During a patent examination procedure in China, rejections concerning a lack of novelty or inventive step often occur. To traverse these, the applicant often modifies independent claims by adding technical features or making a further definition when replying to examination rejections, so that the application involves an inventive step over the prior art.

In addition, when filing a divisional application, the applicant sometimes redrafts one or more sets of claims to cover the scope not covered by the parent application. Regardless of making modifications during an examination or redrafting claims for a divisional application, the amended and redrafted contents should not go beyond the scope of the original application, to comply with Article 33 of the Chinese Patent Law.

Due to the varying levels of technical understanding among examiners and different examination scales for amendments beyond the scope, the right of the patent might be unstable due to the problem of going beyond the scope. Furthermore, if independent claims are declared invalid because the amendments are beyond the scope of the original application, all the claims are eventually rendered invalid.

This article discusses how to avoid the problem of amendments going beyond the scope during an examination by considering practical cases.

The Chinese patent invalidation system

Modification beyond the scope is a reason for declaring a patent invalid. According to an analysis of China’s patent invalidation decisions in 2020 released by a media outlet that reports on intellectual property issues, among 283 invalidated invention patent cases, nine were due to amendments beyond the scope. In 2021, among 341 invalidated invention patent cases, 13 were due to amendments beyond the scope.

In addition, data from the past two years shows that the invalidity basis of modification beyond the scope is ranked after the reason of non-inventiveness. Therefore, if a patent has the risk of amendments beyond the scope, it is very likely to be invalidated.

The methods through which a claim can be amended during an invalidation procedure are generally limited to:

The deletion of claims;

The deletion of technical solutions;

The addition of one or more technical features described in other claims; and

The correction of obvious errors.

Therefore, during an invalidation procedure, there is no opportunity for the patentee to make amendments to, or delete, the technical feature considered beyond the scope, unless the technical feature belongs to one of the parallel technical solutions. As such, the problem of amendment beyond the scope has become a fatal weakness in patents.

Once amendments of independent claims are regarded as going beyond the scope, this may lead to the invalidation of all claims. Thus, the number of patents rendered invalid due to amendments beyond the scope is second only to the number of patents declared invalid due to the lack of an inventive step.

Regarding the legal basis for amendments beyond the scope, Article 33 of the Chinese Patent Law sets forth that applicants may amend their patent application documents, but amendments to invention and utility model patent application documents shall not go beyond the scope described in the original specification and claims, and amendments of design patent application documents shall not exceed the scope indicated by the original picture or photo.

Paragraph 1 of Article 43 of the Implementing Regulations of the Chinese Patent Law states that the original filing date may be retained for a divisional application, and the priority date may be retained if the divisional application claims the right of priority, but the claim shall not go beyond the scope described in the original application.

According to the provisions of Article 33 of the Chinese Patent Law and those of Article 43, Paragraph 1 of the Implementing Regulations of the Chinese Patent Law, for ordinary patent application documents and divisional application documents, the comparison basis for judging whether amendments of the application documents go beyond the scope is the original application documents.

Practical examples

The following is a brief analysis of the criteria for judging whether amendments of patent applications go beyond the scope, through considering several practical cases.

Case 1

The patent involved a divisional application, and the patentee was Matsushita Electric. The independent claims of the patent related to a radio terminal apparatus that selects, based on the measured reception power, one group among a plurality of groups that are respectively associated with different reception powers. The plurality of groups includes a plurality of codes for initial access when starting communication with the base station device, and a transmitting section that randomly selects a code from the plurality of codes included in the selected group, and performs a transmission to the base station apparatus for initial access using same.

For a divisional application, the comparison basis for judging whether amendments go beyond the scope is the application documents of the parent application.

The following description is given in the last paragraph on page 8 of the parent application: "… randomly selects a sub-channel for transmitting an access request signal from the selected sub-channel group". On page 9: "As the predetermined resource, there are, for example, timing, a spreading code, or a subcarrier of a multicarrier signal." On page 11 and in figures 6 and 7, it is conveyed that the resources that can be selected for this subchannel include a "spreading code", a "subcarrier" and an "OFDM [orthogonal frequency-division multiplexing] signal symbol".

Therefore, according to the original text of the parent application, as the sub-channel for transmitting the access request signal, it can be a spreading code, a sub-carrier and an OFDM signal symbol, and cannot be directly and undoubtedly determined as the plurality of codes, because the plurality of codes includes not only the above three forms, but also other forms of codes. Therefore, a technical solution featuring the plurality of codes goes beyond the scope described in the description.

According to the above analysis, the scope of protection of a technical solution with the plurality of codes feature is too broad. In fact, plurality of codes is a generalised concept of spreading code, a subcarrier and an OFDM signal symbol described in the original application text. That is, the plurality of codes feature belongs to the second generalisation of technical solutions involving the facets above, which cannot be directly and unambiguously determined in the application text of the parent application.

Therefore, the definition and limitation of the plurality of codes feature in the independent claims of the involved patent are beyond the scope described in the original application, and its dependent claims are also beyond the scope of the original application based on the reference relationship, thereby not complying with the provisions of Article 33 of the Patent Law. All claims of this involved patent were therefore declared invalid.

Case 2

The patent involved was also a divisional application. The parent case was the invention patent application ‘ink cartridge’ filed on May 18 1995, and the patentee was Seiko Epson. The independent claims of the involved patent were as follows.

An ink cartridge mounted on a carriage of an inkjet printing device includes a storage device, supported by the ink cartridge, storing information about the ink. Also, an ink cartridge mounted on a carriage of an inkjet printing device includes a memory device, supported by the ink cartridge, which stores information about the ink.

