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How to Draft the Parameter-defined Product Claims in Chinese Patent Application
Voice: Ya Gao
Patent Attorney
Author： Yuning WANG
Patent Attorney
Hello everyone, welcome to Linda Liu on air. I am Patent Attorney, Ya Gao.
Today I am going to talk about How to Draft the Parameter-defined Product Claims in Chinese Patent Application.
When an uncommon parameter or a self-defined parameter is used in the claim, usually it is necessary to explain the definition and/or the measuring method of the parameter in detail. Even though a parameter is common, if its definition or standard is unclear, or if the value of the parameter varies due to different measuring conditions, the specification should present the definition and/or measuring method.
In a Chinese patent application, the applicant may use parameter-defined product claims to distinguish the claimed product from a prior product and/or to strive for a reasonable scope of protection. With the fast scientific development nowadays, the characterizing means has been enriched, resulting in a variety of expressions of a parameter feature which enrich the expression of parameter-defined product claims.
The China’s Guidelines for Patent Examination approves the legitimacy and legality of parameter-defined product claims in Section 3.2.2 of Chapter 2, Part II. However, since the defined parameters cannot intuitively represent the structure/composition of the product, disputes arise in the application of the articles relating to determination of novelty, support by the description, adequate disclosure and clear scope of protection in the prosecution.
Subsequently this article proposes some suggestions for the drafting of patent application with parameter-defined product claims in light of the existing difficulties or disputes occurring in the prosecution with respect to parameter-defined product claims.
1. Describing the definition and the measuring method of the parameter in the specification
For a parameter-defined product claim, the scope of protection depends on the parameter. Therefore, it is critical to clearly define the parameter. If an office action is issued to point out that the parameter is unclear, usually the applicant needs to explain or amend the parameter based on the specification. Thus, failing to adequately specify the concept of the parameter in the specification in the drafting stage will make it difficult to clarify the definition of the parameter during the prosecution.
Even for a common parameter, if its definition or standard is ambiguous, or if the value of the parameter varies due to different measuring conditions, the specification should specify the definition and/or measuring method. For example, in terms of a parameter relating to hardness, since there are serval types of hardness such as shore hardness, Rockwell hardness, pencil hardness, indentation hardness, and so on, the standard or the measuring method of the hardness should be specified. For another example, when specifying a parameter relating to viscosity, the temperature at which the viscosity is measured should be specified since viscosity is closely associated with temperature.
When an uncommon or a self-defined parameter is used in the claim, usually it is necessary to detail the definition and/or the measuring method of the parameter in the specification. When a new parameter defined by a mathematical formula involving a plurality of parameters is used to define the claim, the specification should include the definition and/or the measuring method of each of the parameters, as well as the measurement unit of each of the parameters to be introduced into the formula.
2. Describing the method for obtaining or adjusting the parameter in the specification
In a case where the specification does not describe in details how to obtain the parameter defined in the claims, particularly when the parameter is an uncommon parameter or a self-defined parameter, the examiner will probably question whether the specification contains adequate disclosure on the grounds that the public may be unable to implement the patent.
A typical example of risky drafting is to state in the specification that a parameter x is adjustable depending on the type and the proportion of a raw material, and state in the examples that raw materials resin A and resin B are formulated in a suitable proportion and mixed adequately to obtain a composition, with the composition's parameter x measured to be y. In fact, the above description fails to specify how the type and the proportion of the raw materials affects the parameter x. If the problem of inadequate disclosure is pointed out during the prosecution, the applicant will find it necessary to argue that it is known in this field how to adjust the parameter x according to the type and the proportion of the raw materials. However, such argument is scarcely convincing and may even have adverse effect on the argument for the inventiveness (non-obviousness).
Therefore, the specification should provide suitable disclosure about the factors affecting the parameter and the method for obtaining the parameter. A practical exemplary improvement to the above description is to elaborate that the raw material resin A may be a specific type, with examples described, the raw material resin B may be a specific type, with examples described, and concretize a specific proportion range of the resin A and the resin B, as well as a specific range of the parameter x obtained based on the described type and proportion of the materials; meanwhile, the example may show how the raw materials resin A and resin B are formulated in a certain proportion indicated by a number and appropriately mixed to generate a composition, with a parameter x of the composition measured to be y.
As further improvement, a plurality of examples of the product may be designed, each with different parameters obtained under different manufacturing conditions.
The questioning of inadequate disclosure will be more convincingly eliminated if the specification provides detailed description of the factors affecting the parameter and multiple examples demonstrating a regular pattern occurring between the parameter and the raw material or the manufacturing condition.
3. Providing multiple comparative examples in the specification
In the prosecution, usually the novelty of parameter-defined product claims is determined based on the novelty deducing principle. Accordingly, it will be easier to refute novelty rejections if a comparative example corresponding to the cited prior art is described in the specification.
However, it is impossible to predict in the drafting stage what prior art document will be cited during prosecution. Therefore, it is almost impossible for the comparative example to be designed just the same as the technical solution disclosed by the cited prior art.
In this case, the specification may describe a variety of comparative examples that lack the parameter feature due to various possible factors, so that even the specification does not include a comparative example that is identical or similar to the prior art, there may be one comparative example that is comparable with the prior art, thereby deducing that the prior art does not have the parameter feature of the present application based on the data of the comparative example.
Practical experience shows that it is not uncommon for an earlier application by the same applicant to be cited for novelty deducing, especially when there is a great number of prior art documents from the same applicant. In view of this, in designing the comparative example, the applicant may use a product involved in his/her own earlier application as a comparative example.
The foregoing suggestions aim to help you overcome some difficulties relating to the parameter-defined product claims during the prosecution by improving the drafting of the patent application. Despite of the aforementioned, to draft the product claims and the specification often needs to consider the technology and the relevant legal terms in the connection of the technical field and the characteristics of the claimed product.
That’s all for today’s topic. Hope you find it helpful. I am Ya Gao, See you next time.
