Examination of Several Issues of Claim Amendment in Invalidation Procedure
Liu Guowei
I. An Overview
Under Article 56 of the Patent Law, the extent of protection of the patent right for invention or utility mode is based on the contents of the claims. Therefore, claims are legal document on the basis of which the extent of patent protection is determined. The specific requirements for amendment of the claims vary in different stages. In the course of examination of a patent application, the amendment of the claims should not go beyond the scope of disclosure contained in the initial description and claims as prescribed by the first-to-file principle. Any applicant is not allowed to take advantage of amendment to add any technical contents after the date of filing. After the patent is granted, amendment of the claims is much more limited in the patent invalidation procedure. Under Rule 68 of the Implementing Regulations of the Patent Law and the Guidelines for Patent Examination, amendment can be made only to the claims. Besides, the mode of amendment of the claims is also limited. Why is the amendment of claims in the invalidation procedures so rigorously limited? How should the doctrine defining the mode of amendment of the claims be construed? The understanding of, and practice with regard to, those questions are varied in the community. This article is intended to preliminarily examine the several issues relating to amendment of claims in the invalidation procedure in order to invite further attention to and comments on such issues.
II. Extent of Protection of Initial Claims
Rule 68 of the Implementing Regulations of the Patent Law provides that in the course of the examination of the request for invalidation, the patentee for the patent for invention or utility model concerned may amend his or its claims, but may not broaden the scope of patent protection. The second paragraph thereof further defines that the patentee should not amend the description and drawings. That is, the patentee is only allowed, in the invalidation procedure, to amend the claims. This provision is virtually the principle of amendment of the claims in the invalidation procedure, the essence of which is that the extent of protection of the initial patent should not be broadened.
Section 5.4 of Chapter three, Part V of the Guidelines for Examination has provided for the principle of amendment of the claims in the invalidation procedure: (1) the title of the subject matter of the initial claims shall not been changed; (2) compared with the patented claims, the scope of protection of the initial patent shall not be broadened; (3) the scope of disclosure contained in the initial description and claims should not be gone beyond; and (4) generally to the technical feature which is not included in the patented claims shall not be added.
The essence of the provision is "compared with the issued claims, the scope of protection of the initial patent shall not be gone beyond". Allowance to change the title of the subject matter of the initial claims would result in the change of the technical features of the claims, and, hence, change in the extent of protection of the initial patent. This change is "broadening the extent of protection of the initial patent" in its broad sense.
Likewise, even not going beyond the scope of disclosure contained in the initial description and claims, it is possible to broaden the extent of protection of the initial patent. As a case in point, the technical feature stated the initial description is added to the claims to form a new claim. For that matter, to the amended new claim normally should not be added any technical feature that is not contained in the patented claims. That is to say adding any technical feature of the initial description to a new claim is not allowable.
According to the above understanding to correctly define the "extent of protection of the initial patent", it is enough just to keep the "compared with the issued claims, the scope of protection of the initial patent shall not be gone beyond" in the principle under the Guidelines for Examination. In practice, the very existence of the different understanding of "the scope of protection of the initial patent" has resulted in the confusion in the examination and judicial practice. One of the typical view is that "the scope of protection of the initial patent" is equal to the extent of the independent claims of the initial claims, which, having deviated from the literal sense of the Guidelines for Examination, is a biased understanding. For this writer, the correct understanding should be that "the scope of protection of the initial patent" is determined by all the claims of the patented claims; hence the necessary premise under the Guidelines for Examination is that "compared with the patented claims", but not the comparison made merely with the independent claims. In other words, the patented claims and the independent claims are not equivalent to each other.
Frankly speaking, the independent claims are the broader in the extent of protection, and the extent of protection of the dependent claims inevitably fall within the independent claims on which they depend. Therefore, some believe that the extent of protection of the claims is equal to that of the independent claim, namely the "extent of protection of the initial patent". A rough analysis of the matter should show that this view is logically wrong. It is pointed out in Rule 21 of the Implementing Regulations of the Patent Law that "the claims shall have an independent claim, and may also contain dependent claims". It is thus shown that in composition, the claims must comprise an independent claim and dependent claims as well. The dependent claims are not required in the claims, which does not mean that the claims should only contain an independent claim. Only when the claims have an independent claim, is it possible to believe that "the extent of protection of the initial patent" is the extent of the independent claims of the initial claims. Thus, this is a very special case.
