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Invalidation Approaches and Specification Crafting Concerning “Parameter Features”
Zhifeng MA
Chinese Patent Attorney
Linda Liu & Partners
Yu YAN
Attorney-at-law
Chinese Patent Attorney
Beijing Wei Chixue Law Firm
Limitation by “parameter features” is a love-hate claim drafting approach. It’s highly praised by applicant/patentee because it leads to great difficulty in searching and finding prior arts that directly disclose the recited parameter(s),as it serves asa major factor for an application being granted and a patent being maintained valid. It is also deeply loathed in a patent that is not our own, however, because it is difficult to invalidate a patent drafted in this manner as a result of the difficulties in, e.g., gathering evidence. With the increasing number of patents defined by parameters, various subsequent problems have gradually attracted attention from all parties, and the examination of “parameter features” tends to be more rigorous, with heavier burdens of proof assigned to the applicant/patentee during the prosecution and invalidation procedures. Furthermore, in terms of the patent invalidation cases in recent years, inadequate disclosure of specification, lack of clarity, support, novelty, and inventive step and the like can all be the grounds for invalidating the claims involving the limitations by parameter features. In this article, we shall analyze common grounds for invalidation of inventions defined by “parameter features” based on practical cases and offer some proposals for improving the specification drafting.
I. Grounds for Invalidation of Inventions Defined by “Parameter Features” and Related Cases
1. Indefiniteness of the claims and inadequate disclosure of the specification
Pursuant to the CNIPA’s Guidelines for Patent Examination, a product claim shall usually be defined in terms of the structural features of the product; in particular cases, it is permissible to express the parameter features with the aid of physical or chemical parameters; when parameters are used for the expression, the parameters used must be those which can be clearly and reliably determined by a person skilled in the art according to the teachings of the description or by customary means of the relevant art [1]; the parameter(s) shall be clear enough [2].
According to the rule of claims interpretation in the prosecution and invalidation procedures [3], the term in a claim shall be interpreted based on the ordinary understanding of a person skilled in the art after reading the claims, specification and drawings. Where the term in a claim is clearly defined or explained in the specification and drawings, the definition or explanation shall prevail. The term in a claim, if still not yet interpreted based on the above lines, may be defined with reference to commonly-used technical dictionaries, technical manuals, reference books, textbooks, national or industry technical standards, etc.
Many of the parameter features used in product claims are defined by the inventors themselves, so it is not easy to grasp their ordinary meanings, nor is it easy to define them with reference to technical dictionaries, textbooks, etc. For such parameter features, if the parameter is not described clearly enough in the specification, this may cause a failure for a person skilled in the art to define the claim scope or to implement the invention.
More often than not, the parameter features concern the measurement of some physical or chemical property of a product, raw material or the like under particular conditions. In view of the great influences of the test method and conditions on the test results, the unequivocal description of the test method and conditions is very important to defining the claim scope and implementing the technical solutions of a patent. Where the test method or conditions for a parameter feature are indefinite or uncertain, the claim may be considered to be indefinite or not implementable based on the specification.
[Case 1] Indefinite definitions and test conditions of parameters
Invalidation Decision No. 53229 relates to the Patent No. ZL200780042463.2 for the invention entitled “THERMOSETTING RESIN COMPOSITION FOR LIGHT REFLECTION …”. Claim 1 reads as follows:
“1. A thermosetting resin composition for light reflection, comprising a thermosetting component and a white pigment E, wherein the length of burrs that was generated during transfer molding under conditions of a molding temperature of 100°C to 200°C, a molding pressure of not greater than 20 MPa and a molding time of from 60 to 120 seconds is not greater than 5 mm, light reflectance at a wavelength of 350 nm to 800 nm, after heat curing, is not lower than 80%, said thermosetting component contains an epoxy resin A, and said white pigment E is at least one selected from the group consisting of alumina, magnesium oxide, antimony oxide, titanium oxide, zirconium oxide and inorganic hollow particles.”
