1. In the patent confirmation procedure, the examination on whether the amendment of a claim belongs to "further limitation" should only be based on whether the amended claim completely contains all the technical features of the initial claim, whether any technical feature is added into the amended claim compared to the initial claim, and whether the added technical features are all recorded in other initial claims.
2. In the patent confirmation procedure, the “further limitation” amendment of a claim should generally be limited to responding to the grounds for invalidation. It may not be accepted if the claim is actually reconstructed under the name of overcoming defects indicated in the grounds for invalidation.
Beijing A Company is the patentee of the patent involved in the case. On October 8, 2018, Shanghai B Company, Nanjing branch of Shanghai C Company (hereinafter referred to as Nanjing branch), and Shanghai C Company respectively filed invalidation requests against this patent of Beijing A Company. On May 9, 2019, Beijing A Company submitted amended claims of this patent. Then, the CNIPA made three invalidation decisions respectively in May and June 2019, holding that the amended claims 1 to 3, 5 and 6, as well as the technical solutions of claims 8 to 10 which cited claims 1 and 5 of this patent (i.e., the relevant amended claims) complied with Paragraph 1 of Rule 69 the Implementing Regulations of the Patent Law of the People's Republic of China (hereinafter referred to as the Implementing Regulations of the Patent Law) and the relevant provisions of Section 4.6 of Chapter 3 of Part IV of the Patent Examination Guidelines, but the amended claims 4, 7, 11, 12 and the technical solutions of claims 8-10 that cited claims 4 and 7 did not comply with the above provisions. Therefore, based on the examination of claims 1-3, 5, 6, and the technical solutions of claims 8-10 that cited claims 1 and 5 submitted by Beijing A Company on May 9, 2019, the decisions in question held that the above-mentioned accepted claims did not have inventiveness, and declared the whole patent invalid. Beijing A Company was dissatisfied and filed lawsuits with the first-instance court, requesting the revocation of the decisions in question and the order for the CNIPA to make decisions anew.
The first-instance Court respectively made three administrative judgements on December 30, 2020, to dismiss the lawsuits filed by Beijing A Company. Beijing A Company appealed, and the Supreme People's Court made three administrative rulings on December 12, 2023, respectively to revoke the first-instance judgments, revoke the challenged decisions which declared the amended claim 4, claim 7, and the technical solutions of claims 8 to 10 that cited claims 4 and 7 invalid, and order the CNIPA to re-make examination decisions on the invalidation requests filed by Shanghai B Company, Nanjing Branch, and Shanghai C Company against the abovementioned claims.
The Court’s effective rulings held that the examination on whether the amended claims 4, 7, 11, and 12 and technical solutions of claims 8-10 that cited claims 4 and 7 should be accepted shall be conducted pursuant to the provisions of the Patent Law and its Implementation Regulations and taking into consideration the detailed guides of Patent Examination Guidelines.
Allowing patentees to amend claims in the patent confirmation procedure is favorable for substantively motivating the protection of innovation and can effectively prevent invention-creations with technical contributions from not being protected simply because of improper claim drafting. However, since the patent has been granted and the relevant legal order has been stable at this time, to avoid serious damage to the public trust interests and continuous fluctuations in the stability of legal orders, it is also necessary to restrict the amendments. Therefore, as for claim amendments in the patent confirmation procedure, the institutional goals are to substantially motivate the protection of innovation and to protect the legitimate interests of patentees, while the institutional costs are the maintenance of the stability of legal orders, prevention of the loss of public trust interests, and the guarantee of the operability and efficiency of administrative examination. The restrictions on claim amendments fundamentally should be for achieving the institutional goals, based on which the institutional costs are controlled as much as possible. Therefore, the claim amendments in the patent confirmation procedure should not be too lenient to seriously damage the trust interests or cause the legal order to continuously fluctuate; nor should it be too rigid and strict, otherwise it is not worth the loss if the institutional effect is greatly reduced or even the institutional goals are impossible to achieve due to the overly strict amendment restrictions for controlling institutional costs.
The legal system relating to the acceptance of claim amendments in the patent confirmation procedure is mainly composed of Article 33 of the Patent Law and Paragraph 1 of Rule 69 of the Implementing Regulations of the Patent Law. At the same time, the Patent Examination Guidelines also provide specific operational guidance. Whether a claim amendment should be accepted at least involves the following aspects:
The first aspect is the requirements for amendment extent. The maximum scope of claim amendments in the patent confirmation procedure shall not exceed the "information scope" stipulated in Article 33 of the Patent Law and the "protection scope" stipulated in Paragraph 1 of Rule 69 of the Implementing Regulations of the Patent Law. Article 33 of the Patent Law stipulates: "An applicant may amend his or its application for a patent, but the amendment to the application for a patent for invention or utility model may not go beyond the scope of disclosure contained in the initial description and claims, and the amendment to the application for a patent for design may not go beyond the scope of the disclosure as shown in the initial drawings or photographs." Accordingly, in the procedures for patent granting, amendments of claims shall not exceed the full information scope of the invention-creation disclosed in the initial description and claims. Following the principle of argumentum a minore ad maius, claim amendments in the patent confirmation procedure also shall not exceed the “information scope”. Paragraph 1 of Rule 69 of the Implementing Rules of the Patent Law stipulates: "In the course of the examination of the request for invalidation, the patentee for the patent for invention or utility model concerned may amend its or his claims, but shall not broaden the protection scope of the initial patent." Accordingly, claim amendments in the patent confirmation procedure shall not exceed the protection scope of the initial patent. Defining the statutory limits of claim amendments in the patent confirmation procedure from the dimensions of "information scope" and "protection scope" is not only conducive to maintaining the basic institutional logic of the Patent Law, which is to exchange disclosure for protection, but also conducive to balancing the interests of technical contributors in obtaining patent granting and the public's trust in the granted patent text.
