Article 26.3 of the Chinese Patent Law prescribes that “the description shall set forth the invention or utility model in a manner sufficiently clear and complete so as to enable a person skilled in the relevant field of technology to carry it out”. Rule 64.2 of the Implementing Regulations of the Chinese Patent Law prescribes that non-compliance with Article 26.3 of the Chinese Patent Law can be used as a ground for invalidation of the invention/utility model patent. One of the main features of the Chinese patent system is that in exchange for exclusive rights over a patent for a certain period of time the patentee must fully disclose technical information relating to the patent in order to permit the public to understand the patent and to achieve a fair balance in the relationship between the interests of the patentee and the public. Insufficient disclosure obviously violates this principle. If the description of an invention or utility model suffers from the defect of insufficient disclosure, then the application may fail to pass the SIPO’s substantive examination (Note: Substantive examination only applies to invention applications, not utility model applications) needed to obtain a patent right, or the granted patent right may be invalidated by the Patent Reexamination Board based on the ground of non-compliance with Article 26.3 of the Chinese Patent Law. Therefore, insufficient disclosure is a very serious substantive defect for Chinese patent applications or Chinese patents.
This article is divided into four parts: “Relevant Laws and Regulations”, “How to Avoid Insufficient Disclosure”, “How to Refute an Allegation of Insufficient Disclosure” and “Case Analysis”. The first part summarizes provisions on insufficient disclosure in the Chinese Patent Law, the SIPO’s
Guidelines for Examination and
Examination Operating Procedures. The second part discusses how to avoid insufficient disclosure when writing the application document. The third part discusses how to refute an allegation of insufficient disclosure during patent examination and invalidation procedures. The fourth part introduces an invalidation case concerned with insufficient disclosure.
Relevant Laws and Regulations
1. Article 26.3 of the Chinese Patent Law: The description shall set forth the invention or utility model in a manner sufficiently clear and complete so as to enable a person skilled in the relevant field of technology to carry it out.
2. The SIPO’s
Guidelines for Examination (Part II, chapter 2, section 2.1): The description shall set forth the invention or utility model in a manner sufficiently clear and complete to such an extent that a person skilled in the art can carry it out. In other words, the description shall comply with the requirement of disclosing the invention or utility model sufficiently.
The contents of the description shall be clear (the subject matter shall be clear, and the terms used in it shall be precise); the description shall be complete and include all the technical content which is necessary to understand and carry out the invention or utility model; the description shall enable a person skilled in the art to carry out the invention or utility model, i.e., it should allow a person skilled in the art who follows the teachings of the description, to carry out the technical solution of the invention or utility model, solve the technical problem and achieve the expected technical effects.
The following are examples of the circumstances in which the technical solution described in the description is regarded as being unable to be carried out due to lack of technical means to solve the technical problem:
(1) The description sets forth only a task and/or an assumption, or simple expresses a wish and/or a result, providing no technical means that a person skilled in the art can implement (Note: If an invention application claims an automatic transmission bicycle which automatically lowers a gear ratio between a driving wheel and a driven wheel via an automatic transmission mechanism when pedaling uphill in order to save the cyclist the trouble of manually changing gear, without mentioning the specific structure of the automatic transmission mechanism, then this application will suffer from the defect of insufficient disclosure because it sets forth only a task and/or an assumption, and provides no technical means that a person skilled in the art can use to implement the task and/or the assumption);
(2) The description sets forth a technical means, but the means is so ambiguously and vaguely described that a person skilled in the art cannot concretely implement it using only the contents of the description (Note: Examples include an incomplete technical solution (e.g. if the description discloses the formula W=E*M as an innovative characteristic without providing or suggesting the definitions of “W”, “E” and “M”, then the description will suffer from the defect of insufficient disclosure which causes a person skilled in the art to be unable to understand and implement the invention) or contradictory elements in an technical solution);
(3) The description sets forth a technical means, but a person skilled in the art cannot solve the technical problem of the invention or utility model by adopting said means (Note: If the applicant deliberately hides technical key points needed to solve the technical problem of an invention or utility model rather than disclosing them in the description and thereby causes a person skilled in the art to be unable to solve the technical problem with the technical means provided in the description, then the description will suffer from the defect of insufficient disclosure);
(4) The subject matter of an application is a technical solution consisting of several technical means, but one of the means cannot be implemented by a person skilled in the art relying only on the contents of the description;
(5) The description sets forth a concrete technical solution without providing any experimental evidence, but the validity of this solution can only be confirmed by experimental result. For example, in general, the invention of a new use for a known compound requires experimental evidence in the description to validate the new use and effects thereof; otherwise, the requirement of enablement cannot be met.
