Recently, our firm won the first instance of an administrative litigation case for invalidation of an invention patent, in which it is ruled that the invention patent should be comp...
Introduction In the chemical field, it is difficult to seek invalidation of a patent claiming to have achieved unexpected technical effect. This case provides a strategy for success...
Latest Development about Examination of Amendment Scope
Linda Liu & Partners
As regards the addition of new matters, it is apparent from the Office Actions we have received over the past one year that the SIPO is currently applying an increasingly stricter standard as to whether an amendment to an application document goes beyond the scope of the original description and claims. We would like to make a brief explanation in terms of the possible change of the examination standard by analyzing the revision of the relevant provisions and some examples.
I. Law and Rule as well as the Relevant Provisions
According to Article 33 of the current Chinese Patent Law, it is prescribed that an applicant may amend his or its application document, but the amendment to the application for a patent for an invention or utility model may not go beyond the scope of the disclosure contained in the original description and claims.
Part II of the SIPO’s Guidelines for Examination of 2001 version (disused), specifically chapter 8 section 5.2.2, states that the amendment should have been disclosed in the original description or can be directly derived from the content disclosed in the original description.
Part II of the SIPO’s Guidelines for Examination of 2006 version (in use), specifically chapter 8 section 5.2.1, states that the scope of the disclosure contained in the original description and claims includes the content literally disclosed in the original description and claims and the content that can be directly and unambiguously determined from the content literally disclosed in the original description and claims as well as from the drawings of the description.
As can be seen, there is no substantial change in the Chinese Patent Law with respect to the allowable range of the amendment. However, in contrast with the SIPO’s Guidelines for Examination of 2001 version, the 2006 version gives an explicit definition of the disclosure contained in the original description and claims, and the expression about the content not literally disclosed is changed from “directly derived” to “directly and unambiguously determined”.
Taking from the surface meaning of the expressions, the expression “directly and unambiguously determined” seems to be a stricter standard of examination than the expression “directly derived”, which can also be confirmed by our service experience since the enforcement of the SIPO’s Guidelines for Examination of 2006 version.
II. Examination Standard in Practice
According to the Office Action we have received it seems that the SIPO has adjusted the examination standard in terms of the allowable range of the amendment as the definition given in the Guidelines for Examination becomes clear. The following table shows the change:
As shown in the above table, before adjustment of the standard, the amendment is regarded as addition of new matter in case of situation 1 and situation 2 is not restricted by Article 33, while according to the adjusted standard, the amendments in both situation 1 and situation 2 are regarded as addition of new matter.
Of the two situations, the situation 1 is mainly related to such amendments as a modification from a generic term to a specific term and a change or an addition of a technical feature which has not disclosed in the original application. The detailed explanation of the situation 1 will be cancelled herein because the examination standard for the situation 1 has not been changed before as well as after the adjustment.
The situation 2 is related to such amendments as a modification from a specific term to a generic term and a deletion of some restrictive expressions from some features of the claim. Especially it is common that a claim is changed from a specific term to a generic term, so that several cases will be discussed by citing some examples:
A modification from a specific term to a generic term means that the amended claim is expressed with the broader concept of word in comparison with the claim before the amendment. In this case, it is likely that the amended claim will be regarded as an addition of new matter, since the amended claim may include some other embodiments not covered by the specific term disclosed in the original application. The following examples 1 and 2 should be referred to for better understanding.
Example 1:
The amended technical feature is: “means for determining whether a density control is performed by said control apparatus in response to a value acquired by comparing the target value with the detected value obtained from said first optical detection means”.
The original application document discloses that: “means for performing a density control in said control apparatus in case that the difference between the detected value obtained from said first optical detection means and the target value exceeds the predetermined value”.
As shown in example 1, it is apparent that the amended technical feature also includes additional feature that “the difference between the detected value obtained from said first optical detection means and the target value is less than the predetermined value”. Accordingly such amendment is deemed as addition of new matter, because the latter feature has not been disclosed in the original application.
Example 2:
The amended technical feature is: “display apparatus”.
The original application document only discloses: “liquid crystal display”.
As shown in example 2, the amended technical feature includes such features as “plasma display”, “CRT display” and any other displays other than liquid crystal display. As these features have not been disclosed in the original application document, the amendment from “liquid crystal display” to “display apparatus” was held to be an addition of new matter.
The above-mentioned cases are very common in the response to an Office Action. For example, in order to overcome due to lack of inventiveness, it frequently happens that a specific term of the claim is amended to a generic one. Although this kind of amendment was accepted under the old examination standard, it is now considered as an addition of new matter under the current standard. In other words, in accordance with the current examination standard, it is acceptable to add the feature as it is disclosed in the description to the claim. However, it is not acceptable to revise it into a generic term, even if such amendment to the broader term is properly supported by the description.
Therefore, it is strongly suggested to describe some generic concepts relating to the innovative characteristics in the original description so that they can serve as the basis for possible future amendments, and thereby the future rejection of the amended claim may be avoided.
The above is a brief introduction to the latest development about the examination in terms of the addition of new matters. We hope it is helpful for you to apply for a patent in China, and wish to take this opportunity to have further discussion on this issue with all of you.
