Written by: Zhang Xiaoxia, Huang Wenjie, Intellectual Property Group, King & Wood Mallesons
In China, once a patent for invention or utility model has been granted, apart from the patent invalidation proceeding, the patentee does not have other opportunities to amend any claim of the patent on his own initiative. After the request for invalidation of the patent is filed, within one month after the patentee receives the request for invalidation and the evidence, the patentee is allowed to amend the claims of the patent at issue in response to the request for invalidation. However, manners of amendment allowed are strictly limited.
Article 33 of the Patent Law stipulates the basic principle of amendment during patent prosecution, that is, “the amendment to the application for a patent for invention or utility model should not go beyond the scope of the disclosure contained in the initial specification and claims”. Article 69 of the Implementation Regulations for the Patent Law stipulates the basic principle of amendment in the patent invalidation proceeding, that is, “in the patent invalidation proceeding, the patentee of a patent for invention or utility model may amend the claims, but shall not expand the scope of protection for the original patent”. These principled provisions are also stipulated in Section 4.6, Chapter 3, Part IV of the current effective Patent Examination Guidelines (2010), as follows:
(1) the title of the subject matter of a claim shall not be changed;
(2) the scope of protection shall not be expanded as compared with that of the granted patent;
(3) the amendment shall not go beyond the scope of disclosure contained in the initial specification and claims; and
(4) addition of technical features not included in the granted claims is generally not allowed.
These principled provisions have not been amended in the previous revisions to the Patent Examination Guidelines (2010).
I. Relevant provisions on manners of amendment stipulated in Patent Examination Guidelines
Subject to the above principles of amendments, the specific allowed manners of amendment have been revised. Order No. 74 issued by China National Intellectual Property Administration (hereinafter referred to as CNIPA) in 2017 revised the Patent Examination Guidelines (2010) (see the table below), added two allowed amendment manners of “further limitation of a claim” and “amendment of obvious errors” while retaining “deletion of a claim” and “deletion of a technical solution”. This revision is carried out under the strong desire of the patentee to have more flexible manners of post-grant amendment, which reflects the trend of restricting manners of amendment from very strict to relatively loose.
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Patent Examination Guidelines Effective on February 1, 2010 |
Patent Examination Guidelines Effective on April 1, 2017 |
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Chapter 3, Part IV 4.6.2 Manners of Amendment Subject to the above principles of amendments, the specific manners of amendment are generally limited to deletion of a claim, combination of claims, and deletion of a technical solution. Deletion of a claim means one (or more) claim, such as an independent claim or a dependent claim, is removed from the claims. Combination of claims means that two or more claims dependent on a same independent claim and having no relation of dependency are combined together. Under this circumstance, all the technical features of the combined dependent claims constitute a new claim. The new claim shall contain all the technical features of each of the dependent claims thus combined. The dependent claims subordinated to a same independent claim shall not be combined together unless the independent claim is amended. Deletion of a technical solution means to remove one or more technical solutions from several parallel technical solutions defined in the same claim. |
Chapter 3, Part IV 4.6.2 Manners of Amendment Subject to the above principles of amendments, the specific manners of amendment are generally limited to deletion of a claim, deletion of a technical solution, further limitation of a claim and amendment of obvious errors. Deletion of a claim means one (or more) claim, such as an independent claim or a dependent claim, is removed from the claims. Deletion of a technical solution means to remove one or more technical solutions from several parallel technical solutions defined in the same claim. Further limitation of a claim means to add one or more technical features recorded in other claims to a claim to narrow the scope of protection. |
In the practice of examination, CNIPA has very strict requirements for allowed manners of amendment, which are usually limited to the specific manners given in Section 4.6.2. Claim amendments that do not belong to the above defined manners are generally not accepted. However, in cases of examination/judicial practice, breakthroughs of the above-mentioned defined manners frequently occur, some of which are accepted and some are rejected. We research these cases and conclude which manners of amendment that break through the limitations of the Patent Examination Guidelines are acceptable in the patent invalidation proceeding based on issues reflected in these cases. And we hope these conclusions may provide guidelines for claim amendments in the patent invalidation proceeding and strategies for administrative litigation cases regarding patent invalidation.
