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Brief Analysis on the Amendment to “Obvious Errors”
Yinhuan BAI(Ms.)
Chinese patent attorney
Mechanical Engineering Department
Linda Liu & Partners
Imagine a scenario in which an "obvious error" was unexpectedly found, after carefully polishing the application documents for weeks or even months. It can be said that this "obvious error" is not a big deal, and a person skilled in the art can notice it at a glance; it however can also be said this error matters as it can draw a technical solution which is completely different from the original intention, and which may even affect the enforcement of rights in the future. Under such situation, the applicant may have the following questions: Can such "obvious errors" be amended during the examination process? What factors would hinder the amendment? Are the criteria different between the substantial examination phase and the reexamination phase? What is the specific situation in practice? In this regard, the author makes a brief analysis based on the following four aspects.
Can such "obvious errors" be amended? What factors would hinder the amendment?
What are the tendencies to amend “obvious errors” during the reexamination period?
A series of four applications involving "obvious errors" handled by the author
Suggestions
I. Can such "obvious errors" be amended? What factors would hinder the amendment?
Several situations where amendments are allowable are listed in the section 5.2.2 of Chapter Eight of Part Two of the Patent Examination Guidelines, including: amendments to the obvious errors that can be recognized by those skilled in the art, namely grammatical errors, typographical errors and printing error. The correction of these errors must be the only correct answer that can be seen by those skilled in the art from the entirety and context of the description.
It can be seen that "obvious error" is one of the several situations of allowability of amendments, but there are certain restrictions. These restrictions are in the same vein as the "amendments going beyond the scope" stipulated in Article 33 of the Patent Law which can also be taken as the specific application in the examination of the amendment to “obvious errors”. Two concepts involved in this restriction are: "a person skilled in the art" and "the only correct answer."
The Section 2.4 of Chapter Four of the Second Part of the Patent Examination Guide explains the "technical person in the technical field" : A technical person in the technical field, also known as a technical person in the field, refers to a hypothetical " person ", assuming he knows all the general technical knowledge in the technical field to which the invention belongs before the filing date or priority date, being capable of knowing all the prior art in the field, and has the ability to apply conventional experimental methods before that date, but he does not have creativity.
"The only correct answer" means that the possibility of other amendments must be completely ruled out.
In practice, the amendment to "obvious errors" often requires the use of existing technology, common sense, or conventional logical reasoning possessed by the applicant, which means, the ability of a person skilled in the art to exclude other amendment alternatives to prove "the only correct answer" is required. However, the prior art, common sense, or conventional logical reasoning grasped by those skilled in the art are complex and changeable. How to identify the capabilities possessed by those skilled in the art (for ease of explanation, hereinafter referred to as "common technical capabilities"), there is flexibility in perception and operation.
Applicants and examiners may have different perceptions of common technical capabilities, which may result in amendment to "obvious errors" being rejected. Applicants, on the one hand, may involuntarily overestimate common technical capabilities based on their own professional knowledge. Due to the applicant's overestimation, it is possible to unreasonably exclude other theoretical or practical alternatives apart from miswriting. Under such situation, it is difficult for the applicant's claim to be approved. Examiners, on the other hand, normally are non-professionals, so they are possible to underestimate common technical capabilities. When the examiner underestimates the general technical ability, he or she will consider that the existing technology, common sense, or conventional logical reasoning ability used by the applicant exceeds common technical capabilities, so that other possible solutions will not be excluded based on the applicant's claim, consequently it is unable to get "the only correct answer".
In addition, different examiners may identify common technical capabilities differently, which may lead to different destinies for amendment to the same "obvious error" in different cases.
It can be seen that in practice, different subjects may have different understandings of "common technical capabilities", which constitutes the main factor hindering the amendment to "grammatical errors, typographical errors, and typographical errors" from being approved.
II. What are the tendencies to amend “obvious errors” during the reexamination period?
The following case involving the amendment to obvious error is introduced in the Section 2.5 of Chapter VIII of the Book of Interpreting Law By Cases, edited by the Patent Reexamination Board of the CNIPA .
In the application related to the reexamination decision No. 11983 (201210088627.8), claim 1 claims the protection for a method of manufacturing a Damascus structure. During the examination process, the applicant amended the ratio of concentrated hydrofluoric acid to water in the feature “dilute hydrofluoric acid is a mixture of concentrated hydrofluoric acid and water with a mass concentration of 49% according to a volume ratio of 500: 1 to 2000: 1 " recorded in the original claim and the description to" 1: 500 ~ 1: 2000 ".