3. The SIPO’s
Examination Operating Procedures
(1) An objection of insufficient disclosure will not be raised if the technical solution insufficiently disclosed in the description is not included in the claims (Note: If the description includes technical solutions A-D, wherein the technical solution B is insufficiently disclosed in the description but not included in the claims, then the examiner will not raise an objection of insufficient disclosure against the technical solution B);
(2) The defect of insufficient disclosure cannot be overcome by adding embodiments and/or technical features to the application document because such amendments are not in compliance with Article 33 of the Chinese Patent Law;
(3) The examiner will not consider experimental data, added embodiments, publications published on/after the application date or non-publication evidence submitted by the applicant (Note: for example, when making a response to the Office Actions) to prove sufficient disclosure;
(4) The examiner should consider the prior art proved by formal publications (Note: This includes patent literature, books having an ISBN, ISSN or Chinese standard serial number, standards issued by Chinese central or provincial administrative departments or industry authorities, regularly published online electronic journals in online databases accessible to the public, etc.);
(5) If the applicant explains with convincing reasons in the observations that certain technical means to implement the invention can be easily determined by a person skilled in the art based on common knowledge, the examiner should accept the applicant’s statement (Note: The applicant should submit evidence of the cited common knowledge along with the observations);
(6) If the contents in one or more pieces of evidence are contradictory and make it impossible to determine the claimed technical solution, then such evidence will be unable to prove sufficient disclosure (Note: For example, an invention application claims an alloy which includes element A, 15 wt% of element B and 20 wt% of element C, wherein element A is intended to solve the technical problem of the invention. The examiner can raise the defect of insufficient disclosure because the description does not disclose the content of element A. To prove that the content of element A was available in the prior art, in a response to the Office Action the applicant may cite a formal publication which was published before the application date and which states that the content of element A in the relevant material is not less than 5 wt%. The examiner discovers a relevant technical guide stating that the content of element A in the relevant material is not more than 3 wt%. These two pieces of evidence are contradictory, so the examiner will not accept the evidence provided by the applicant);
(7) If one or more pieces of evidence show(s) that a certain technical feature has multiple meanings, some of which cannot implement the claimed invention, then the defect of insufficient disclosure will not be overcome;
(8) If the applicant provides evidence to prove that certain technical means is known in the prior art but this technical means cannot be directly combined with the contents of the description, then the defect of insufficient disclosure will not be overcome;
(9) If the description does not give sufficient information to identify a cited document and thus makes it impossible to obtain this cited document, or if the actual content of this document is unassociated with the invention or inconsistent with the cited part, then the examiner will deem that the description does not cite this document (Note: If the description only says that “the present invention uses the drive mechanism disclosed by Patent literature 1” without mentioning specific information of the drive mechanism or the application/publication number of Patent Literature 1, then the examiner will be unable to obtain this document and will deem that the description does not cite Patent Literature 1 and has the defect of insufficient disclosure. If the description has a mistake in the application/publication number of the cited document due to the applicant’s negligence, then the examiner will find incorrect patent literature that is unrelated to the technique of the application, and will deem that the description does not cite this document and suffers from the defect of insufficient disclosure);
(10) If the cited document in the description is a non-patent document or a foreign patent document published on or after the application date, the examiner will deem that the description does not cite this document;
(11) If the cited document in the description is a Chinese patent document unpublished or published after the publication date, the examiner will deem that the description does not cite this document;
(12) If the description only uses a trademark or product name to indicate the product or substance used in the invention, the trademark or product name should have an accurate technical meaning known to the public before the application date; otherwise a person skilled in the art will be unable to determine the product or substance used to implement the technical solution of the invention. The trademark or product name is allowed to have the following meanings: representing a concrete product or substance; representing a product or substance having an accurate meaning; or representing a series of known products or substances which have the same effects as those mentioned in the technical solution of the invention.
How to Avoid Insufficient Disclosure
(1) For a product invention based on a new compound or composition, a usage invention based on the discovery of a new substance or property, and an invention which goes against conventions or technical prejudices, the description should provide not only specific technical solutions but also experimental data which proves the feasibility of the technical solutions.
(2) The description should describe the technical effect in an appropriate manner because exaggeration will cause the technical solution to be inconsistent with the technical effect (the technical solution cannot achieve the technical effect) and lead to the defect of insufficient disclosure.
(3) The technical problem, the technical effect and the technical solution in the description should be consistent with each other, i.e., they must not be contradictory or unrelated to each other.