II. Attempts to break through the limitations of the Patent Examination Guidelines
2.1 Cases where the claim amendment is not accepted
Case 1: Gao Xing Zhong Zi No. 1737 (2013)
The judgment was issued on December 13, 2016.
Manner of amendment: (Take claim 1 as an example)
| Original | Amended |
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1．A method for performing an inter-cell handoff in a mobile communications system, comprising the steps of: measuring in at least one candidate target base station signal strength and direction of arrival parameters from an uplink signal transmitted by a mobile terminal to a serving radio base station; reporting said measured signal strength and direction of arrival parameters to a network controller; said network controller determining whether to perform an inter-cell handoff, and based on said measured signal strength and direction of arrival parameters selecting a target base station from at least two candidate target base stations, said two candidate target base stations including said at least one candidate target base station, using said measured parameters; and ordering said selected target base station to complete said handoff of said mobile terminal. |
1．A method for performing an inter-cell handoff in a mobile communications system, comprising the steps of: measuring in at least two candidate target base station signal strength and direction of arrival parameters from an uplink signal transmitted by a mobile terminal to a serving radio base station; reporting said measured signal strength and direction of arrival parameters to a network controller; said network controller determining whether to perform an inter-cell handoff, and based on said measured signal strength and direction of arrival parameters selecting a target base station from at least two candidate target base stations, said two candidate target base stations including said at least one candidate target base station, using said measured parameters; and ordering said selected target base station to complete said handoff of said mobile terminal. |
Key points of the judgment:
The claim amendment shall not lead to substantive changes to the content of the technical solution
The protection scope of a claim is defined as a whole by all the contents recorded in the claim. Therefore, to determine whether the patentee’s claim amendment meet the above requirements stipulated by the Implementation Regulations for the Patent Law, it should also be based on the overall technical solution. The determination of whether the manner of amendment is legal shall not only be based on the protection scope of the claim, but also start with the purpose of legislation of the Patent Law, paying attention to whether the substantial content of the technical solution requested for protection is changed. If the protection scope of the amended claim has been narrowed, but the content of the technical solution has been substantially changed, such amended technical solution shall be regarded as a new technical solution different from that of the original claim, and such amendment made by the patentee shall not be accepted in the patent invalidation proceeding.
The second-instance court holds that from the perspective of wording, this amendment only limits the number of candidate target base stations in the technical solution, it does not seem to expand the protection scope of the original patent, and instead it narrows the protection scope of the original patent. However, the technical solutions of claims 1, 4 and 5 theoretically include a technical solution that achieves the purpose of the invention with only one candidate target base station, which is obviously different from the technical solution that achieves the purpose of the invention with at least two candidate target base stations, and the two technical solutions are essentially different in nature. Moreover, from the perspective of expression, claims 1, 4 and 5 do not belong to claims generalized by parallel options, there is no comparable technical solution that can be deleted without affecting the substantial content of the claims. Therefore, patentee’s amendments to claims 1, 4 and 5 do not meet the requirements of the Implementation Regulations for the Patent Law, it is not improper for the Patent Reexamination Board to examine the request for invalidation based on the granted claims.
Case 2: Jing Zhi Xing Chu Zi No. 2006 (2015)
The judgment was issued on May 27, 2016.
