4.7.10 Claims shall be supported by the description
Article 26 paragraph 4 of the Patent Law stipulates the following: “The claims shall be based on the description, and clearly and concisely define the scope of protection conferred by the patent.”
4.7.10.1 Relevant provisions in the Provisions on Patent Grant and Confirmation
Regarding the stipulation in the Patent Law that claims be supported by the description, Article 8 of the Provisions on Patent Grant and Confirmation further stipulates the following:
If after reading the description and drawings attached, a person skilled in the relevant field of technology can not directly reach or reasonably generalize the technical solution as defined in a claim on the filing date, the people’s court shall determine that the claim fails to comply with the provisions of paragraph 4, Article 26 of the Patent Law that “the claims shall be based on the description.”
The main consideration of this provision is that patentees and patent applicants may reasonably generalize a claim on the basis of the technical content disclosed in the description and attached drawings rather than being limited to the embodiments. Accordingly, the protection scope of a patent is adaptive to the technical contribution, the degree of innovation and the technical content disclosed in the description.
As provided in Article 6 paragraph 2 of the Provisions on Patent Grant and Confirmation, where a concerned party’s argument that a claim complies with the provision of Article 26 paragraph 4 of the Patent Law is based only on specific technical content that is insufficiently disclosed in the description, the people’s court shall reject such an argument.
4.7.10.2 Relevant typical cases
In a retrial of an administrative dispute over the invalidation of an invention patent, Sensing Electronics Co. v. Patent Reexamination Board,159 the Supreme People’s Court held that “[b]ased on the description” in Article 26 paragraph 4 of the Patent Law primarily involves the relationship between the claims and the description. Accordingly, relevant content in the description shall be used as the basis for determining the technical problem solved and the technical effect achieved by the patent. Even if the claims have inventiveness, it is still necessary to determine whether the technical features recited in the claims (including the distinguishing technical features) and the technical solutions defined by the claims as a whole are appropriately generalized in accordance with Article 26 paragraph 4 of the Patent Law.
In an appeal of an administrative dispute over the invalidation of an invention patent, Ren Xiaoping v. Apple Electronic Products Commerce (Beijing) Co.,160 the Supreme People’s Court held that a claim that defines the protection scope using two or more different numerical-range technical features is considered to be supported by the description if a person skilled in the relevant field of technology can find a correspondence between those technical features and figure out the specific exploitation method in line with the purpose of the invention through a limited number of experiments and can exclude technical solutions that cannot achieve the invention’s purpose of the invention without excessive labor.