4.7.12 Amendments may not go beyond the scope of the disclosure contained in the original description and claims
Article 33 of the Patent Law stipulates the following:
An applicant may amend his or her patent application documents, but the amendment to the patent application documents for an invention or utility model may not go beyond the scope of the disclosure contained in the original description and the claims, and the amendment to the patent application documents for a design may not go beyond the scope of the disclosure as shown in the original drawings or photographs.
In judicial practice, such an amendment is also referred to as an “amendment going beyond the scope.”
4.7.12.1.1 Assessment
In a retrial of an administrative dispute over the invalidation of an invention patent, Zheng Yali v. Seiko Epson Corp.,162 the Supreme People’s Court held that the contents of the original description and claims include, first, the contents expressly recited in texts or graphics in the original description (and attached drawings) and claims; and second, the contents that can be directly and explicitly derived by a person skilled in the relevant field of technology after comprehensively considering the original description (and the attached drawings) and claims, as long as the derived content is obvious to a person skilled in the relevant field of technology.
In a retrial of an administrative dispute over the invalidation of an invention patent, Shimano v. Patent Reexamination Board,163 the Supreme People’s Court held that “the contents contained in the original description and the claims” can be embodied by the content disclosed in text and graphics in the original description (and attached drawings) and claims and by the content that can be determined by a person skilled in the relevant field of technology based on the original description (and attached drawings) and claims. In determining whether the amendment of a patent application goes beyond the scope of disclosure contained in the original description and claims, the observations submitted by parties can only be used as a reference for understanding the description and claims rather than as conclusive evidence.
4.7.12.1.2 Amendment of claims in invalidation procedures
Article 69 of the Rules on the Implementation of the Patent Law provides as follows:
In the course of the examination of a request for invalidation, the patentee of the concerned invention patent or utility model may amend the claims but may not broaden the scope of protection of the original patent.
The patentee of the concerned invention patent or utility model shall not amend the description or drawings attached, and the patentee of the concerned design patent shall not amend the drawings, photographs, or the brief explanation of the design.
In the Guidelines for Patent Examination, the principles and manners of amendment in invalidation procedures are provided.
In an appeal of an administrative dispute over the invalidation of an invention patent, Alfa Laval Corporate AB v. China National Intellectual Property Administration,164 the Supreme People’s Court held that, in invalidation procedures, amendments of claims must not go beyond the contents contained in the original description and claims and must not broaden the protection scope of the original patent. Accordingly, both the efficiency of administrative examination and the fair protection of the patentee’s contribution should be considered. It is inappropriate to impose an excessively strict restriction on the manners of amendment; otherwise, such restrictions will be a punishment for the claims inappropriately drafted. By adding to an independent claim the additional technical features recited in a dependent claim, the independent claim is further defined, and the protection scope of the original independent claim is narrowed rather than broadened. It does not impair the publicity effect of the original patent or harm the public’s reliance interest based on the original patent documents. Thus, such amendments shall be accepted.
In a retrial of an administrative dispute over the invalidation of an invention patent, Patent Reexamination Board v. Beijing Winsunny Pharmaceuticals Co.,165 the Supreme People’s Court held that the principle of amendment of a Markush claim is that the amendment will not generate a single compound or class of compounds with new properties and functions; however, the specific circumstances in each case should be considered.