Manner of amendment:
| Original | Amended |
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1. A preparation method of an anti-fibrotic drug, pirfenidone, characterized in that a diazotization reaction is carried out in a 1%-30% inorganic acid medium, using 2-amino-5-methylpyridine (formula II) as a starting material; the 5-methyl-2(1H)pyridinone represented by the formula III is obtained by hydrolysis; the obtained formula (III) and the halogenated benzene compound represented by the formula (IV) undergoes a nucleophilic substitution reaction catalyzed by the cuprous iodide or cuprous chloride to form the target compound, pirfenidone (I), which is purified to obtain a pure product. 2. The preparation method according to claim 1, wherein the inorganic acid is sulfuric acid. 3. The preparation method according to claim 1, wherein the halogenated benzene compound is iodobenzene, bromobenzene or chlorobenzene. |
1. A preparation method of an anti-fibrotic drug, pirfenidone, characterized in that a diazotization reaction is carried out in a 1%-20% sulfuric acid medium, using 2-amino-5-methylpyridine (formula II) as a starting material; the 5-methyl-2(1H)pyridinone represented by the formula III is obtained by hydrolysis; the obtained formula (III) and the halogenated benzene compound represented by the formula (IV) undergoes a nucleophilic substitution reaction catalyzed by the cuprous iodide or cuprous chloride to form the target compound, pirfenidone (I), which is purified to obtain a pure product, wherein the halogenated benzene compound is iodobenzene, bromobenzene or chlorobenzene. |
Key points of the judgment:
For the amendment of the numerical range in the claim containing the technical feature of the numerical range, only when the two end values of the amended numerical range are actually recorded in the original specification and/or claims and the amended numerical range is within the original numerical range, such amendment is allowed.
In this case, Zhejiang Academy of Medical Sciences deleted claim 1 of the granted claims, combined claims 2 and 3, and amended the concentration of sulfuric acid in the diazotization step from “1%-30%” to “1%-20%”. However, the original specification and claims of the subject patent only disclose that “preferably sulfuric acid, the concentration of which is 1%-30%, and preferably 5%-10%”, “5% sulfuric acid 250ml” and “said acidic medium is an inorganic acid with a concentration ranging from 1% to 30%”, but the sulfuric acid concentration with an end value of 20% is not disclosed. Moreover, the concentration of sulfuric acid in the diazotization step ranging from 1% to 20% cannot be directly and unambiguously derived from the original specification, claims and drawings of the subject patent. Therefore, the claim amendment of the patentee did not comply with Article 33 of the Patent Law, it is not improper that the Patent Reexamination Board did not accept the amended claims of the patentee.
2.2 Cases where the claim amendment is accepted
Case 3: Zhi Xing Zi No. 17 (2011)
The ruling was issued on October 08, 2011.
Manner of amendment:
| Original | Amended |
| 1、A compound preparation, characterized in that the preparation is a pharmaceutical composition composed of amlodipine or physiologically acceptable salt of amlodipine and irbesartan in a weight ratio of 1:10-30. | 1、A compound preparation, characterized in that the preparation is a pharmaceutical composition composed of amlodipine or physiologically acceptable salt of amlodipine and irbesartan in a weight ratio of 1:30. |
Key points of the ruling:
Only because it does not meet the requirements of the manners of amendment, and thus not allow such amendment makes the restriction on amendment in this case purely a punishment for improper drafting of the claim, which lacks rationality. Besides, the Patent Examination Guidelines stipulate that subject to the above principles of amendments, the specific manners of amendment are generally limited to the aforementioned three manners, and other manners are not absolutely excluded.
In this case, although the technical solution of 1:10-30 in the original claim does not belong to typical parallel technical solutions, the specific ratio of 1:30 is clearly recorded in the original specification, and the ratio of 1:30 is the best dose ratio clearly recommended by the patentee in the original specification, the person skilled in the art will come to the conclusion that the patent contains the 1:30 technical solution after reading the original specification. Moreover, there is only one variable in the claim of the patent. This amendment makes the protection scope of this patent clearer and will not cause other adverse consequences such as the ambiguity of the protection scope that may be caused by the amendment in the case of several variables. Therefore, it’s fairer to allow this claim amendment.