(4) The description should use general technical terms as much as possible, and avoid using internal terms used only by the applicant’s company. If a new technical term is invented to describe a new technique, then the description should explain the meaning of this term in detail so that a person skilled in the art can understand it.
(5) The content of each ingredient in the claimed material should be specified.
(6) The technical parameters in any formula included in the invention should be specifically defined, and the units (if any) of the technical parameter should be specified.
(7) When citing the prior art in the Background of the Invention, the identity of the document which is the origin of the explanation of the invention should be specified. If the cited document is a patent document, its country and publication number should be specified. If the cited document is a non-patent document, its title and source should be specified.
(8) If the cited document in the Background of the Invention is a non-patent document or a foreign patent document published on or after the application date, the part of the cited document related to the invention should be elaborated in the Background of the Invention.
(9) If the cited document in the Background of the Invention is a Chinese patent document that will possibly be published after the publication date of the application (For example, the present application is a utility model application A, and the cited document is an invention application B filed shortly before the application date of the utility model application A. As an invention application will be published within 18 months from the application date, and a utility model may be granted within 12 months in China, the publication date of the cited invention application B may be later than that of the present application A. In this case, during the invalidation procedure of the present application A, the examiner may deem that the present application A does not cite the patent application B, which will result in insufficient disclosure and invalidation of the present application A), the part of the cited document related to the invention should be identified in the Background of the Invention.
How to Refute an Allegation of Insufficient Disclosure
(1) If the examiner alleges that the application suffers from the defect of insufficient disclosure, then the applicant should determine whether the examiner’s opinion is reasonable and whether the examiner understands the technical content correctly. If not, in a response to the Office Action, the applicant should provide convincing reasons to prove sufficient disclosure so as to make the application be accepted by the examiner.
(2) If the examiner raises an objection of insufficient disclosure on the ground that the insufficiently disclosed content belongs to a cited non-patent document or foreign patent document that was published on or after the application date, the applicant should combine all the parts of the description together to prove that the current disclosure of the description is enough to implement the invention, with no need to know the content of the non-patent document or foreign patent document.
(3) If the examiner claims that the defect of insufficient disclosure is due to unclear expressions in the description, the applicant should argue that the unclear expressions are not in compliance with the provision that “the description shall use standard terms and be in clear wording” under Rule 18 of the Implementing Regulations of the Chinese Patent Law, and emphasize that the correct meanings of these expressions can be directly inferred from the context. The applicant should also amend the unclear expressions in response to the Office Action and state that the amendments do not go beyond the scope of the disclosure contained in the original description and claims.
Case Analysis
In an invalidation case handled by our firm, we requested invalidation of the utility model patent (Patent No.: 200520005331.0/Publication No.: CN2775642) before the Patent Reexamination Board based on the ground that the part of the description related to claims 1-5 was unclear, thereby causing insufficient disclosure and making a person skilled in the art unable to carry out the technical solutions of claims 1-5. In response to the request for invalidation, the patentee revised original claims 1-5 into new claims 1-3. According to our client’s instructions, our firm argued during oral proceedings that the part of the description related to new claims 1-3 was still unclear, thereby making a person skilled in the art unable to carry out the technical solutions of new claims 1-3. The Patent Reexamination Board agreed to our request in the No. 10697 Examination Decision on the Request for Invalidation ruling that the technical solutions of the description related to new claims 1-3 were unclear and not in compliance with Article 26.3 of the Chinese Patent Law, thereby making a person skilled in the art unable to carry out the technical solutions of new claims 1-3 when relying only on the description.
The details of this case are as follows:
New claims 1-3 of the utility model patent
1. A button clamp for detecting ready-made clothing accessories, comprising: a button clamp seat (1), at least two pincers (2) and a pincer fixing seat (3), wherein the pincers (2) are fixed on the pincer fixing seat (3) such that the pincers (2) open or close in a radial direction; the pincer fixing seat (3) is fixedly connected to the button clamp seat (1) via connecting pieces (5, 6) which comprise a fixing screw (6) and a nut (5); the fixing screw (6) has one end provided with the pincer fixing seat (3) and the other end fixed on the button clamp seat (1) via the nut (5); the pincer fixing seat (3) is provided with an adjusting member for moving the pincer fixing seat (3) up and down; the adjusting member comprises an up-and-down handle (7) and an up-and-down screw (8); the up-and-down screw (8) sheaths one end of the fixing screw (6) with one end fixedly connected to the pincer fixing seat (3) and the other end thread-connected to the up-and-down handle (7); an interval is kept between the up-and-down handle (7) and an end portion of the pincer for grabbing accessories.
