The Supreme Court held that "as long as the content
inferred directly and unambiguously from the original disclosure is
obvious to the person skilled in the art, such content belongs to
the original disclosure of the filing document under Article 33 of
the Chinese Patent Law."
Article 33 rejection, "amendment going beyond the original
disclosure," has been bothering our overseas applicants for
since 2009 when the SIPO began to interpret and implement Article
33 requirements unusually strict.
ESSENCE OF SUPREME COURT DECISION
In (2010) ZhiXingZi No. 53, the Supreme Court interpreted
Article 33 and pointed out the correct application of Article 33.
The Supreme Court sustained the arguments Beijing East IP Ltd. made
before the Patent Re-examination Board, holding that, "as long
as the content inferred directly and unambiguously from the
original disclosure is obvious to the person skilled in the art,
such content belongs to the original disclosure of the filing
BENEFITS TO CLIENT
Re-generalization is an usual approach our clients would adopt
when amending claims while responding to office action. Especially
for our overseas clients who have global patent portfolios to
manage; coordinating the strategies before the USPTO, EPO, JPO, and
SIPO for patent family is crucial.
Since 2009, before this decision came out, our overseas clients
have been going through the "dark era of Article 33" as
more and more cases were rejected under Article 33 in which
re-generalization was categorically rejected. At the same time the
SIPO seemed ignoring calls from applicants and patent agency
associations to review the unusually strict examination.
In this decision, the Supreme Court expressly hold that proper
re-generalization of the original disclosure of the filing document
when amending claims should not be rejected categorically.
Beijing East IP Ltd. is proud to be a part of this case and pave
the foundation for this final success.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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