Case 4: Patent invalidation case regarding the invention patent “Benzamide histone deacetylase inhibitor and its medicinal preparation with differentiation and anti-proliferation activity”
Decision No.: the invalidation decision No. 24591
The decision was issued on December 10, 2014.
Manner of amendment:
| Original | Amended |
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1、A benzamide histone deacetylase inhibitor with differentiation and anti-proliferation activity, characterized in that the general structural formula of the compound is as follows:
（I） Wherein, A is a benzene ring or a pyridine ring, the ring has no substituents or contains 1 to 4 substituents, and the substituents are halogen, an alkyl group with 1 to 4 carbon atoms or a trifluoromethyl group; B is a benzene ring; Z is a covalent bond; Y is -CO-NH-CH2-; R1 and R2 are hydrogen or an alkyl group of 1 to 4 carbon atoms respectively; R3 is hydrogen; R4 is an amino group; One of X1, X2, X3 and X4 is halogen or an alkyl group of 1 to 4 carbon atoms, and the rest are hydrogen. |
1、A benzamide histone deacetylase inhibitor with differentiation and anti-proliferation activity, characterized in that the structural formula of the compound is as follows:
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Key points of the decision:
Although the above-mentioned amendment of claim 1 made by the patentee does not belong to deletion of parallel technical solutions, the specific compound after the amendment is not only clearly recorded in the patent specification, but also belongs to the core invention of the patent. If the patentee is allowed to make the above-mentioned amendments, it can more fully reflect the legislative intention of the patent system to encourage invention and creation, and help the patent verification procedure to focus on the essence of the invention when determining the technical contribution of the patent. At the same time, in view of the fact that the amended specific compound has been disclosed as the core invention of the patent in the specification and is within its protection scope, allowing the above-mentioned amendment will not cause publicity problems. Therefore, the above-mentioned amendments do not violate the original intention of the Patent Examination Guidelines to restrict manners of amendment, and should be accepted as an exception.
Case 5: Jing Xing Zhong No. 4464 (2017)
The judgment was issued on November 30, 2017.
Manner of amendment:
| Original | Amended |
| 1. A high-directivity electric whistle of a locomotive sound-limiting system, characterized in that it comprises a power amplifier (1), a sound head (6), and a megaphone (3). The output end of the power amplifier (1) is connected to the sound head (6) equipped with the megaphone (3), the maximum overall dimension (2) of the outer face of the megaphone (3) is greater than or equal to 300 mm and less than or equal to 1500 mm. | 1. A high-directivity electric whistle of a locomotive sound-limiting system, characterized in that it comprises a power amplifier (1), a sound head (6), and a megaphone (3). The output end of the power amplifier (1) is connected to the sound head (6) equipped with the megaphone (3), the maximum overall dimension (2) of the outer face of the megaphone (3) is greater than or equal to 300 mm and less than 1500 mm. |
Key points of the judgment:
The Implementation Regulations for the Patent Law and the Patent Examination Guidelines restrict manners of amendment in the patent invalidation proceeding. The reasons are on the one hand, to maintain the stability of the scope of patent protection and ensure the publicity of patent claims, on the other hand, to prevent the patentee from incorporating the technical solutions which have not been discovered on the filing date, or at least cannot be reflected in the specification, into the claims of the subject patent by means of post-grant amendments, so as to obtain a prior filing date for a later invention.
In the case, the patentee deleted the end value of 1500 mm, which is clearly recorded in the original claims and specification. The amended numerical range is still within the numerical range of the original claims and specification, neither goes beyond the scope of disclosure contained in the initial specification and claims, nor expands the original protection scope. The above-mentioned amendment made by the patentee does not violate the relevant provisions of the Patent Law and the Implementation Regulations for the Patent Law, and also complies with the amendment principles of the Patent Examination Guidelines. In addition, the patentee’s request to delete the end value does not belong to the situation that the amendments are not allowed in Section 5.2.3.3, Chapter 8, Part II of the Patent Examination Guidelines. Therefore, the above-mentioned amendment does not go beyond the scope of the initial specification and claims.