The petitioner proposed that the meaning of the term “length of burrs” in claim 1 was ambiguous, so were the test conditions therefor.
The collegial panel was of the following opinions:
“The parameter feature, i.e. ‘the length of burrs that was generated during transfer molding under conditions of a molding temperature of 100°C to 200°C, a molding pressure of not greater than 20 MPa and a molding time of from 60 to 120 seconds is not greater than 5 mm’ recited in claim 1 fails to express the claimed invention in a clear and definite manner, nor does it clearly define the scope of protection of claim 1.
As an initial matter, the description and definition of the “length of burrs” in the specification are not clear enough. Consequently, a person skilled in the art cannot unambiguously determine from the disclosure of the specification whether the term refers to the length of burrs flowing into the six slits of the lower die, or the length of the “burrs seeped” into the juncture between the upper and lower dies as the patentee claimed.
Furthermore, the test conditions for the burr length set forth in claim 1 cannot convey the claimed invention expressly and definitely, and fail to clearly define the scope of claim 1. The test condition, i.e. ‘a molding temperature of 100°C to 200°C, a molding pressure of 20 MPa or less, and molding time of 60 to 120 s’ recited in claim 1 may be interpreted in two ways. It may be interpreted that ‘it is sufficient so long as one of the measuring results satisfies the claimed numerical range of the parameter under any one of the claimed conditions’, as argued by the patentee. However, nowhere does the specification describe or explain the burr length under the other test conditions than the particular test conditions described in the Examples and Comparative Examples of the specification. Thus, the patentee’s above interpretation cannot be expressly and definitely derived from the specification of the patent in dispute. The other interpretation is that all the measured values should be within the claimed numerical range of the parameter under each of the claimed test conditions. Hence, the limitation on the test condition for the burr length in claim 1 may be interpreted in the above two ways and thus results in two obviously different protection scope.
For the above reasons, the scope of claim 1 is indefinite. In view of this, the patent rights of the invention patent numbered ZL200780042463.2 was declared invalid in whole.”
[Case 2] Inadequate disclosure of the test methods for self-defined parameters
Invalidation Decision No. 563247 relates to the Patent No. ZL201810696957.2 for the invention entitled “POSITIVE ELECTRODE PLATE AND BATTERY”. Claim 1 reads as follows:
“1. A positive electrode plate, comprising …, and an OI value of the positive film represented by COI is less than or equal to 150; wherein the OI value of the positive film represented by COI is C0I = C003/C110, where C003 is a characteristic diffraction peak area of 003 crystal plane in an X-ray diffraction pattern of the positive electrode plate, and C110 is a characteristic diffraction peak area of 110 crystal plane in the X-ray diffraction pattern of the positive electrode plate; the positive electrode plate further satisfies a relationship: 0.015≤C0I×ρ≤4, where ρ represents an areal density of the positive film with a unit of g/cm2.”
The panel opined that the specification is not adequately disclosed on the grounds as follows:
“The technical solution of the patent in dispute is derived after analysis of the experimental results, and the experimental results are also performance data reflecting the technical effect of the invention. Nevertheless, the measuring method is indefinite in the specification, so a person skilled in the art cannot reproduce the experiment or obtain the relevant data based on the disclosure of the specification. As a result, neither the related technical means can be acquired nor the technical effect is ascertained from the specification. As such, the specification is not adequately disclosed.”
[Case 3] Inadequate disclosure of the test methods for conventional parameters
Invalidation Decision No. 49079 relates to the Patent No. ZL201180055930.1 for the invention entitled “IMPROVED LEAD ACID BATTERY SEPARATORS, BATTERIES AND RELATED METHODS”. Claim 1 reads as follows:
“1. A separator for a lead acid battery comprising a front face and a reverse face, the separator comprising: …, said separator having at least three of the following characteristics: a backweb thickness in the range of 125-250 microns; a puncture resistance of >10N; an oxidation resistance (Perox @ 40 hours) of >50% of the original CMD elongation; an electrical resistance of <60 mΩ·cm2; a water loss with an antimony alloy of <1.5 g/Ah; and a water loss with a non-antimony alloy of <0.8 g/Ah.”