2. The button clamp for detecting ready-made clothing accessories according to claim 1, wherein a thread of the up-and-down handle (7) is finer than that of the up-and-down screw (8).
3. The button clamp for detecting ready-made clothing accessories according to claim 1, wherein there are three pincers (2) fixed to the inside of the pincer fixing seat (3) via a rubber ring (4) and a fixing sheath (9).
Corresponding part of the description of the utility model patent
As shown in Fig. 1, the button clamp of the present utility model comprises a button clamp seat 1 which may apply a force, three pincers 2 for grapping objects with end portions made from a thin hard material, and a pincer fixing seat 3, wherein three pincers 2 are connected to the pincer fixing seat 3 via a rubber ring 4 and a fixing sheath 9; the pincer fixing seat 3 is fixedly connected to the button clamp seat 1 via a fixing screw 6 and a nut 5, and is provided with an adjusting member for moving the pincer fixing seat 3 up and down; the adjusting member comprises an up-and-down handle 7 and an up-and-down screw 8; the up-and-down screw 8 sheaths one end of the fixing screw 6 with one end fixedly connected to the pincer fixing seat 3 and the other end thread-connected to the up-and-down handle 7; a thread of the up-and-down handle 7 is finer than that of the up-and-down screw 8 so that a slight turn of the up-and-down handle 7 can drive the up-and-down screw 8 to move for a long distance. As shown in Fig. 2, the up-and-down screw 8 in this example has a wedge shape. When top portions of the three pincers 2 are positioned at the outside of the up-and-down screw 8 via the rubber ring 4, the wedge shape and up-and-down movement of the up-and-down screw 8 can enable opening and closing operations of the pincers 2, the extent of the opening and closing operations being limited by the pincer fixing seat 3.
Grounds for invalidation of new claims 1-3 in the Patent Reexamination Board’s Examination Decision on the Request for Invalidation (regarding Article 26.3 of the Chinese Patent Law)
①The description does not disclose the structure of the fixing screw 6, and only specifies that the up-and-down screw 8 has a “wedge shape”. As shown in Figs. 1-2, a coarse-thread screw is formed between the wedge structure and the fine-thread screw indicated by the reference sign 6. A person skilled in the art cannot know whether this coarse-thread screw is a separate member or belongs to the fixing screw 6 or the wedge-shaped up-and-down screw 8. That is to say, a person skilled in the art cannot know whether the fixing screw 6 has the fine-thread structure or a combined structure composed of the fine thread and the coarse thread in the drawings. Nor can a person skilled in the art know whether the up-and-down screw 8 has a combined structure composed of the coarse screw and the wedge structure or is a single wedge-shaped mechanism in the drawings. Moreover, although the description states that “the up-and-down screw 8 sheaths one end of the fixing screw 6 with one end fixedly connected to the pincer fixing seat 3 and the other end thread-connected to the up-and-down handle 7” (see lines 19-20 on page 3 of the description), the specific structure of the up-and-down screw 8 cannot be unambiguously determined by a person skilled in the art. According to the description, the up-and-down screw 8 has one end fixedly connected to the pincer fixing seat 3 and the other end thread-connected to the up-and-down handle 7, which shows that the coarse-thread screw in Figs. 1-2 should belong to the up-and-down screw 8 so that the two ends of the up-and-down screw 8 can be respectively connected to the pincer fixing seat 3 and the up-and-down handle 7. In this case, since the up-and-down screw 8 is “fixedly connected” to the pincer fixing seat 3, the up-and-down screw 8 cannot move up and down relative to the pincer fixing seat 3. This is contradictory to the technical feature that the up-and-down screw 8 drives the pincers 2 to open or close in a radial direction. Owing to the above reasons, the description does not clearly describe the specific structures of the up-and-down screw 8 and the fixing screw 6.
② Normally, the button clamp in this patent causes the pincers to open or close in a radial direction via the coordinated movement of the fixing screw 6, the up-and-down handle 7 and the up-and-down screw 8, but the description does not clearly show how the movement of these components is coordinated. Specifically speaking, the description does not define the coordinated movement of the fine-thread screw, the coarse-thread screw, the wedge structure and the up-and-down handle 7 in Fig. 2, i.e., which component is intended to be driven first, or how this component drives other components to move, thereby causing many uncertainties in how it is intended to operate. For example, if the fine-thread screw is fixed, do the coarse-thread screw, the wedge structure and the up-and-down handle 7 move in the same direction, or in partially different directions or in completely different directions? If they move in different directions, how do they move in coordination with each other? This patent does not explicitly disclose the coordinated movement of the fixing screw 6, the up-and-down handle 7 and the up-and-down screw 8, thereby preventing a person skilled in the art relying only on the description from unambiguously determining how/why the button clamp works. Additionally, during oral proceedings the patentee did not give a clear explanation of this aspect of the invention.