Case 6: Jing Xing Zhong No. 485 (2016)
The judgment was issued on March 11, 2016.
Manner of amendment:
| Original | Amended |
| 3. The quick self-tapping locking screw for sheet metal thin plate according to claim 1, wherein the tail of the screw body is in the shape of a broken tip and the beam tail angle is 35°±5°. | 3. The quick self-tapping locking screw for sheet metal thin plate according to claim 1, wherein the tail of the screw body is in the shape of a broken tip and the beam tail angle is greater than or equal to 30° and less than 40°. |
Key points of the judgment:
The Implementation Regulations for the Patent Law and the Patent Examination Guidelines restrict manners of amendment in the patent invalidation proceeding in order to prevent the patentee from expanding the protection scope that has been made public by means of post-grant amendments.
In this case, the valid claims and specification of this patent clearly record the technical feature that “the tail of the screw body is in the shape of a broken tip and the beam tail angle is 35°±5°”, and the beam tail angle should include the value of “40°”. Compared with the valid claims and specification of this patent, the amended claim 3 only deletes the end value of “40°”. Thus, the numerical range of the amended claim 3 is still within the numerical range of the original claim. The amendment neither expands the original protection scope, nor form a new technical solution. Therefore, the patentee amended claim 3 as “the tail of the screw body is in the shape of a broken tip and the beam tail angle is greater than or equal to 30° and less than 40°”, which belongs to deletion of a technical solution. That is, the technical feature that “the tail of the screw body is in the shape of a broken tip and the beam tail angle is 40°” of the original claim is deleted, which neither goes beyond the scope of disclosure contained in the initial specification and claims, nor adds technical features not included in the valid claims. In conclusion, the above-mentioned amendment made by the patentee does not violate the relevant provisions of the Implementation Regulations for the Patent Law and the Patent Examination Guidelines.
Case 7: Zui Gao Fa Zhi Xing Zhong No. 19 (2019)
The judgment was issued on December 15, 2019.
Manner of amendment:
| Original | Amended |
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1. A method of brazing an article comprising stainless steel parts, comprising: (i) applying an iron-based brazing filler material to the parts to be brazed; (ii) optionally assembling the parts together; (iii) heating the assembled parts from step (i) or (ii) in a non-oxidising atmosphere, a reducing atmosphere, vacuum or combinations thereof, to at least 1000°C and leaving the parts at the temperature of at least 1000°C for at least 15 minutes; (iv) providing the brazed article brazed areas having an average hardness less than 600 HV1; and (v) optionally repeating one or more steps of step (i), step (ii) and step (iii). 2. A method according to claim 1, wherein joints, pores, cracks, gaps or crevices larger than 76µm are filled or sealed by the method. 20. A method according to claim 19, wherein the iron-based brazing filler material comprising at least 40 wt% Fe, 14-21 wt% Cr, 5-21 wt% Ni, 6-15 wt Si and 0.2-1.5 wt% B. |
1. A method of brazing an article comprising stainless steel parts, comprising: (i) applying an iron-based brazing filler material to the parts to be brazed, wherein the iron-based brazing filler material comprising at least 40 wt% Fe, 14-21 wt% Cr, 5-21 wt% Ni, 6-15 wt Si and 0.2-1.5 wt% B; (ii) optionally assembling the parts together; (iii) heating the assembled parts from step (i) or (ii) in a non-oxidising atmosphere, a reducing atmosphere, vacuum or combinations thereof, to at least 1000°C and leaving the parts at the temperature of at least 1000°C for at least 15 minutes; (iv) providing the brazed article brazed areas having an average hardness less than 600 HV1; and (v) optionally repeating one or more steps of step (i), step (ii) and step (iii), wherein joints, pores, cracks, gaps or crevices larger than 76µm are filled or sealed by the method. |
In particular, the invalidation decision in this case was issued on August 3, 2016. At that time, the allowed manners of amendment in the Patent Examination Guidelines were limited to “deletion of a claim” and “combination of claims”, but did not include “further limitation of a claim”. In the course of the administrative litigation of the case, the Patent Examination Guidelines were revised to allow further limitation of a claim from April 1, 2017. The second-instance judgment in this case was issued on December 15, 2019, and the second-instance court accepted the “further limitation of a claim” amendment made by the patentee during the patent invalidation proceeding.