The second aspect is the requirements for amendment manners. The said “information scope” and “protection scope” are the statutory maximum extent of claim amendments in the patent confirmation procedure, but not all amendments not exceeding the “information scope” and “protection scope” are acceptable. As to whether the amendments can be accepted, the stability of legal orders, the loss of public trust interests, and the operability and efficiency of administrative examination should also be considered. Therefore, the CNIPA may specify and properly limit the manners of claim amendments in the Patent Examination Guidelines. The claim amendment manners allowed in the patent confirmation procedure indicated in the currently effective Patent Examination Guidelines are generally limited to deletion of claims, deletion of technical solutions, further limitation of claims, and correction of obvious errors. Compared to deletion of claims, deletion of technical solutions, and correction of obvious errors, further limitation of claims leaves patentees with possibilities to make relatively loose and flexible amendments. In the Patent Examination Guidelines the “further limitation” amendment is defined as “adding into a claim one or more technical features recorded in other claims, to narrow the protection scope”. Thus, in deciding whether a claim amendment is a “further limitation” amendment, the CNIPA only needs to examine: 1) whether the amended claim completely contains all technical features of the initial claim, 2) whether the amended claim incorporates new technical features compared to the initial claim, and 3) whether the newly added technical features are all from other initial claims. If the amended claim does not completely contain any initial claim or the newly added technical features of the amended claim compared with the initial claim are not from other initial claims, such an amendment may be “rewriting” or “secondary generalization” of the claim, but not a “further limitation”.
The third aspect is the requirements for amendment purposes. The patent confirmation procedure is a procedure to examine the legitimacy of patent grant of claims based on the grounds for invalidation filed by others after the grant. It is neither a comprehensive review procedure of the legitimacy of the grant, nor a procedure for optimizing the claims drafting. Therefore, claim amendments in the patent confirmation procedure usually should be limited to responding to the grounds for invalidation, including the invalidation grounds or supplementary evidence filed by the petitioner and the invalidation grounds or evidence that are not mentioned by the invalidation petitioner but introduced by the CNIPA. The amendments that actually optimize the claims drafting under the name of overcoming the defects indicated by the invalidation grounds are not responsive amendments and may not be accepted as they do not conform to the institutional positioning of the patent confirmation procedure. Otherwise, it is not hard to imagine that once non-responsive amendments can be accepted, the patent confirmation procedure will inevitably become the tool for obtaining additional opportunities to optimize claims drafting after patent granting. This not only hinders the improvement of drafting quality at the very beginning of drafting and granting, but also undermines the true function of invalidation request procedures. Furthermore, this may lead to an imbalance in public interests, including those of the interested parties, after patent granting. Therefore, non-responsive amendments may not be accepted even if they do not go beyond the said “information scope” and “protection scope” and belong to the amendment manners allowed by the Patent Examination Guidelines. For example, where a claim amendment lacks the corresponding invalidation requests and grounds, it may be directly rejected, with no need to examine its amendment scope and manner. Another example is that where in the same administrative examination procedure, a claim has been amended in response to the invalidation grounds against it, and the amended claim has been accepted, then additional amendments to this claim and corresponding new claims obtained thereby may not be accepted since they usually lack an object to respond to.
It’s worth mentioning that in the patent confirmation procedure, the initial claims are naturally the examination basis, and do not constitute evaluative subjects for the statutory or other restrictions on claim amendments. Therefore, when determining the examination basis, it should be first clarified whether the relevant claims are initial claims or new claims formed after amendment. Substantive examination should be conducted on whether the claims are amended, taking whether the protection scope of the claims before and after the amendment is substantively changed as the fundamental basis. Generally speaking, simple drafting adjustments that do not substantively affect the protection scope, such as changes in serial numbers of claims, straightforward format conversions between dependent claims and independent claims, mere splitting of claims that contain parallel technical solutions, etc., do not constitute claim amendments.
In this case, the amended claims 4 and 7 are both the initial claims of this patent, but not new claims formed after amendment. Thus, they are naturally the examination basis, and do not have the issue of being unacceptable due to so-called amendments. The challenged decisions lack factual basis as they didn’t accept the amended claims 4 and 7 and excluded them from the examination basis. Besides, the challenged decisions also lack accordance as they deemed that technical solutions of claims 8 to 10 that cited claims 4 and 7 shouldn’t be accepted because the amended claims 4 and 7 shouldn’t be accepted. In the challenged decisions, the grounds for not accepting the amended claim 4 is that the initial claim 1 no longer exists because after “further limitation” amendments, it becomes a new claim with more technical features and a narrowed protection scope, so the amended claim 4 is not accepted. The reason for not accepting the amended claims 11 and 12 is the same. Therefore, it can be deduced that the reason for the challenged decisions not accepting claim 11 is that: after further limitation amendments, the initial claim 15 becomes the amended claim 8; as the initial independent claim 15 no longer exists, there is no basis to make further limitations on it and then form the amended claim 11. The amended claim 12 as a dependent claim of claim 11 shall not be accepted either. According to the above-mentioned examination principle that claim amendments in the patent confirmation procedure shall be responsive to invalidation grounds, there is nothing inappropriate about the handling of the amended claims 11 and 12 in the challenged decisions.
(2021) Zui Gao Fa Zhi Xing Zhong Nos. 556, 581, and 738
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