With regard to the technical feature “the up-and-down screw 8 sheaths one end of the fixing screw 6 with one end fixedly connected to the pincer fixing seat 3 and the other end thread-connected to the up-and-down handle 7” (see lines 19-20 on page 3 of the description), the patentee argued during oral proceedings that the expression “one end” referred to one end of the fixing screw 6 while the expression “the other end” referred to one end of the up-and-down screw 8. The collegial panel did not agree and deemed that the patentee’s argument violated grammatical rules because the expression “one end …, the other end …” was a parallel phrase normally referring to the two ends of one component. The patentee claimed that the technical feature “a thread of the up-and-down handle 7 is finer than that of the up-and-down screw 8” was caused by clerical errors. The collegial panel ruled that two components working together usually had the same thread according to common knowledge in this field. The technical feature “a thread of the up-and-down handle 7 is finer than that of the up-and-down screw 8 so that a slight turn of the up-and-down handle 7 can drive the up-and-down screw 8 to move for a long distance”(see lines 20-22 on page 3 of the description) obviously goes against this common knowledge. Since the description does not elaborate on this technical feature, a person skilled in the art cannot directly and unambiguously determine from the original documents how the up-and-down screw 8 moves. Despite the patentee’s claim, this technical feature objectively causes a lack of clarity in the description and makes a person skilled in the art unable to implement the technical solution related to the above feature. Thus, the collegial panel did not accept the patentee’s claim. With regard to the patentee’s opinion that the fixing screw 6 comprises the coarse-thread screw and the fine-thread screw, the collegial panel commented that the structure of the fixing screw 6 could not be unambiguously determined. Moreover, the description does not mention that the coarse-thread screw and the fine-thread screw are fixedly connected, and the drawings only show that they are thread-connected. According to common knowledge in this field, thread-connected components move relative to each other and are not fixed. The description does not support the view that the fixing screw 6 is formed by fixedly connecting the coarse-thread screw with the fine-thread screw. Thus, the patentee’s opinion was not accepted by the collegial panel. Owing to the above reasons, the collegial panel ruled that the reasons stated by the patentee were untenable, and that the technical solution of the button clamp in the description was unclear and not in compliance with Article 26.3 of the Chinese Patent Law, thereby making a person skilled in the art unable to implement the technical solution of the button clamp when relying only on the description.
Comment
I totally agree with the collegial panel of the Patent Reexamination Board. The reason why the description is not in compliance with Article 26.3 of the Chinese Patent Law is probably that the patent attorney wrote the application document without fully understanding how the device worked, thereby causing contradictions in the technical content, unclear structures of some components and a lack of clarity about how the components are connected and cooperate. Additionally, the application document suffers from the following defects:
(1) The description does not explain the working principle of the button clamp, despite mentioning the technical feature “when top portions of the three pincers 2 are positioned at the outside of the up-and-down screw 8 via the rubber ring 4, the wedge shape and up-and-down movement of the up-and-down screw 8 can enable opening and closing operations of the pincers, the extent of the opening and closing operations being limited by the pincer fixing seat 3”. The description does not disclose how to operate the button clamp to detect the firmness of the button or how all the components interact with each other and move relative to each other, thereby making it impossible for a person skilled in the art to understand the technical solution of this patent. If the description had explained the working principle of the button clamp as well as how all the components interact with each other and move relative to each other, then the defect of unclearness may have been overcome by arguments.
(2) The drawings are unclear. Fig. 1 shows the closed state of the pincers 2, wherein the upper surface of the up-and-down handle 7 is level with the upper end of the up-and-down screw 8. Fig. 2 shows the open state of the pincers 2, wherein the upper surface of the up-and-down handle 7 is still level with the upper end of the up-and-down screw 8. The drawings show neither the working principle of the button clamp nor how all the components interact with each other and move relative to each other, so they do not help illustrate the description.
Note
The description of a mechanical patent should specifically describe the shape/position of each component in the apparatus of the claimed technical solution, how all the components cooperate with and are connected to each other, the working principle of the apparatus as well as how all the components interact with each other and move relative to each other. Furthermore, the drawings should correspond to the description and clearly show the shape/position of each component in the apparatus as well as how all the components cooperate with and are connected to each other. The description should also disclose how to solve the technical problem of the invention and how to achieve the technical effect. There should be no contradiction in the description, and all the parts of the description should be associated with each other.
Appendix
Drawings of the Utility Model Patent (Publication No.: CN2775642):
