When determining the rules governing the amendment to patent application files, as basic preconditions, the differentiation should be made between: 1. the patent files and the patent application files; 2. the claims and the specifications; and 3. the active amendment and the passive amendment. This is very important for determining the amendment rules.
The recent years have witnessed more administrative disputes in patent granting and validation due to changes to patent application files. The disputes are often found to be on how to understand and apply Article 33 of the Patent Law, i.e. any change to the application file shall not “exceed the scope specified in the original written descriptions and claims”. This has led to in-depth studies in both the academic and the judicial fields in intellectual property law. As far as this author can see it, to varying degrees, the current research results have missed a few basic preconditions, when determining the rules governing the amendment to patent application files. Thus, the author provides the following three basic preconditions that should be noticed when setting out the amendment rules.
I. Distinguishing Between Patent Application Files and Patent Files
(1) What Can Be Amended under Article 33 of the Patent Law
Article 33 of the Patent Law of 1992 provides that “an applicant may amend his patent application file, but the amendment for an invention or utility model patent shall not go beyond the scope of disclosure contained in the original specifications and claims”. The provision was succeeded by the Patent Law of 2000 and the Patent Law of 2008.
As stated in Article 33, the patent application files may be changed. Then, what are patent application files? The answer can be found in Articles 26 and 28 of the Patent Law. Article 28 provides that “the date when the patent administration department under the State Council receives the patent application documents is the date of application”. Article 26 provides that “when a person intends to apply for an invention or utility model patent, he shall submit the relevant documents, such as a written request, a written description and its abstract, and a written claim”. Considering the above, the “patent application files” in Article 28 shall mean “a written request, a written description and its abstract, and a written claim” in Article 26. In judicial practice, there have been few cases where any amendment to the written request or the abstract of the specifications goes beyond the scope recorded in the original specifications or claims. Instead, mostly the dispute involves the amendment to the specifications or claims.
(2) Who May Amend the Patent Application Files under Article 33 of the Patent Law
Article 33 of the Patent Law specifies that the amendment should be done by the patent applicant. It should be noted that the patent applicant and the patent proprietor are different concepts from each other. Before the patent is granted and published, the specifications and claims are patent application files. After the granting and publication, the specifications and claims become patent files. In addition, after the granting and publication, the patent applicant becomes the patent proprietor. Accordingly, the patent applicant is relevant to patent application files, and the patent proprietor is relevant to patent files. Article 33 governs only the amendment by the patent applicant to his patent application files, and should not be applied to the amendment by the patent proprietor to his patent files. The amendment by the patent proprietor to his patent files should be governed by the relevant rules in the Implementing Regulations of the Patent Law. Article 69 of the Implementing Regulations of the Patent Law of 2010 contains rules on how the patent proprietor may amend his patent files. Article 69, Paragraph 1 provides that “in the course of the examination of the invalidation request, the patentee for the invention or utility model patent may amend its or his claims, but may not broaden the original scope of patent protection”. As the amendment to the patent file should not enlarge the protective scope of the original patent, and as the amendment to or establishment of the protective scope of the original patent should not go beyond the original specifications and claims, implicitly it means that the amendment to the patent files must also comply with Article 33 of the Patent Law.
Moreover, it should be noted that the rules for the amendment to patent application files are different from the rules for the amendment to patent files. The European Patent Office (EPO) believes that the rules for the amendment to patent application files and the rules for the amendment to patent files should be separately determined, depending on the procedure in which the patent application or the patent is located. Moreover, the EPO goes on to separately set out the rules for the amendment to patent application files and those for the amendment to patent files in Chapter IV, Section H in the Patent Examination Guidelines of 2013. The concept of separate amendment rules for different procedures reflects how the patent application file is different from the patent file, and how the difference between before and after the granting affects the amendment rules.
II. Distinguishing Between Specifications and Claims
(1) Do They Have the Same Legal Status
When determining the amendment rules for patent application files, the distinction should also be made between the specifications and the claims. This is because the specifications and the claims are different from each other in legal status and should be governed by different amendment rules. The difference can be in a number of aspects, two of which are essential to the amendment rules.
a. Their missions are different. The mission of the specifications is to describe the invention in a clear and complete manner. The mission of the claims is to define the protective scope of the patent right. In the United States, when explaining the concept of “claim”, an analogy is often used - for an invention, a claim is like a contract on a real estate or land; the contract describes and defines the plot with reaches, but does not say anything about what are in the plot, such as, the levelness, any slope, any vegetation, or any existing structure or river flowing through it. According to Judge Giles Rich, in patent litigations, the claims are studied in order to find out whether the patent proprietor has the right to exclude the defendant from doing what the defendant does, regardless of whatever the inventor has invented. The study decides the scope of the exclusive rights of the patent proprietor. Therefore, “we cannot say that the invention is defined by claims.”
b. Their contents are different. The specifications provide far more technical information than the claims do to the people skilled in the art. It may happen that the former contain much technical information, while the latter request protection only for a small part of it. The invention as described in the specifications may be away from the technical scheme that the claims request protecting. To put it simple, the technical contributions of the inventor may not be entirely incorporated into the claims, and the technical scheme in the claims may not cover all the technical contributions of the inventor.
