In recent years, many patent practitioners have experienced difficulty in amending Chinese patent applications, either voluntarily or in response to action taken by the Chinese Patent Office. One reason for this is that proposed amendments may be rejected by Chinese examiners under Article 33 of the Chinese Patent Law on the basis that such amendments are "beyond the original disclosures" made in the application.
Such rejections can be frustrating, especially since an examiner's reasoning is very often merely a statement that "the amended technical solution is not recited in the original description and claims, nor can it be directly and unambiguously derived from the information contained therein" or that "an ordinary person skilled in the art cannot predict that all of the technical solutions covered by the amended claim will achieve the same technical effect as that of the exemplified one."
This issue has been considered in some recent decisions of the Chinese Supreme People's Court (SPC), which may have a significant impact on this aspect of patent prosecution in China.
Article 33 of the Chinese Patent Law states that "an applicant may amend his patent application documents, provided that the amendment to the invention or utility model patent application documents does not exceed the scope specified in the original written descriptions and claims, or that the amendment to the design patent application documents does not exceed the scope shown in the original drawings or pictures."
Rule 51 of the Implementation Regulations of the Chinese Patent Law further states that an applicant has two opportunities to make voluntary amendments to a Chinese patent application before the application enters into substantial examination. Amendments made during the examination stage are restricted to those required by the examiner's opinions.
The Chinese Patent Examination Guidelines state that the scope of original disclosure in a patent application shall include those that:
- Are recited in the original specification and claims
- Can be directly and unambiguously derived from the information contained in the original specification, claims and drawings.
In practice, it appears that the examiners usually require a literal recitation of the amendments in the original disclosure and may impose an Article 33 rejection if this is not the case.
As such, it has become extremely difficult to expand the scope of patents by amending claims after filing. Many examiners hold the view that such amendments automatically justify an Article 33 rejection.
RECENT DECISIONS OF THE SPC
In re Simcere Pharmaceutical Group (Zhixingzi 17/2010)
This case concerned a Chinese patent which originally claimed a ratio of ingredients in the range of 1 : 10-50. This was amended during prosecution to 1 : 10-30 and then again, in response to an invalidation claim, to a specific ratio of 1 : 30. This amendment was refused on the basis that it went beyond the scope of the original claim and the Chinese Patent Reexamination Board (Board) consequently decided that the patent was invalid.
The patentee challenged the Board's decision in the Beijing First Intermediate People's Court, arguing that the amended ratio should be accepted as one technical solution out of those represented by the "1 : 10-30" range, and that therefore no new matter had been added. However, the Court held that the amendment went beyond the original disclosure in that the ratio "1 : 30" belongs to a new, generalised technical solution, and that an ordinary person skilled in the art could not predict all of the technical solutions covered by the ratio that could achieve the same technical effect as that of the disclosed combination. Accordingly, the Court upheld the Board's decision.
The patentee then appealed to the Beijing High People's Court, which held that the amendment did not go beyond the original disclosure, nor did it add any technical features not already included within the patented claims.
The Board then filed a petition with the SPC, arguing that the Court's decision should be made on the basis of the originally published patent application instead of the issued patent.
The SPC refused the Board's request that the case be reviewed, stating that neither of the amendments to the ratio went beyond the original disclosure. The SPC further clarified that whether an amendment goes beyond the original disclosure should not be dependent on whether "all of the technical solutions covered by the amended claim will achieve the object of the present invention".
Yali Zheng et al. vs. Seiko-Epson Ltd. et al. (Zhixingzi 53/2010)
The question before the SPC in this case was whether the amended term "storage device" went beyond the original disclosure of "semiconductor storage device" under Article 33. The Board held that the amendment was beyond the original disclosure, but this decision was overturned by the Beijing High People's Court.
In its decision, the SPC supported the Court's decision and held that:
- One legislative purpose of Article 33 is to ensure that applicants have an opportunity to improve the quality of their patent applications by making amendments in light of newly identified prior art or evolving technology (though such amendments must not go beyond the original disclosure); and
- If the derived content is obvious to an ordinarily skilled person in the art, such content shall be regarded as within the scope of the original disclosure.
The SPC also clarified that Rule 51 allows an applicant to broaden the scope of patent protection through voluntary amendments to the claims. This essentially abolishes the examiners' rigid views towards such expansions, which are widely accepted in many other jurisdictions.
CONCLUSION AND DISCUSSION
It seems that the SPC holds a much more liberal view than the Chinese Patent Office regarding amendments made to patent applications after filing. Should the approach reflected in the SPC's recent decisions be adopted by the Chinese Patent Office, patent practitioners will likely encounter fewer Article 33 rejections in the future, which will certainly be of significant benefit to patent proprietors.
Having said this, however, patent practitioners should bear in mind that it may take time for the Chinese Patent Office to take on board the SPC's opinions and to adjust its guidelines accordingly, especially given that there is often some discrepancy between judicial and administrative views on various patent issues. Nevertheless, the SPC's recent decisions indicate that seeking judicial review may be an appropriate way forward for patent applicants whose proposed amendments are rejected by the Chinese Patent Office under Article 33.
© DLA Piper
This publication is intended as a general overview and discussion of the subjects dealt with. It is not intended to be, and should not used as, a substitute for taking legal advice in any specific situation. DLA Piper Australia will accept no responsibility for any actions taken or not taken on the basis of this publication.
DLA Piper Australia is part of DLA Piper, a global law firm, operating through various separate and distinct legal entities. For further information, please refer to www.dlapiper.com