China's unique amendment by "furthuer definition" in patent invalidation

Zhang Chunshui, Unitalen Attorneys At Law,[Patent]

 

  

In today's world, science and technology are the primary productive forces, and innovation is the primary engine of development. In order to promote scientific and technological innovation, countries all over the world have formulated patent laws. From the perspective of the legislative purpose, the purposes of formulating the patent law are the same in all countries in the world, and with the continuous development of globalization and deepening international cooperation, international patent procedures such as the Paris Convention for the Protection of Industrial Property and the Patent Cooperation Treaty (PCT) have emerged accordingly. However, there still exist subtle differences in many provisions of the patent law of each country depending on their actual situations. In many cases, it is these subtle differences that will affect whether a patent is granted or whether it is protected within a proper scope. Therefore, it is necessary for foreign applicants to clearly understand and comprehend these unique patent practices in China. Since unique provisions in China involve a large topic, in this paper the author only discusses the provisions and practices relating to the amendments of patent documents in the invalidation procedure as provided in the Chinese patent laws and regulations, for the reference of foreign applicants (certainly also for the reference of Chinese and foreign patent attorneys dealing with foreign-domestic cases).

As provided in the Chinese Patent Law, in the patent invalidation procedure, the patentee may amend the Claims. However, the amendment to the claims for a patent for invention or utility model may not go beyond the scope of disclosure contained in the initial Description and Claims, and the amendment to a patent for design may not go beyond the scope of the disclosure as shown in the initial drawings or photographs.

The current Guidelines for Patent Examination (effective as of February 1, 2010) and the revision of the Guidelines for Patent Examination effective as of April 1, 2017 provide specific guidance on how to amend patent documents:

1. Any amendment to the patent documents of a patent for invention or utility model shall be limited to the Claims only, and shall follow the following principles: (1) the title of the subject matter of the initial claim cannot be changed; (2) the scope of protection of the initial claims cannot be extended as compared with that in the granted patent; (3) the amendment shall not go beyond the scope of disclosure contained in the initial Description and Claims; and (4) addition of technical features not included in the Claims as granted is generally not allowed.

2. Subject to the above principles of amendments, the specific amendment manners of the Claims are generally limited to: (1) deletion of a claim; (2) deletion of a technical solution; (3) further definition of a claim, which means adding one or more technical features recited in other claims to a claim to narrow the scope of protection; and (4) correction of an obvious error.

Regarding the above principles and provisions, it is difficult for foreign applicants to understand how to further define the claims in the invalidation procedure. In this regard, the author will explain in detail as follows.

I. Conditions for further definition of the claims:

1) One or more technical features recited in other claims are added to a claim; and 2) the scope of protection of the amended claim is narrowed down. In the process of amendment, both of these two conditions shall be satisfied and neither is dispensable.

II. Further understanding of amendment by "further definition"

1. "Further definition of the claims" should be understood as:

(1) By adding one or more technical features of other claims in the initial Claims to the claim to be amended, a new claim a with smaller scope of protection is formed to replace the initial claim, and the initial claim is no longer retained;

(2) Compared with the initial Claims, the number of the claims after amendment does not change beyond expectation; and

(3) It is usually not allowed to add claims or redraft claims so as to build a new claim tree.

2. For the above classification, specific examples are listed below for analysis.

(1) Independent claims are not amended, and only new dependent claims are added.

For example, Claim 1 is an independent claim, and Claims 2-8 depend on Claim 1. The initial Claims 1-8 are not amended, but new dependent Claims 9-15 are added by combining the features in the Claims.

Specific analysis: the patentee does not make any definition on the initial independent claims or dependent claims, because the initial claims are retained after amendments, which does not reflect the requirement of "to narrow the scope of protection". Such an amendment manner does not belong to "further definition of the claims" allowed by the Guidelines for Patent Examination, and cannot be accepted.

(2) Different technical features are added to the same independent claim to form a plurality of new independent claims.

For example, Claims 1-5 are product claims, and Claims 6-10 are devices for producing the product. Claim 1 is amended and new Claims 11-15 are added, wherein Claims 11 and 12 are independent claims. Claim 1 = initial Claim 1 + part of the features of initial Claim 3; Claim 11 = initial Claim 1 + part of the features of initial Claim 4; and Claim 12 = initial Claim 1 + part of the features of initial Claim 8.

Specific analysis: three new claims are formed through amendments made by the patentee. This amendment manner is essentially to redraft the Claims and build a new claim protection system, which does not meet the expectations of the public on amendments or the requirements of amendments by "further definition".

(3) Features of the initial claims are recombined and one or more sets of new claims are added.

For example, the subject matter of Claims 1-10 is a control unit, that of Claims 11-20 is a control method, that of Claims 21-30 is an inspection system, and that of Claims 31-40 is an inspection method. The initial claims are not amended. Instead, a set of new Claims 41-50 are added, and new independent Claim 41 is derived from a recombination of some technical features of the initial claims.

Specific analysis: this amendment is equivalent to redrafting the Claims, which does not achieve the purpose of defining and narrowing the scope of protection of the initial claims and does not belong to "further definition". In addition, it is very likely to introduce a scope not contained in the initial Claims and enlarge the scope of protection of the initial patent.

III. Handling amendments failing to comply with provisions:

In the case that the amendment belongs to the above circumstance (1), the text previously allowed is used for examination. In the case that the amendment belongs to the above situations (2) and (3), an Office Action may be issued to the patentee, or the patentee may be notified by telephone, requiring him to select claims on the basis of the above amendment and submit the corresponding text within the specified time limit, but re-amendment is not allowed. Amendment shall be completed within one month from the date of receiving the request for invalidation, and the time limit for amendment shall not be specified again for voluntary amendment.

 

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