(2) Do They Have the Same Legal Effect
Because of the difference hereinabove, the legal effect from the amendment of the specifications is not always the same as that from the amendment of the claims. If during the examination process and before the patent is granted, the patent applicant amends his specifications so that it goes beyond the scope recorded in the original specifications and claims, but he does not amend the claims or his amendment to the claims is still within the scope recorded in the original specifications and claims, then will such amendments necessarily lead to the invalidation of the patent? As far as the author can see it, the legislative authority may prescribe that when the amendment to the specifications goes beyond the scope recorded in the original specifications and claims, as long as the claims are still within the scope recorded in the original specifications and claims, then the patent may not be invalided solely on account of the undue amendment to the specifications. This is because under a rational governing system, such excessive amendment will not necessarily lead to an unjust benefit to the patent applicant. Instead, under a rational system, in determining the validity of a patent, any amendment beyond the original specification should be excluded, so that the patent applicant cannot be unfairly enriched from the amendment. In other words, in determining the sufficiency of disclosure in the specifications or the support to the claims and the inventiveness of the technical scheme, any excessive amendment to the specifications should be excluded so that they cannot be used to support the validity of the patent. During the examination process, before the patent is granted, in case of any excessive amendment to the claims beyond the original specifications or claims or any additional technical content to the original specifications or claims, as long as it enlarges the patented scope to cover the unpatentable elements, such amendment violates Article 33 of the Patent Law and should lead to the invalidation of the claims.
According to the target areas, the amendment to patent application files can be divided into the amendment to the specifications before granting and the amendment to the claims before granting. The amendment rules should be determined on a case-by-case basis, subject to the target areas. The Patent Examination Guidelines of 2010 fails to give sufficient attention to the target areas. It provides for the amendment rules for patent application files in three parts of it, namely, Part I, Chapter 1 “Amendment of Obvious Substantial Defects”; Part I, Chapter 2 “Amendment of Utility Model during Preliminary Examination”; and Part II, Chapter 8 “Amendment of Inventions during Substantive Examination”. The first two sections intentionally differentiate between the amendment to the claims and the amendment to the specifications. However, in the “Amendment of Inventions during Substantive Examination”, there are certain provisions that fail to clearly distinguish between the two types of amendment. It should be always noted that as two totally different target areas, the specifications and the claims should be governed by totally different amendment rules. To make it more operable, the future revision of the Patent Examination Guidelines should differentiate between the two areas. In patent examination or adjudication, the examiner or the judge must note the different amendment requirements between the specifications and the claims. The two must not be confused and mixed together. In the United States, in In re Rasmussen in 1981, the CCPA expressly stated that the amendment to the claims should be governed by Section 112 (a) instead of Section 132 of the Patent Act, as the latter is only applicable to the amendment to the specifications or their abstract and exhibits.
III. Distinguishing Between Active Amendment and Passive Amendment
(1) Why Is the Division
In determining the amendment rules for patent application files, the distinction should be made between the active amendment and the passive amendment. The division is made because the active amendment and the passive amendment cover different areas. An active amendment should be allowed, as long as it complies with Article 33 of the Patent Law. A passive amendment, in reply to the examination opinion, for example, is subject to certain restrictions. Why does the Patent Examination Guidelines contain these restrictions? This is because: a. the active amendment has sufficiently allowed the patent applicant to make necessary amendments; b. if no restriction is imposed on the passive amendment and if in reply to the examination opinion, the amendment is made to the part that the examiner does not mention or if the amendment does not comply with the requirement so that the examiner will have to point out the defect, then the examination process will be unduly prolonged; c. the rules that the examination authority sets out regarding the examination process should be respected, unless they violate the law or are obviously irrational. Therefore, the patent applicant should comply with the amendment-related requirements prescribed in the Patent Examination Guidelines, unless such requirements are obviously unreasonable.
(2) How Do They Influence the Amendment Rules
The active amendment and the passive amendment will influence the amendment rules mostly in the following ways:
First, be it a utility model or an invention, any active amendment that complies with Article 33 of the Patent Law and other relevant laws and regulations should be allowed. It should be noted, however, that the timings for active amendment of utility models and inventions are different. According to Part I, Chapter 2, Section 8.1 of the Patent Examination Guidelines of 2010, any amendment of utility models should be done generally within two months as of the filing date. According to Article 51, Paragraph 2 of the Implementing Regulations of the Patent Law, an applicant for a utility model patent may offer to amend his application within two months as of the filing date. According to Part II, Chapter 8, Section 5.2.1.2 of the Patent Examination Guidelines of 2010, any amendment to an invention should generally be done within three months as of the filing for substantive examination or the beginning of the substantive examination.
Second, it should be noted that a passive amendment will be subject to Article 33 of the Patent Law and other regulations and rules, as well as other requirements. The restrictions over passive amendment are different in the preliminary examination process of utility model patents from in the substantive examination process of invention patents. According to Part I, Chapter 2, Section 8.2 of the Patent Examination Guidelines of 2010, in the preliminary examination process for utility models, the passive amendment may be done to remove any defect in the original application files and to change the patent application files in any other respect. Such amendment is acceptable as long as it removes the defect notified by the examiner and complies with Article 33 of the Patent Law. In the substantive examination process for inventions, except the amendment that removes the defect in the original application files, any other changes may not be permitted, even if such changes comply with Article 33 of the Patent Law. According to, Part II, Chapter 8, Section 5.2.1.3 of the Patent Examination Guidelines of 2010, if it is within the scope recorded in the original specifications and claims, the passive amendment in reply to the examination opinion may not be allowed in five circumstances, including the amendment to enlarge the protective scope of the claims or to add more independent or dependent rights.
IV. Summary
From the analyses, when determining the rules for the amendment to patent application files, as basic preconditions, the distinction should be made between: 1. The patent files and the patent application files. The properties and characteristics of the patent application files should be accurately understood; 2. The claims and the specifications. Different amendment rules should be set out according to the different roles and legal status of specifications and claims; 3. The active amendment and the passive amendment. Different amendment rules should be set out according to different timings of the amendment.
(Translated by Ren Qingtao)