The petitioner stated that the specification did not describe the test methods for the six separator performance parameters set forth in claim 1. In response, the patentee argued that the six parameters were conventional and a person skilled in the art was clear about how to test them.
The collegial panel held the following opinions:
“The steps and test conditions of a test method directly affect the obtained parameter values. Even the value of the same performance parameter varies as measured under different test conditions.
The specification of the patent in dispute does not disclose the test methods of the recited properties. Nor does it allude to the test steps, the technical means employed, or the ambient conditions. Despite the fact that these properties are of constant concern in separator production, there is no evidence proving that there is a uniform standard for the above test method in this field prior to the filing date, and generally it is still necessary in the art to specify the test method and conditions or the reference standard for each of the performance parameters mentioned. Without guidance in the specification and in absence of a uniform reference standard, a person skilled in the art cannot be sure that the test methods are identical, so the test results are not comparable.
For a person skilled in the art, the test methods for the properties are ambiguous and cannot be implemented based on the disclosure of the specification, so the specification is not adequately disclosed.”
2. Lack of support
In order to demonstrate the inventive step of the product in a product claim including a limitation by parameters in view of a prior-art product, there is a need to disclose the technical effect resulting from the feature of parameters in the specification, sided by supporting experimental data. If the experimental data provided are not sufficient to prove that the claimed technical effect is generated by the feature of parameters, the claim reciting the feature of parameters could be deemed as lacking support in the specification.
In addition, if it is ascertained that the feature of parameters is associated with the inventive idea, but the feature covers a technical solution that cannot resolve the purported technical problem or whose effect are barely predictable, the claim will be deemed as lacking support in the specification.
[Case 4] Unpredictable technical effect of self-defined parameters
Invalidation Decision No. 563598 relates to the Patent No. ZL201180023904.0 for the invention entitled “SESAME-CONTAINING ACIDIC LIQUID SEASONING”. Claim 1 amended in the invalidation procedure reads as follows:
“1. A liquid seasoning, comprising sesame, acetic acid, and at least one selected from the group consisting of butanoic acid, hexanoic acid, and 6-methyl-5-hepten-2-one, wherein when aroma components of the liquid seasoning are assayed by solid-phase microextraction-gas chromatography-mass spectrometry, a ratio of a peak area of each of said butanoic acid, hexanoic acid, and 6-methyl-5-hepten-2-one to the peak area of said acetic acid satisfies any one or more of the following conditions (a) to (c):
(a) butanoic acid: 0.0001 to 0.02
(b) hexanoic acid: 0.0001 to 0.05
(c) 6-methyl-5-hepten-2-one: 0.00001 to 0.005.”
The collegial panel held the following opinions:
“In the patent in dispute, the Examples actually verifies that the specific liquid seasoning formula (with a constant amount of the components such as acetic acid) with varied amounts of butanoic acid, hexanoic acid, and 6-methyl-5-hepten-2-one added thereto exhibits a better effect of maintaining the sesame aroma as compared to the Comparative Example in which the above components are not added. From the above single-factor experimental result, a person skilled in the art can directly conclude that in the in the specific liquid seasoning formula, the effect of maintaining the sesame aroma is related to the addition (or addition amounts) of butanoic acid, hexanoic acid, and 6-methyl-5-hepten-2-one in the liquid seasonings. Without verifying the influence of different concentrations of acetic acid on the technical effect, a person skilled in the art cannot reach the experimental conclusion that the technical effect is related to the ratios of butanoic acid, hexanoic acid, and 6-methyl-5-hepten-2-one to acetic acid.
