infringement litigation. It embodies the principle that claims define the scope, with the specification and drawings serving only as interpretative aids.
As the application of this principle becomes more consistent and refined in judicial practice, it will significantly influence patent drafting, enforcement strategies, and even global filing approaches. The growing insistence of Chinese courts on clearly defined patent boundaries represents a challenge, but also an opportunity for both domestic and international right holders seeking robust IP protection in China.
Cover photo by Sean Thomas on Unsplash