Now that the claims usually contain independent claims and dependent claims; how is the "extent of protection of the initial patent" related to the initial claims? In other words, now that the independent claims are the broader in the extent of protection, and the extent of protection of the dependent claims inevitably fall within the independent claim on which they depend, what effect do the dependent claims have on the "extent of protection of the initial patent"? From the preceding viewpoint, it is inevitable to conclude that the dependent claims are drawn into the independent claim, and have virtually no effect whatsoever on the "extent of protection of initial patent". In that case, is it more direct to change the expression of the Guidelines for Examination into "compared with the patented claims, the scope of protection of the initial patent shall not be broadened". From the analysis of Fig.1, we can draw a correct conclusion on the "extent of protection of the initial patent".
As is shown in Fig.1, claims 2 and 3 are within claim 1. It is no double to hold that the extent of protection of claim 1 is most extensive. However, the belief that the "extent of protection of the initial patent" is the extent of the independent claim of the initial claims would lead to new problem. When independent claim 1 is invalidated, the conclusion is that claims 2 and 3, falling within the extent of claim 1, are inevitably be invalidated. The conclusion is obviously wrong.
For this writer, it is necessary, in this situation, to particularly note that the range between claims 1 and 2 is the extent of independent claim 1 that has virtually invalidated. That is, the largest circle has disappeared, but the other two circles are still there. In this way, it is possible to show that the extent of protection as determined by claim 2 still exists. It is thus possible to draw the correct conclusion on the "extent of protection of the initial patent", namely "extent of protection of the initial patent" is determined by all the claims, but not only the independent claim, of the claims. Furthermore, the extent as determined by the claims is determined by each claim of the claims respectively, and each claim represents a given extent. The "extent of protection of the initial patent" is a combination of a set of extent as determined by each claim according to the given logical relations. It is not the broadest extent of protection as represented by the independent claim.
Having correctly defined the "extent of protection of the initial patent", we are now in a better position to understand the function of the claims and the relations between the independent claims and dependent claims of the claims to such an extent as to understand the true reason for defining the amendment of claims in the initial patent in the invalidation procedure.
It is seen from the analysis of Fig.1 that the extent as represented by claim 1 seems to be the range between claims 1 and 2, the closed extent of the belt-shaped circle, but it does not reflect that it represents the broadest extent of protection, which obviously results from the limited expression of Fig.1. Based on the foregoing analysis, the extent as determined by the claims is determined respectively by each claim of the claims. We can as well modify Fig.1 to make it correspond to the extent determined by each claim. In doing so, there will exist no misunderstanding.
Fig.2 is intended to present a graphic expression of the claims for the easy discussion in this article. The graphic form varies in different cases, which has no effect on the analysis and conclusion made in this article. As Fig. 2 shows, the extent as determined by the claims is a collection of the circles respectively determined by each claim, while the independent claim corresponds to the largest circle of the collection. When claim 1 is invalidated, the circles of claims 2 and 3 are still there. Of course, the two claims should also stand the examination in the invalidation procedure. Then, in the invalidation procedure, how should the claims be amended without the amendment going beyond the extent of protection of the initial patent? The Guidelines for Examination have set forth the benchmark of comparison with the "patented claims", that is, account should be taken of the collection of all the circles as illustrated in Fig.2, and that comparison should not be made merely with the largest circle corresponding to the independent claim.
Fig.2 is a diagram of the claims comprising three claims. Between the circles of claims 1 and 2 is obviously possible for more than one circle to exist. That is, it is, in principle, possible for several claims to exist between the two claims. Is it allowable to find one or more claims that are smaller than claim 1, but larger than claim 2 in the invalidation procedure? In other words, is the amendment the one of going beyond the extent of protection of the initial patent? This is the subject matter of the discussion in the following section of the article.
III. Analysis of Specific Modes of Claims Amendment
The Guidelines for Examination have set forth three modes of amendment of the claims in the invalidation procedure: "deletion and combination of claims, and deletion of technical solution", with all the modes being respectively interpreted. For this writer, the basic principle underlying the amendment of claims in the invalidation procedure is "compared with the patented claims, the scope of protection of the initial patent" shall not be gone beyond, a basic principle which should be embodied in the said three modes of amendment. The claim amended in these modes, i.e. the new claim, should never be contrary to the basic principle of amendment.
Furthermore, if the amendment is made in these modes, the resulting new claim is certain to be in conformity with the basic principle of amendment. Then, it is of great practical importance to make an in-depth analysis of the above specific modes of claim amendment and to come up with a general conclusion. To this end, this writer attempts to find out the rules of the three modes of amendment.