Key points of the judgment:
Requirements for specific manners of amendment in the patent invalidation proceeding
The restrictions on the specific manners of amendment in the patent invalidation proceeding should focus on achieving the purpose of legislation of meeting the two legal standards that the amendment to the claims should not go beyond the scope of the disclosure contained in the initial specification and claims and that the scope of protection shall not be expanded, while taking into account the efficiency of administrative examination and fair protection of the contribution of patentees. It is inappropriate to set too strict restrictions on the specific manners of amendment, otherwise the restrictions on the manners of amendment will purely be a punishment for improper drafting of the claims.
Comparison standard of whether the claim amendment expands the protection scope of the original patent
In the patent invalidation proceeding, if the claim amendment is to add all or part of the additional technical features of the dependent claim to the independent claim cited, when determining whether the claim amendment expands the protection scope of the original patent, the protection scope of the independent claim of the original patent as the target of amendment shall be taken as the basis, rather than the protection scope of the dependent claim to which the additional technical features belong.
III. Summary and Observations
The Patent Examination Guidelines revised in 2017 added the manner of amendment “further limitation of a claim”, allowing the patentee to add one or more technical features recorded in other claims to a claim to narrow the scope of protection, which allows the patentee to amend the claims in a more flexible way, but in general it is still strictly restricted. In the practice of the examination of invalidation cases, the claim amendment is usually limited to the specific manners of amendment listed in the Patent Examination Guidelines.
However, as shown in the above cases, in a number of cases involving numerical ranges, when the claim amendments that break through the limitations of the Patent Examination Guidelines meet the two conditions of (1) the amendment shall not go beyond the scope of disclosure contained in the initial patent application; (2) the amendment shall not widen the scope of protection for the original patent, the claim amendments, such as deletion of an end value or further limitation of the numerical range within the scope defined by the original claims (the newly defined end value should be recorded in the embodiments), are accepted. Especially in the No. 24591 invalidation decision, CNIPA even accepted the manner of amending a Markush structure to a specific compound in the administrative procedure. Although this is only an individual case, it can be seen that CNIPA has made a favorable exploration in expanding the allowed manners of amendment and giving the patentee more room for claim amendment.
In addition, in the aforementioned Case 7, the Supreme People’s Court cited the 2017 revised version of the Patent Examination Guidelines and applied it to the administrative actions before the revision of the regulation of CNIPA. In other words, the court did not follow the “observing old laws” principle in the application of the Patent Examination Guidelines, but adopted the “observing favorable new laws” principle from the perspective of benefiting the patentee.
The aforementioned cases all illustrate that in the administrative procedure and the subsequent judicial review procedure, under certain circumstances, breaking through the regulation of CNIPA is possible. When the court interprets the Patent Examination Guidelines, sometimes it is not entirely limited to the specific manners of amendment listed in the Patent Examination Guidelines. Instead, it is based on the principled provisions for the claim amendment, which also adds other possibilities for the patentee to amend the claims in the invalidation proceeding. In individual cases, from the perspective of protecting the interests of inventors and promoting the innovation of the whole society, we may attempt some new breakthroughs to the manner of amendment, but we shall not damage the effectiveness of publicity of the original patent and not affect the public’s trust interests based on the granted claims.