1. An amendment by abandonment usually refers to amending claims by introducing negative technical features to exclude specific protection objects from the protection scope of initial claims, so as to narrow the protection scope of initial claims. Usually it is only applicable under limited specific circumstances, such as when the patent application lacks novelty because it partially overlaps with a conflicting application, or the patent application lacks novelty because of unexpected prior art, or a subject matter that is not protected under the Patent Law for non-technical reasons needs to be excluded.
2. Any amendment by abandonment shall conform to provisions of Article 33 of the Patent Law. For making a judgment, contents disclosed in the initial claims and description, contents for which protection is abandoned, contents retained after amendments by abandonment, and the relations between the three kinds of contents shall be comprehensively considered. If a person skilled in the art can confirm that the contents retained after amendments have been explicitly or implicitly disclosed in the initial claims or description, such amendments conform to the provisions of Article 33 of the Patent Law.
Switzerland A Company is the applicant of the invention patent application involved in the case.
The CNIPA made a reexamination decision to uphold the initial Decision of Rejection, on the grounds that Switzerland A Company’s amendments to claims belong to amendments by abandonment and that the amended claims do not have inventiveness and thus do not conform to the provisions of Article 33 of the Patent Law. Dissatisfied with the decision, Switzerland A Company filed a lawsuit with the first-instance court requesting to revoke the challenged reexamination decision.
The first-instance court made a judgment on August 26, 2020, and ruled to dismiss the lawsuit of Switzerland A Company.
Switzerland A Company dissatisfied and appealed. The Supreme People’s Court made an administrative judgment to revoke the first-instance judgment and the challenged reexamination decision made by the CNIPA and to order the CNIPA to re-make a decision on the reexamination request filed by Switzerland A Company for the invention patent application involved in the case.
The court’s effective judgment deemed that:
First, about the requirements for amendments of patent application documents, Article 33 of the Patent Law stipulates that 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.
The scope of disclosure contained in the initial description and claims should include the following contents: 1) the contents explicitly expressed in the form of text or device in the initial description and its drawings and claims; and 2) contents that can be determined directly and explicitly by a person of ordinary skill in the art through summarizing the initial description and its drawings and claims.
Compared to the aforesaid contents, if new technical contents are introduced into the patent application document after amendments, it should be deemed that the amendments to the patent application document go beyond the scope of disclosure recorded in the initial description and claims, which is not allowed.
The second aspect is the connotation of and requirements for amendment by abandonment. The so-called amendment by abandonment generally refers to amending claims by introducing negative technical features to exclude the specific protection object from the protection scope of the initial claims to narrow the protection scope of the initial claims.
Contents excluded from protection through amendments by abandonment may not have been disclosed in the initial description and claims explicitly or implicitly. Therefore, such amendments may introduce new technical contents, violating the provisions that “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” stipulated by Article 33 of the Patent Law. However, if the protection object that is retained after the amendments have been explicitly or implicitly disclosed in the initial description and claims, such amendments may be approved considering the fair protection of the patentee’s interests.
Therefore, amendments by abandonment should be examined strictly and usually are only applicable to limited specific circumstances, such as where the patent application lacks novelty because it partially overlaps with a conflicting application, or the patent application lacks novelty, or a subject matter that is not protected under the Patent Law for non-technical reasons needs to be excluded. In addition to meeting the aforesaid requirements on formality and specific circumstances, amendments by abandonment shall also conform to provisions of Article 33 of the Patent Law. Therefore, as to whether such amendments should be accepted, the contents disclosed in the initial description and claims, contents for which the protection is abandoned, and contents retained after the amendments by abandonment, as well as their relations, should be comprehensively considered.
In the event that the aforesaid requirements on formality and specific circumstances are met, if after comprehensively considering the aforesaid factors, a person skilled in the art may confirm that the content retained after amendments has been explicitly or implicitly disclosed in the initial description and claims, then the amendments do not violate provisions of Article 33 of the Patent Law and should be accepted.
Third, the logic of examination on amendments by abandonment in the challenged decision is worth discussing. The challenged decision deemed that if because the contents disclosed in reference documents affected the inventiveness of the invention, specific “abandonment” is adopted to exclude features disclosed in the reference documents from the initial protection scope so as to make the protection scope of the claimed technical solution as a whole evidently not include this part, since such amendments exceed the scope disclosed in the initial description and claims, such amendments cannot be approved provided that the contents disclosed in the initial application cannot prove that the invention is inventive based on the content after the “abandonment” amendment.
Thus, the examination logic in the challenged decision is to first determine that the amendments by abandonment exceed the scope of the initial description and claims, and then to determine if such amendments can be accepted based on whether they can make the patent application have novelty or inventiveness. If such amendments could make the patent application have novelty or inventiveness, they can be accepted; otherwise, they cannot be accepted. This logic seems not self-consistent. If the amendments by abandonment are deemed to exceed the scope of the initial description and claims, they shall not be accepted. Even if such amendments make the patent application have novelty and inventiveness, their defect of exceeding the initial scope cannot be made up.
Therefore, in the challenged decision, it should be first decided whether the amendments by abandonment go beyond the initial scope and whether they should be accepted. After the amendments are deemed not beyond the scope and should be accepted, the amended claims can be examined as to whether they have novelty and inventiveness. But it shouldn’t go the other way around.
The fourth aspect is whether the amendments made by Switzerland A Company belong to amendments by abandonment and should be accepted. In this case, Switzerland A Company amended claim 1 in the reexamination procedure to further limit that “the first mixture does not comprise copper oxide powder”, which is not an exclusion of specific protection object from claim 1, but is a further limitation on the overall technical solution of claim 1, so it does not conform to the formality requirements for amendments by abandonment.
At the same time, such an amendment is not made to overcome the patent application’s lack of novelty because of its partial overlap with a conflicting application or because of unexpected prior art, or to exclude a subject matter that is not protected under the Patent Law for non-technical reasons, so the amendment does not meet the requirements on specific circumstances for amendments by abandonment. The challenged decision shouldn’t have accepted and commented on the claims with the so-called “amendments by abandonment” filed by Switzerland A Company, but should have examined the text based on which the Decision of Rejection was made.
(2021) Zui Gao Fa Zhi Xing Zhong No. 44
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