Due to the ambiguity in the mechanism, a person skilled in art are not clear on which component(s) of the formula in the patent in dispute will affect the longevity of sesame aroma. Under this circumstance, a person skilled in the art can hardly predict from the experimental results of a particular formula (corresponding to a particular aroma content), that any of the formulas selected from the wide range covered by the claim will achieve the technical effect of maintaining the unique aroma, through the specified ratio of the aroma component.
Therefore, the technical solution generalized in claim 1 of the patent in dispute covers presumptions while the effect thereof is barely determined and evaluated in advance. Thus, the technical solution of claim 1 extends beyond the scope of the disclosure in specification, which does not comply with the relevant provision of Article 26.4 of the Chinese Patent Law.”
[Case 5] Defective point in numerical range
Invalidation Decision No. 58573 relates to the Patent No. ZL201720090970.4 for the utility model entitled “SECONDARY CELL AND HEATING DEVICE”. Claim 1 reads as follows:
“1. A secondary cell, comprising …; characterized in that … a total thickness of the outer packaging laminate film is t, a total thickness of the composite tab is p; a thickness of the molten resin layer is c, a thickness of the inner resin layer is a; a thickness of the seal portion is h that satisfies the following formula:
2t+p-(2c+2a)×95% < h < 2t+p-(2c+2a)×5%.”
Although the values of h selected in Comparative Examples 1 and 2 are within the range defined by the formula, the patent in dispute has experimentally confirmed that Comparative Examples 1 and 2 cannot address the technical problem to be solved by the patent in dispute.
The collegial panel ascertained the following findings:
“The scope of protection of each of claims 1 to 10 covers technical solutions that cannot achieve the purported technical effect of the patent in dispute and whose effect cannot be anticipated, and such technical solutions are not necessarily excluded from the claim scope. Consequently, it is difficult for a person skilled in the art to confirm that the technical solutions of claims 1 to 10 can address the technical problem to be solved by the patent in dispute and achieve the same technical effect. Thus, claims 1 to 10 are not supported by the specification.”
3. Novelty
A product claim involving a parameter feature is often distinguished from the prior art only in the parameter feature. In this situation, if the parameter feature implies that the claimed product is different from the prior-art product in structure and/or composition, the claim will be recognized to be novel. Otherwise, if this parameter cannot distinguish the claimed product from the prior-art product, the examiner may infer during the prosecution that the claim does not possess novelty [4] [5].
During the invalidation procedure, however, the petitioner for invalidation is usually required to bear the burden of proof and present evidence to prove that the prior-art product would certainly be characterized by the corresponding parameter. Here are some quite common means to prove that the products are the same: explaining that the preparation methods are the same, reproducing the examples of the prior art and testing the parameter, or obtaining evidence of “disclosure by use” and testing the parameter. However, it is difficult to obtain the above evidence for a vast majority of patents. In the high-profile invalidation administrative lawsuit in 2023 (i.e. Case 8 below), the Supreme People’s Court of China ruled that the burden of proof for “unconventional parameters” was assigned more to the patentee.
[Case 6] Presumption of the parameter feature from the same preparation method
Invalidation Decision No. 28343 relates to the Patent No. ZL200780009180.8 for the invention entitled “COLD-ROLLED STEEL SHEET, METHOD OF PRODUCING THE SAME, BATTERY, AND METHOD OF PRODUCING THE SAME”. Claim 2 reads as follows:
“2. A cold-rolled steel sheet comprising: by mass percent, 0.0040% or less of C, 0.02% or less of Si, 0.14% to 0.25% of Mn, 0.020% or less of P, 0.015% or less of S, 0.0040% or less of N, 0.020% to 0.070% of Al, 0.005% or more and less than 0.020% of Nb, Ti in a content satisfying formula (3) or formula (4), B in a content satisfying formula (1) or formula(2), and the balance composed of Fe and inevitable impurities, wherein the average grain size of a ferrite structure is 12.0 μm or less, and planar anisotropy Δr of the r value satisfies the relationship -0.20≤Δr≤0.20; …”
Claim 2 differs from Annex 1 only in that Annex 1 does not explicitly disclose the following two parameter features of claim 2: “the average grain size of a ferrite structure is 12.0 μm or less, and planar anisotropy Δr of the r value satisfies the relationship -0.20≤Δr≤0.20”.