The parent application of the patent only describes the technical feature of a semiconductor storage device, but does not describe a storage device or a memory device. In the invalidation procedure, the panel believed that a storage device is a device used to store information and data, and can include various types, such as magnetic bubble storage devices and ferroelectric storage devices, in addition to semiconductor storage devices.

Therefore, ‘storage device’ does not definitely refer to the semiconductor storage device described in the original specification and claims, and the storage device cannot be directly and unambiguously determined by those skilled in the art from the semiconductor storage device described in the original specification and claims.

Similarly, the memory device cannot be directly and unambiguously determined from the semiconductor storage device described in the original specification and claims.

The amendments from a semiconductor storage device to a storage device or a memory device in the substantive examination procedure go beyond the scope of the original specification and claims.

Rulings

The court of first instance upheld the invalidation decision. The court of second instance believed that the use of the storage device did not exceed the scope of the original application documents, while the memory device exceeded the scope of the original application documents.

During the retrial, the Supreme People’s Court held that those skilled in the art could undoubtedly determine that a storage device in this patent is used in the sense of a semiconductor storage device by reading the original claims and description. That is, the storage device is actually a semiconductor storage device and does not form a new technical solution, and those skilled in the art will not understand it as a new technical solution. According to the specification, it can be judged that the storage device is an abbreviation of a semiconductor storage device.

Therefore, the Supreme People's Court held that the storage device does not exceed the scope described in the original application documents, and the new term ‘memory device’ is not specifically limited in the patent specification, and the technical content it refers to cannot be determined in the original application documents.

In the revised granted text, the content of the memory device is neither the content clearly expressed in the original application documents nor the content that can be directly and clearly deduced by those of ordinary skill in the art after reading the original application documents by comprehensively understanding the original specification, drawings and claims. Therefore, the memory device modification is beyond the scope of the original application documents.

After analysing the invalidation conclusion of this case, it is clear that the scope of protection of the storage device defined in the patent is broad and belongs to the second generalisation of semiconductor storage devices, since it can include magnetic bubble storage, ferroelectric storage device, etc., in addition to semiconductor storage devices. According to the relevant provisions of the Chinese Patent Law, this modification is beyond the scope of the original application documents.

However, the Supreme People's Court concluded that the modification of the storage device did not go beyond the scope because the original application document stated that "a semiconductor storage device and an electrical device connected to the storage device are installed on an ink cartridge board". Therefore, it can be directly and clearly determined that the storage device in the claims refers exclusively to semiconductor storage devices, and will not be understood as storage devices such as magnetic bubble storage devices and ferroelectric storage devices.

The final judgment also limited the scope of the claims to semiconductor storage devices. With regard to the modification of a memory device, since a memory device is essentially a modification of a storage device, it is neither the content clearly expressed in the original application document nor can it be directly and clearly deduced by those of ordinary skill in the art after reading the original application document. Therefore, it is deemed to go beyond the scope.

Analysis of the cases

After reviewing the family patents of the above-mentioned patents, it was found that the patents granted in Japan, the US and Europe used similarly expressed technical features in the independent claims, but none were deemed to go beyond the scope.

The possible reasons for the invalidation of the above-mentioned patents are as follows.

Firstly, foreign applicants generally hope that the scope of protection of patents granted in various countries is as similar as possible, and thus might amend Chinese patent applications based on foreign allowed claims when responding to an office action and filing divisional applications. However, the Chinese Patent Law has stricter requirements for amendments beyond the scope than other foreign patent laws.

During the examination process, though, the examiner may judge that the amendments do not go beyond the scope of the original application documents, which creates an issue for the subsequent invalidation procedure.

Secondly, foreign applicants (patentees) may, in accordance with the provisions of the local patent law, determine the standard for judging whether the amendments go beyond the scope in the Chinese Patent Law as the scope of disclosure rather than the described scope.

The scope of disclosure and the described scope are obviously different, and are defined in different patent laws. The scope of disclosure is defined in Article 26.4 of the Patent Law and the related provisions in the Guidelines for Examination. "The claims shall be based on the description,” the guidelines state. “The technical solution for which protection is sought in each of the claims shall be a solution that a person skilled in the art can reach directly or by generalisation from the contents sufficiently disclosed in the description, and shall not go beyond the scope of the contents disclosed in the description.”

The scope is defined in Article 33 of the Patent Law and the related provisions in the Guidelines for Examination. “The applicant may make amendment to his patent application for [a] utility model in accordance with Article 33,” the guidelines read. “However, the amendment to the patent application documents for [a] utility model shall not go beyond the scope of the disclosure as shown in the initial description and claims.” The scope shown in the initial description and claims includes the contents described in the initial description and claims, and the contents determined directly and unambiguously according to the contents described in the initial description and claims, and the drawings of the description.

Hence, the scope of disclosure includes:

The written description of the application document;

Directly and unambiguously determined content; and

Predictive modification.

The described scope includes:

The written description of the application document; and

Directly and unambiguously determined content.

It is possible to generalise the technical solutions of the claims according to the scope of disclosure when the application is first filed. However, after the filing, it is necessary to modify the application documents according to the described scope, and the application documents cannot be modified according to the scope of disclosure. That is, the technical contents of the application documents are not allowed to be secondly generalised, and the modified contents cannot cover predictively modified examples derived from the contents disclosed in the application documents.

Looking ahead

Therefore, the author recommends the following regarding the modification of application documents and the redrafting of claims for divisional applications during an examination procedure:

When responding to a rejection based on amendments beyond the scope, the applicant should consider whether the content of the amendment can be directly, unambiguously, and uniquely derived from the original application documents according to the examiner’s opinions, rather than blindly thinking about how to persuade the examiner by means of argument; thus preventing instability in the patent right due to the problem of amendments being declared beyond the scope at a later stage; and

Amendments to claims should be made by using the literal description in the original application documents as much as possible.