The decision holds that, there is indeed no revised record in the original application document. But due to the following analysis: 1. If the concentrated hydrofluoric acid with a concentration of 49% is mixed with water in a volume ratio of 500: 1 to 2000: 1, the concentration range of the obtained hydrofluoric acid is 48.918% to 48.979%, which is an extremely small difference from the concentration value of 49%, and the difference between its corrosion performance and 49% hydrofluoric acid can be ignored. Therefore, if a person skilled in the art considers 49% hydrofluoric acid as concentrated hydrofluoric acid, he or she would not consider 48.918% ~ 48.979% hydrofluoric acid as dilute hydrofluoric acid. 2. In this application, dilute hydrofluoric acid is used to clean the by-products in trenches and holes, and the cleaning should minimize the corrosion of the device itself as much as possible. If the volume of concentrated hydrofluoric acid: the volume of water = 500: 1 ~ 2000: 1, the hydrofluoric acid with such concentration will severely corrode the exposed metal conductive layer in the trenches and holes, and cause destructive damage to the device. Therefore, when a person skilled in the art sees the above features, the only correct answer can be seen from the entirety and context of the description, that is, the above "500: 1 ~ 2000: 1" is an obvious typo and should be "1: 500 ~ 1: 2000 ". Meanwhile, it should be allowed to be amended in the correct way, and such amendment does not go beyond the scope.
At the same time, the decision argues that for the amendment to obvious errors, the conclusion that the amendment goes beyond the scope should not be drawn just because of the possibility of other theoretical amendments. Instead, it should be based on the technical information contained in the original application documents as a whole and from the perspective of those skilled in the art to explore applicant's true meaning.
III.A series of four applications involving "obvious errors" handled by the author
In the series of application A, application B, application C, and application C1 (application C1 is a divisional application of application C) of the PCT entering China handled by the author, the same obvious errors as in the above-mentioned case were found in the original PCT publications of the four applications, where proportion are reversed, and the mechanism of the correct proportional relationship is described in detail in the description, but the correct proportional relationship is not clearly recorded. Table 1 shows the different situations gone through by the four applications.
Table 1
Application
Error type
Substantial examination phase
Reexamination phase
Result
Did the whole process go smoothly or not?
A
Proportional relationship was reversed
The examiner accepted the amendment to obvious errors according to Article 41
N/A
Accepted in the substantial examination phase
smoothly
B
Proportional relationship was reversed
The examiner accepted the amendment to obvious errors according to Article 41
N/A
Accepted in the substantial examination phase
smoothly
C
Proportional relationship was reversed
The examiner held that the amendment went beyond the scope in the first OA, and still refused to accept the amendment after multiple teleconferences. So the feature had to be abandoned.
When an reexamination was requested, a feature that contains obvious errors was added and corrected, and the collegial panel accepted it.
Accepted in the substantial examination phase
full of twists and turns
C1
Proportional relationship was reversed
The obvious error was amended when filing divisional application. But the examiner held that the amendment went beyond the scope and issued three OAs. The application was rejected in the end.
Reexamination was requested and the collegial panel accepted.
Accepted in the substantial examination phase
full of twists and turns
In the examination of application C and application C1, the main reason for the rejection of the examiner was that even if it can be determined that the proportional relationship in the two applications was miswritten, in theory, there are other possibilities in addition to the reversed proportional relationship (the correct proportional relations claimed by the applicant), therefore the amendment went beyond the scope.
When responding to the OA of the above two applications, the author proposed the following two arguments: 1. With all references to the proportional relationship in the original published document quoted, and based on the numerical range of the embodiment and the mechanism of function recorded in the original description, it should be concluded that the skilled in the art can see the only correct answer from the whole of the description and the context; 2. Provide a number of similar cases which are recognized for the examiner's reference.
Seeing from the results, although the process of applying for C and applying for C1 was full of twists and turns, they were eventually accepted. It can be concluded that the above-mentioned claims are feasible.
Moreover, from the examination process of Application A to Application C1, during the substantial examination phase, the examination results of the amendment to obvious errors” made by different examiners are quite different. The examiners of applications A and B directly accepted the amendments, while the examiners of applications C and C1 insisted that they would not accept them. The difference may be mainly because of the different perceptions of the examiner as to whether a person skilled in the art has the ability to exclude other unreasonable amendments. For individual cases, if we can base ourselves on specific technical solutions, underestimate common technical capabilities to the greatest extent, and fully prove and state that other situations exemplified by the examiner are contrary to common sense, it should be helpful to persuade the examiner.
In addition, from the results of Application C and Application C1, at present, the reexamination phase is more inclined to "search for the true meaning of the applicant", and it is relatively prone to accepting amendments to "obvious errors".
IV. Suggestions
Based on the above analysis, the following suggestions are provided.
1.It goes without saying that we cannot be too careful to avoid mistakes when drafting the description and claims, especially the content involving the invention points. We can also memorize common errors and pay special attention to them when reviewing. Common obvious errors also include, for example, incorrectly written length units, orders of magnitude, and the like.
2.When noticing the obvious errors, base ourselves on specific technical solutions, underestimate common technical capabilities to the greatest extent, and fully prove and state that other situations exemplified by the examiner are contrary to common sense usually are helpful. In addition, it is also advised to provide similar cases where the amendment were accepted for the examiner’s reference.
3.Since the reexamination phase is more inclined to "search for the applicant's true meaning" and is prone to accepting the amendment to "obvious errors", therefore, for applications that the amendment to "obvious errors" was not approved in the substantial examination phase, we can consider to try to request for reexamination.