The collegial panel held the following opinions:
“While Annex 1 does not explicitly disclose the above parameter limitations of claim 2, Annex 1 and the patent in dispute adopt the same preparation method, so the product prepared in Annex 1 would certainly have the parameter features as well. It can thus be deduced that claim 2 does not possess novelty over Annex 1.”
[Case 7] Preparing samples based on the Examples of cited prior art and measuring parameters
Invalidation Decision No. 562666 relates to the Patent No. ZL201780016029.0 for the invention entitled “TOOTHBRUSH”. Claim 1 reads as follows:
“1. A toothbrush comprising: a handle body that includes a head portion, a neck portion that extends from the head portion, and a handle portion that extends from the neck portion, wherein bristle bundles are implanted on a bristle implanted surface of the head portion, and a product of an amount of deflection A of the head portion, which is measured by a method (α) described below and an amount of deflection B of the neck portion, which is measured by a method (β) described below is 0.8 to 10; method (α) …; method (β) …”
Evidence 5 discloses the structure features of the toothbrush of claim 1, but it is silent about the product of an amount of deflection A of the head portion and an amount of deflection B of the neck portion as measured by the specific methods.
The petitioner entrusted a third-party mold company to manufacture tangible POM toothbrushes (i.e., Evidence 6 to Evidence 9) with the dimensions corresponding to those described in Experimental Example 1 of Evidence 5. Additionally, the petitioner engaged a professional third-party testing agency to measure the deflection of the head portion and the deflection of neck portion of the toothbrushes, using the method specified in the patent in dispute. The measuring results show that all the five tangible toothbrushes injection-molded according to Experimental Example 1 of Evidence 5 satisfy all of the technical features of claims 1 to 4, 7, and 8.
The bone of contention between the patentee and the petitioner consists in whether the toothbrush disclosed in Experimental Example 1 of Evidence 5 satisfies the parameter features; and whether the toothbrushes manufactured by the third party and the measuring results as Evidence 6 to Evidence 10 can represent Experimental Example 1 of Evidence 5.
The collegial panel was of the following opinions:
“If the product tested in the test report is consistent with that disclosed in the prior art, the test results in the test report can prove that the product disclosed in the prior-art evidence has the properties shown in the test results. Since Scheme 4 of Evidence 7 is exactly the same with Experimental Example 1 of Evidence 5 in terms of size, shape, and material, it can be determined that Scheme 4 of Evidence 7 is exactly consistent with Experimental Example 1 of Evidence 5. As the samples tested in Evidence 10 are consistent with those in Scheme 4 of Evidence 7, the test results in Evidence 10 can represent the properties of the toothbrushes in Experimental Example 1 of Evidence 5.”
Based on the foregoing findings, the panel determined that Evidence 5 discloses all technical features of claim 1 of the patent in dispute based on the above disclosure of Evidence 5 and the test results in Evidence 10, and Evidence 5 and claim 1 have substantially the same technical solution. Therefore, claim 1 does not possess novelty over Evidence 5.
[Case 8] Providing evidence of “disclosure by use” and measuring relevant parameters
Invalidation Decision No. 567474 relates to the Patent No. ZL201280016850.X for the invention entitled “HOT STAMPED HIGH STRENGTH PART EXCELLENT IN POST PAINTING ANTICORROSION PROPERTY AND METHOD OF PRODUCTION OF SAME”. Claim 1 reads as follows:
“1. A hot stamped high strength part which is excellent in post painting anticorrosion property, comprising an alloy plating layer comprising an Al-Fe intermetallic compound phase on the surface of a steel sheet,
said alloy plating layer is comprised of a plurality of intermetallic compound phases, a mean linear intercept length of crystal grains a phase containing Al: 40 to 65 mass% among the plurality of intermetallic compound phases is 3 to 20 μm, said mean linear intercept length means the length measured in a direction parallel to the surface of the steel sheet, an average value of thickness of said Al-Fe alloy plating layer is 10 to 50 μm, and a ratio of a standard deviation of the thickness of said Al-Fe alloy plating layer to the average value of the thickness satisfies the following relationship: 0 < standard deviation of thickness/average value of thickness ≤ 0.15. …”
The petitioner proposed that claim 1 did not possess novelty over Evidence 2 to Evidence 18.
Evidence 2 to Evidence 18 are a set of evidence of “disclosure by use”, detailing the process of notary purchase and dismantlement of a Fiat 500 car in Italy. The parts were shipped to Shanghai and then tested.
The patentee argued that the parts of the vehicle are suspected to have been replaced during transportation for dismantlement after the notary purchase; there is no evidence indicating that the parts of the vehicle had not been altered; additionally, the “ratio of the standard deviation of thickness of the plating layer to the average value of thickness” was not tested.
The collegial panel made the following decision:
“The petitioner has fulfilled the burden of proof, and the evidence presented by the petitioner can corroborate each other and jointly constitute a complete chain of evidence. The chain of evidence has met the standard of the high degree of probability and can prove that the tested parts are the original parts of the vehicle purchased. The patentee does not present evidence to support its objection while there should not have been obstacles to finding counterevidence as Fiat 500 is a vehicle model that boasts a certain sales volume.
The patentee does not dissent from the authenticity and accuracy of the test report. The values of the standard deviation of thickness/average value of thickness ranging from 0 to 0.15 were measured from different test samples rather than measured in the same crystal-phase field of view as challenged by the patentee. Therefore, all the technical features of claim 1 are disclosed by Evidence 2 to Evidence 18 and claim 1 does not possess novelty.”
[Case 9] Unconventional parameters never used in the prior art (presumptive disclosure)
The second-instance judgment of (2023) SPC IP Administrative Final No. 37 concerns the Patent No. ZL00811303.3 for the invention entitled “COMPRESSOR”. Claim 1 reads as follows:
“1. A compressor comprising: … wherein gas passages for passing a gas discharged from the compression mechanism unit are formed in the motor unit, and a ratio of a total area of slot gap portions defined between slots of a stator core and coils in a stator of the motor unit to an entire area of the gas passages is set at 0.3 or more.”
The Supreme People’s Court of China ruled as follows:
“If a parameter in a claim is an unconventional parameter that has never been used in the prior art, and the patent document fails to adequately disclose the effect of this parameter feature on the structure or composition of the product, while the prior art and the patent in dispute share the same inventive idea, it may be difficult for a person skilled in the art to distinguish the claimed product from the prior-art product. In this situation, in order to prevent the patentee or applicant from concealing the fact of lack of novelty by redefining the characteristics of a prior-art product using unconventional parameter features and to safeguard the public interests, the patentee or applicant is obligated to prove or fully explain the distinction between the claimed product and the prior-art product; failing this obligation may lead to the unfavorable inference that the claims of the patent in dispute do not possess novelty over the prior art.
The parameter limitation in the patent in dispute mainly reflects a different measurement standard and calculation method. It is hard for a person skilled in the art to determine whether such a calculation method implies that the product as claimed in claims 1 and 2 is distinguished from Evidence 1 in structure or composition, so is it to determine whether the product of Evidence 1 has a corresponding ratio. The patentee fails to provide evidence or convincing explanation to prove the structural difference based on the specification of the patent in dispute or the prior art. Accordingly, it is inferred that the two products are the same.”
4. Inventive step
In the case that a product cannot be clearly defined by the structure and/or composition alone, it can be further limited by a parameter. The parameter limitation should express the technical solution more clearly and should be bound up with the purported technical effect. If the association between the parameter limitation and the purported technical effect is unclear, a person skilled in art may find it impossible to determine what kind of superior technical effect the product can achieve with the parameer selected within the recited range. Additionally, if this complicates the implementation of the technical solution without a specific purpose, the parameter limitation cannot endow the technical solution with an inventive step.
[Case 10] With distinction but no technical effect
Invalidation Decision No. 42578 relates to the Patent No. ZL200410010483.X for the invention entitled “POLISHING PAD”. Claim 1 reads as follows:
“1. A polishing pad useful for planarizing semiconductor substrates, the polishing pad comprising a polyurethane polymeric material having a porosity of at least 0.1 volume percent, … having a KEL energy loss factor at 40°C and 1 rad/sec of 385 to 750 l/Pa and a modulus E' at 40°C and 1 rad/sec of 100 to 400 MPa.”
Petitioner: “Claim 1 differs from Evidence 1 in that claim 1 further specifies the dynamic mechanical parameters of the polishing pad. However, the dynamic mechanical parameters characterize the intrinsic properties of the material per se, and can be obtained by a person skilled in the art using conventional measurement equipment based on the well-known measurement techniques. Therefore, claim 1 does not involve an inventive step.”
Patentee: “The data in Tables 4 and 5A of the specification suggest that there is a strong correlation between the energy loss factor and modulus E’ and the defect in the wafer. It can thus be determined from the above difference that the technical problem solved by the present invention is to at least provide a polishing pad with an improved combination of properties to yield planarized wafers with low defectivity.”
Collegial panel: “In Tables 4 and 5A, the situations of the defects of the wafers polished with the polishing pads are completely identical and the difference in technical effect cannot be reflected in essence. Furthermore, the data in the tables do not tell that the defectivity of the wafer changes as the KEL and modulus E’ vary. Thus, there is no data to support the patentee’s proposition of the “strong correlation” between the above parameters and the defectivity.
In fact, the particular selection of the parameters of claim 1 does not bring about any more excellent technical effect to the technical solution, nor does it solve the technical problem. This meaningless selection of parameters can be made by a person skilled in the art without affording any creative effort. Therefore, claim 1 does not involve an inventive step.”
II. Proposals for Specification Crafting
Despite of the various problems of a parameter feature, it is often inevitable that a specific product in a specific field may need to be defined by a parameter feature. Therefore, consideration should be given to the crafting of the parameter feature in the specification in order to meet the requirements in both prosecution and invalidation procedures.
As shown in the above cases, a product claim characterized by parameters would mostly be invalidated on the grounds of inadequate description of a parameter per se, the test method for the parameter, the technical effect of the parameter, etc. in the specification. The risk of invalidation on these grounds can be greatly reduced by improving the description of the parameters in the stage of specification crafting. Therefore, in order to increase the success rate of patent grant and verification, the specification may be improved from the following several perspectives:
1. Clarifying the definition of parameter
An ambiguous parameter may render the claim scope indefinite or result in inadequate disclosure of the specification.
A parameter recited in the claims should be clearly explained in the specification, such that a person skilled in the art can unambiguously and reliably determine its meaning under the teaching of the specification or by the customary means in the related technical field.
It is particularly true to a self-defined parameter. Its definition should be disclosed in the specification, so that a person skilled in the art can clearly define its scope or at least obtain a unique and definite explanation of the parameter based on reading the claims, specification, and drawings.
2. Test method and test conditions for parameter
Indefinite or uncertain test method and conditions for a parameter may render the scope of a claim indefinite or result in inadequate disclosure of the specification.
It is necessary to elaborate the test method for a parameter in the specification such as to be reproducible by a person skilled in the art. In particular, the test of a self-defined parameter should be described from various aspects including sampling, sample size, sample processing, test steps, test conditions, data acquisition and processing, and so on to ensure that a definite measured value can be acquired from the disclosure of the specification.
When there is a plurality of test methods known in the art, it is still necessary to indicate the specific method adopted even for a conventional parameter. In the case of a standard test method, the corresponding national or industry standard code should be stated.
Regarding the test conditions (especially those having substantial influences on the test results), it is advisable to describe them clearly in the specification or claims so that a person skilled in the art can determine the test conditions uniquely.
3. Technical effect of parameter
Indefinite or inadequate description of the technical effect of a parameter may result in inadequate disclosure of the specification, lack of support by the specification or lack of inventive step.
To avoid the above issues, the following measures may be taken into account:
(i) The technical effect generated by the parameter may be described in the specification or claims.
(ii) It is advisable to provide a comparative example from the embodiments disclosed in potentially the closest prior art, and provide experimental data demonstrating that the prior art does not have claimed parameter and the corresponding technical effect.
(iii) The experimental data provided render the purported technical effect of the embodiments of the invention reliable.
(iv) The influence of other factors should be eliminated as much as possible in the confirmatory experiment, and as many experimental data as possible should be provided to prove that the claimed technical effect is generated by the parameter feature, rather than by other possible influence factors.
(v) It is advisable to avoid simply grading the technical effect as good or bad, but to provide more grades corresponding to technical solutions of various degrees of preference, so as to facilitate the arguments for inventive step in the prosecution and invalidation procedures.
4. Numerical range of parameter
Inappropriate numerical range of a parameter may cause a claim to lack support in the specification or lack novelty or inventive step.
In this regard, the following measures may be taken into account:
(i) Not only should the numerical range be described in the specific embodiments, but also the specification should describe at least the examples in which the value of the parameter is set to the two endpoint values and one or more intermediate values of the numerical range, so as to avoid the objection that the numerical range is so broad that it covers a technical solution unable to address the technical problem to be solved by the invention.
(ii) The numerical range should be appropriately generalized to exclude any defective point that fails the technical effect of the invention.
(iii) It is advisable to provide a comparative example, in which the data is out of the numerical range, in the specification, so as to prove that the numerical range as claimed in the invention is not a conventional choice.
(iv) For the data as the inventive idea, it is advisable to provide multiple preferable ranges corresponding to different technical effects, so as to leave room for amendments or arguments to overcome novelty or inventive step objections.
5. Examples
In general, the technical effect of a product claim defined by parameter(s) is required to be verified by an experiment, so an example may be necessary. Inappropriate description of an example may cause inadequate disclosure of the specification, lack of support, or lack of novelty and inventive step.
In addition to the afore-proposed measures of improving the description of examples, the following measures may further be considered:
(i) The examples should be described sufficiently enough to render them reproducible, or the specification could be considered inadequately disclosed because the technical effect of the invention cannot be substantiated by reproducing the examples.
(ii) The solutions of the examples should be distinguished from the technical solutions disclosed in the prior-art examples to avoid the deduction that the parameter features have been disclosed as a result of the same preparation method.
Conclusion
In recent years, China tends to be more rigorous in invalidation trials of inventions defined by “parameter features”. The proportion of product claims defined by parameters that have been invalidated on the grounds of inadequate disclosure of the specification, lack of support and the like, which were rarely used in the past, is increasing. In this unfavorable situation, we hope that the above discussion of the cases and specification drafting can provide the applicants/patentees with some help in improving the quality of their patents concerning parameters, so as to acquire a stronger patent and fend off invalidation attacks.
[1] Guidelines for Patent Examination (2023), Part II, Chapter 2, Section 3.2.2
[2] Guidelines for Patent Examination (2023), Part II, Chapter 10, Section 4.3
[3] Article 2 of Provisions of the Supreme People’s Court on Several Issues Concerning the Application of Law in the Trial of Administrative Cases Involving Patent Grant and Confirmation (I), Judicial Interpretation [2020] No. 8
[4] Guidelines for Patent Examination (2023), Part II, Chapter 3, Section 3.2.5
[5] Guidelines for Patent Examination (2023), Part II, Chapter 10, Section 5.3