(1) Combination of Claims
Theorem for the combination of two or more claims dependent on the same independent claim
Section 5.4 of Chapter Three, Part IV of the Guidelines for Examination provides that "the combination of claims means that two or more claims dependent on the same independent claim are combined together, whereby the technical features of the combined claims are consolidated to form a new claim that shall contain all the technical features of the claims combined". This mode of amendment is illustrated by the following example:
Claim 1: a product, wherein it contains features A and B;
Claim 2: the product according to claim 1, wherein it further contains feature C.
Claim 3: the product according to claim 1, wherein it further contains feature D.
According to the preceding provision on combination, said combination means that of two or more claims dependent on the same independent claim. In other words, the combination merely means that of dependent claims, and all the claims are dependent on the same independent claim. In the present case, claims 2 and 3 meet this requirement. Their combination results in a new claim containing all the technical features of the claims in combination. That is, it contains features A, B, C and D.
However, this combination would give rise to a phenomenon worth our attention, namely, the technical solution resulting from the combination is not stated in the initial description. While the claim resulting from the combination does not go beyond the extent of protection of the initial patent, it has actually gone beyond the initial scope of disclosure. To take a step back, even if it is stated in the initial description, the claim is not incorporated to the initial claims for protection. It is a claim abandoned by the applicant in the phase of examination. Then, the applicant finds back the abandoned claim through the invalidation procedure, which is obviously prejudicious to the public interests.
The above analysis has presented a group of important concepts: the "extent of initial disclosure" the "extent of protection of the initial patent", which are different concepts and not equivalent to one another. The latter is narrower than or equal to the former, but going beyond the "extent of initial disclosure" is not necessarily going beyond "extent of protection of the initial patent". For example, amendment of the initial description by adding thereto a new technical solution that does not go beyond the extent of any one claim of the initial claims, but the new technical solution obviously goes beyond the "extent of initial disclosure"; hence, it is contrary to the first-to-file principle. Accordingly, it is the only solution that the amendment of the claims should be restricted; should neither go beyond "extent of initial disclosure", nor the "extent of protection of the initial patent". Furthermore, if the "extent of protection of the initial patent" is expressly defined as the extent as determined in Fig.2, then the "extent of initial disclosure" is certain to have gone beyond the "extent of protection of the initial patent". Hence, it suffices to define that amendment of the claims does not go beyond the "extent of initial disclosure".
Theorem for combination of claims to be combined that are dependent on one another.
The above claims 2 and 3 respectively depend on independent claim 1, and the two clams do not depend on one anther. What if two claims dependent on one another are to be combined? Let's look at the continuation of the proceding example:
Claim 4: the product according to claim 3, wherein it further contains feature E.
If claims 4 and 3 are combined with one another, it is a combination of claims dependent on the same independent claim. Then, an interesting phenomenon will arise.
All the technical features of claim 3 are: A+B+C; and
All the technical features of claim 4 are: A+B+C+D;
After the two are combined with the repeated technical feature deleted, all the technical features of the new claim remain: A+B+C+D. That is, since the two claims are dependent on each other, the combination thereof still results in claim 4 per se.
Thus, we can draw this theorem: if the claims with one dependent on the other are combined, the new claim resulting from the combination is equivalent to the smaller claim of the claims combined.
Let's test the correctness of the theorem. We can make a breakthrough of the provision of the Guidelines for Examination by combing directly the above claim 2 with claim 1, one of which is dependent on the other and claim 1 of which is an independent claim. The result of the combination is equal to the initial claim 2. Furthermore, let's combine claim 4 with claims 1 and 3. Claim 4 directly depends on claim 3 and indirectly on claim 1. The result is to delete claims 1 and 3 and it is claim 4 per se.
To sum up the above example, we can draw two theorems as follows:
Theorem 1: If two or more dependent claims not dependent on one another are combined, the new claim resulting from the combination possesses all the technical features of the claims in combination, namely, its extent of protection is certainly smaller than any one of the claims combined (such combination, the initially abandoned contents, should not be accepted).
Theorem 2: if two or more claims directly or indirectly dependent on one another are combined, no matter whether there is an independent claim, the new claim resulting from the combination is equal to the smallest one of the claims combined.
Of course, we can also draw a third theorem for the obvious reason.
Theorem 3: two or more independent claims cannot be combined.
(2) Deletion of Claim
It goes without say that deletion of a claim(claims) means that one or some claims are deleted directly from the claims. As is shown in Fig.2, it means that a circle representing a claim is deleted. Under the principle of the Patent Law, the deleted claim is deemed not to exist from the beginning. In the invalidation procedure, the patentee's deletion of a claim on his own initiative is deemed his acceptance of the requesting party's request for invalidation of the claim; hence the latter is exempted from the burden of proof in connecting with his request for the invalidation.
However, studies are few on the close and natural relations between the deletion of claims and combination thereof. Reciting theorem 2, this writer finds that it also applies to deletion of claims. As a case in point, in the above example, if claim 2 is directly combined with claim 1, the resulting new clam is equal to the smaller claim of the claims before combination, that is, to claim 2. This is virtually deletion of claim 1. In Fig. 2 the circle represented by claim 1 does not exist any more. Likewise, the result of combining claim 4 with claim 1 in the above example is equal to directly deleting claims 1 and 3. Therefore, it is believed that the deletion of claims is virtually their combination; hence the combination of claims, in its broad sense, includes deletion of a claim (claims).
Thus, there appears another way to express said theorem 2, which reflects the relations between combination and deletion:
Theorem 2': if two or more claims one of which is dependent on the other(s), regardless of whether there is an independent claim, only the smaller (the smallest) claims will remain of the claims after combination; the other claim(s) is (are all) deleted.
(3) Deletion of Technical Solution
Deletion of technical solution referred to in the Guidelines for Examination means deletion of one or more technical solutions from the more than two parallel technical solutions in the same claim. This, in fact, means the dependent claim formed after referring to multiple claims. For this writer, it may be disintegrated into the single claim referential relation, thus making it possible to directly apply the above theorem. For that matter, the deletion principle is, in essence, consistent with the above principle, a point that will not be further analysed here.
IV. Amendment of Claims in Invalidation Procedure as Viewed from a Specific Case
On 14 August 2001, a person filed a request with the Patent Reexamination Board (PRB) for invalidation of the patent (no. 94211963.0) for the utility model entitle "multi-section Automatic Umbrella".
In the PRB oral hearings, the patentee present at the hearing the amended claims, stating that it had combined the initial claim 1 with initial claims 5 and 6, without amendment made to the other information.
For easier understanding, the initial claims are properly simplified and shown with technical features:
Claim 1: all the technical features are shown as "A";
Claim 2: (referring to claim 1): the technical features are shown as "A+B"
Claim 3: (referring to claim 1): the technical features are shown as "A+C"
Claim 4: (referring to claim 3): the technical features are shown as "A+C+D"
Claim 5: (referring to claim 4): the technical features are shown as "A+C+D+E"
Claim 6: (referring to claim 5): the technical features are shown as "A+C+D+E+F"
Therein, the technical feature added to each dependent claim is shown in italics.
If the patentee combines the initial claim 1 with initial claims 5 and 6 and since the three claims are in a relation of dependence, the above theorem 2 applies. If the patentee does the combination according to the theorem, it is easy to conclude that the new claim after the combination is equivalent to claim 6, that is equal to deleting the initial claims 1 and 5. That is, the new claim is A+C+D+E+F.
However, the patentee's combination is to keep all the technical features of claim 1 and then add to them the additional technical feature E of initial claim 5 and additional technical feature F of initial claim 6. That is, the new claim is A+E+F.
In this case, PRB held in its No. 4328 Decision on the examination of the request for invalidation that the patentee's combination of all the technical features of initial claims 5 and 6 with initial claim 1 results in a new technical solution not existing in the initial claims and a new claim. This conclusion is correct. It was also held, however, in the Decision that the new claim has not gone beyond the extent of protection as defined in initial claim 1; hence, the patentee's amendment fully conforms to Provisions of Rule 68 of the Implementing Regulations of the Patent Law and the Guidelines for Examination on the amendment of claims by way of combination in the invalidation procedure.
From the above analysis we can clearly see that while the new claim after the patentee's combination is A+E+F, it is held to be a combination of all the technical features of initial claims 5 and 6 with initial claim 1. However, this is virtually a combination of initial claim 1 with the additional technical features of initial claims 5 and 6 only. Besides, PRB determined that the extent of protection of claim 1 is one of the initial patent.
Here comes the very questions of debate. First, does the patentee's amendment conform to the provision of the Guidelines for Examination on the specific forms of amendment? Second, has the amendment gone beyond the scope of the initial claims?
To the first question, this writer's answer is negative because the patentee's combination is not one of all the technical features of initial claims 5 and 6 with initial claim 1, but abandonment of the additional technical feature C of initial claim 3 and additional technical feature D of initial claim 4. Such amendment, contrary to the provision of the Guidelines for Examination that all the technical features shall be contained after the combination, is not allowable.
The second question is not that easy to answer, and there are to views on it.
One view is that this amendment does not go beyond the extent of proteciton of the initial patent, which actually means that it does not go beyond the extent of protection of initial claim 1. However, in the present case, as is shown by the patentee's combining the claims, the patentee actually abandoned initial claims 1-4; hence, it should be held that the patentee implies that initial claims 1-4 do not exist from the beginning. Anyway, his amendment should not be more extensive than initial claim 5, or it is all right for him to keep initial claim 5. However, his amendment seems out of place, nor comparable with initial claim 5 in extent of protection.
If this practice is tenable, the disadvantage is that a future applicant when drafting claims, may only write down claims 1 and 2 to make the extent of claim as wide as possible, and make claim 2 as narrow as possible. Running into the invalidation procedures, he can derive numerous new claims less extensive than initial claim 1 in between claims 1 and 2. This would greatly reduce the workload of the patent applicant or patent attorney, who do not have to knock their brain to conceive the solution to be claimed, nor is it necessary for them to consider the various complicated referential relations, nor can Patent Office charge extra fees for additional claims under No. 75 Notice.
The other view is that this amendment has gone beyond the extent of protection of the initial patent, which actually means that the extent of protection of the initial claims is determined by all the claims in the initial claims. The patentee can only choose some claims from them to defend against any claim made by the invalidation requester. Once the claims are patented, the patentee can do nothing in the invalidation procedure but base himself on the initial structure of the claims, and cannot retread until all his claims collapse. This is consistent with the function of the dependent claims as universally accepted in the community. In the present case, if the patentee thinks that he can defend, with initial claim 6, against the invalidation requester's claim, it would do for him to abandon initial claim 1-5, which also conforms to the theorem on combination of initial claim 1, 5 and 6.
However, if this view is tenable, the revision of the Guidelines for Examination on the specific modes of amendment in the invalidation procedure by reducing them to one mode: deletion. This would require the patent applicants try to exhaust all possible technical solutions in the claims and to render as many technical solutions into claims as possible in order to have a way out in the invalidation procedure. In particular, the claims with one claim would be impossible to be amended in the invalidation procedure since amendment by broadening the extent of a claim is contrary to the basic principle, and any minor amendment is inevitably necessary to derive any new technical feature from the initial description. However, all this is not allowable. This practice would force the patent applicants and their patent attorneys to device more possible technical solutions so as to improve the quality of their invention-creation, and this is one of the importance measures to increase the international competitiveness of the Chinese patents.
The advantage of this practice is that the public may expect, on the basis of the claims, what actions are likely to infringe the patent right. As far as a patentee is concerned, there would be no effect on the extent of protection of his patent in the judgement of the patent infringement. In the invalidation procedure, the patentee is not allowed to combine the claims at will under the premise of the initial independent claims, so that the certainty of the granted patent is improved.
V. Conclusion
In this article has been discussed the extent of protection of the initial patent and the specific modes of amendment of claims in the invalidation procedure and developed three theorems.
For this writer, the extent of protection of initial patent is determined by all the claims thereof. In the invalidation procedure, unjustifiable combination, that is redrafting, of claims should not be allowed. This requirement seems to be too demanding on the patent applicants, but it is necessary to balance the interests of the patentees and the public at large. The patent system should embody and adjust the balance.
As regards the three theorems, theorem 1 should be applied with caution since it is easy for the combination to go beyond the extent of protection of the initial patent and to generate a new technical solution not disclosed in the initial patent documents, in particular when deletion and combination are applied simultaneously. For that matter, theorem 2 is more of a universal significance.
In addition, the Guidelines for Examination have set forth exhaustive provisions on the modes of amendment, namely claim deletion and combination and technical solution deletion; any amendment made not in the modes is formally unacceptable.
In conclusion, this writer holds that where amendment of claims in the invalidation procedure does not go beyond the extent of protection of the initial patent, the provisions of the Guidelines for Examination along the line should be clear and readily applicable. To this end, it is necessary to revise, by way of elaboration, the relevant provisions of the Guidelines for Examination.
The author: senior patent attorney
Email: liu-gw@yahoo.com |