China: AIPPI Study Report 2016

STUDY QUESTIONS (PATENTS)

Added Matter: the Standard for Determining Adequate Support for Amendments

Current Law and Practice

Article 33 of the Chinese Patent Law (CPL), represents the governing principle for determining adequate support for amendments, stipulating that:

"An Applicant may amend his or its application documents for a patent, but the amendment to the application for a patent for invention or utility model shall not go beyond the scope of the disclosure recorded in the initial description and claims, and the amendment to the application for a patent for design may not go beyond the scope of the disclosure as shown in the initial drawings or photographs."

Using Article 33 of the CPL as the basis and principle, the State of Intellectual Property Office of China (SIPO) allows the Applicant to properly amend the application documents during the prosecution of the application and meanwhile, prohibits the introduction of any new matters that may affect the filing date of the application.

Similar to the European Patent Office, in order to protect public interest, the SIPO requires the Examiner to strictly abide by the provisions of Article 33 when examining the amended documents submitted by the Applicant.

1. Are amendments to the claims, description and/or figures of a patent possible?

In patent applications, amendments to the claims, description and/or figures are allowed.

In granted patents, amendments to the description and/or figures are not allowed. In case of a misprint in editing/formatting and publishing, only the SIPO may correct the misprint. Similarly, amendments to the claims are generally not allowed either, unless the patent is involved in an invalidation proceeding.

2. What is the standard for determining whether such amendments are permissible?

As mentioned above, the overall principle is represented by Article 33 of the CPL. In practice, the most critical and difficult part is to determine "the scope of the disclosure recorded in the initial description and claims".

According to the Chinese Guidelines for Patent Examination (CGPE):

"The scope of disclosure recorded in the initial description and claims includes the contents literally described in the initial description and claims, and the contents determined directly and unambiguously according to the contents literally described in the initial description and claims, and the drawings of the description." (Part II, Chapter 8, Section 5.2.1.1 of the CGPE) emphasis added)

Although the CGPE provide further detailed explanations and examples, different Examiners may still arrive at different conclusions about the same amendment, because the characteristics of the notional subject used to determine whether an added matter can or cannot be determined directly and unambiguously according to the contents literally described in the initial description and claims, and the drawings of the description, are not yet explicitly defined.

In practice, the knowledge and capability of one skilled in the art at the time of filing cannot be accurately defined. Although it is generally accepted that common knowledge or conventional technical means in the art, well-known facts, natural laws, and daily experiences and rules should be taken into consideration when it is needed to decide if an added matter is within the scope of the patent application, the Examiner's subjectivity can hardly be avoided.

In order to strictly abide by Article 33, most Examiners tend to restrict the scope of disclosure recorded in the initial description and claims to the contents literally described in the initial description and claims without considering the comprehension of the disclosure by a person skilled in the art. And the content "determined directly and unambiguously" tends to be interpreted as the one and only content that can be determined (not one that can be reasonably derived).

3. How does the standard change and during which time periods?

The standard does not change. However, in addition to the above substantive standard stipulated in Article 33 of the CPL, there are further restrictions about the timing and manner for amending the application documents in different stages in the prosecution of the patent application and after grant of the patent.

4. How is impermissible added matter defined?

Briefly, "impermissible added matter" can be understood as the contents which are neither literally described in the initial description or claims, nor can be determined directly and unambiguously according to the contents literally described in the initial description and claims, and the drawings of the description.

5. If an amendment that was made to a patent application prior to grant is later reviewed by the SIPO or a court in a post-grant proceeding and determined to contain impermissible added matter, is there a mechanism for the patentee to remedy the defect, for example by removing portions of the amendment found to be impermissible?

No. Basically, there is no mechanism for the Patentee to remedy the defect.

The CPL allows amendments post grant, but adopts a stricter standard than in the examination process.

In the CGPE, strict confinements are provided concerning the timing (only in an invalidation proceeding), the scope (only the claims), the principle (the title of the subject matter of a claim cannot be changed; the extent of protection cannot be extended as compared with that in the granted patent; the amendment shall not go beyond the scope of disclosure recorded in the initial description and claims; and the addition of technical features not included in the claims as granted is generally not allowed) and the manner (deletion of a claim, combination of claims, and deletion of a technical solution) of amendment after grant.

If the "impermissible added matter" constitutes a complete technical solution or a claim, the defect may be removed by deleting the "impermissible added matter" itself.

If the "impermissible added matter" only constitutes part of a claim, the defect may be removed by deleting the entire claim, but not by simply deleting the "impermissible added matter" itself.

Summary

In Chinese current patent law, the Applicant is allowed to amend the claims, the description and the drawings with the proviso that the amendment shall not go beyond the scope of the disclosure recorded in the initial description and claims, which scope comprises both the contents literally described in the initial description and claims, and the contents determined directly and unambiguously according to the contents literally described in the initial description and claims in combination with the drawings of the description. After grant, only in an invalidation case can the Patentee amend the claims in a few possible manners with the same proviso. In this context, any matter that does not fall within the scope of the contents mentioned above belongs to impermissible added matters.

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions