Docket number of the case in the first instance: 7100, first instance (初), administrative case (行), (2020) Beijing Intellectual Property Court (京73)
[Prefatory Syllabus]
Article 33 of the Patent Law provides that, the applicant may amend his or her patent application documents, under the premise that the amendment to the application document for an invention patent or utility model patent may not go beyond the scope recorded in the original specification and claims. Where the application contents cause inconsistency between the information seen by technicians in this area and the information recorded in the original application by adding, changing and/or removing part of it, or by combining different technical plans recorded in the specification, and can’t be directly determined without objection from the information recorded in the original application, such amendments will not be allowed.
[Basic Facts]
Plaintiff: Chengdu Zhiyuan Machine Science & Technology Co., Ltd. (Hereinafter: Zhiyuan)
Defendant: China National Intellectual Property Administration (CNIPA)
For the case of administrative dispute over the rejection of review on the invention patent, the plaintiff Zhiyuan refused to accept the No. 206236 decision on the request for review made by the defendant China National Intellectual Property Administration on March 17, 2020, and filed an administrative lawsuit with the Beijing Intellectual Property Court within the statutory period. The decision was made by the defendant in response to the plaintiff's request for review on the application for the invention patent named "A High Pressure Self-tightening Flange” (Application No. 201611044305.8). This decision held that, This application introduced the characteristics “β＜α” in Claim 1. However, such characteristics is not recorded in the original specification and claims, and can’t be directly determined without objection by the contents recorded in the original specification and claims. That’s to say, the above amendments go beyond the scope specified in the original specification and violate Article 33 of the Patent Law. On this ground, the rejection of this application made by the China National Intellectual Property Administration on November 5, 2018 is upheld.
In this case, the plaintiff introduced the characteristics “β＜α” in Claim 1 of this application in its request for review, claiming that the above amendments can correspond to relevant contents recorded in the specification of this application, so as to realize the beneficial effect of "the higher the pressure, the better the self-sealing performance" recorded in the specification by making the surface of sealing cone between lips and sleeves that pass the T-ring tighter. After the trial, Beijing Intellectual Property Court held that, regarding the technical plan in this application, when the bolt warning strength is increased to make the reinforcement and sleeve of the T-shaped seal ring closely fit, that is, after realizing "the end faces of two sets of Section 4 are in close contact with the reinforcement of the seal ring upon installation" as stated in this application specification, the technical effect recorded in this application specification can be achieved. The technical features added by a technician in this area to the amendment of "β < α" can be directly determined without objection according to the contents recorded in the original specification and claims. This amendment complies with Article 33 of the Patent Law, for which the defendant made wrong determination. Based on the above grounds, Beijing Intellectual Property Court ruled to annul the decision. The China National Intellectual Property Administration shall make a decision on the request for review.
The attorney of Beijing Gaowo Law Firm participated in the lawsuit of first instance as the agent of the plaintiff Zhiyuan.
[Typical Significance]
The amendments by the patent applicant are made based on the following two aspects: First, the contents recorded in writing in the original specification and claims; second, the contents that can be directly determined without objection according to the contents recorded in writing in the original specification and claims as well as the drawings attached to the specification.
"The scope recorded in the original specification and claims" shall be determined according to the technical contents disclosed in the original specification and claims from the perspective of general technicians in this area. The technical contents already disclosed in the original specification and claims shall be construed as falling within the scope recorded in the original specification and claims. It’s necessary to prevent over-interpretation of the scope recorded, and even cover the technical contents not disclosed in the applicant's original specification and claims; nor too narrow interpretation of the scope recorded and avoid disregarding the technical contents disclosed in the original specification and claims. From this point of view, the scope recorded in the original specification and claims shall include the following: 1. Contents clearly expressed in words or graphics in the original specification, its attached drawings and the claims; 2. Contents that can be directly and clearly deduced by general technicians in the area by integrating the original specification, its attached drawings and the claims. Compared with the foregoing contents, if no new technical content is introduced in the patent application document amended, it may be deemed that the amendment to the patent application document doesn’t go beyond the scope recorded in the original specification and claims.
In the current application of Article 33 of the Patent Law, the prevailing view holds that the contents that can be directly determined without objection according to the contents recorded in writing in the original specification and claims as well as the drawings attached to the specification include the contents that can be deduced by considering the original specification, its attached drawings and the claims which is explicitly defined by the Supreme People's Court as "directly and unequivocally deduced”. The contents "directly and unequivocally” deduced shall be understood as the contents that can be obtained through simple reasoning in combination with the common knowledge in this area. Any content that can be obtained after technicians in this area prove it through a large number of experiments or complex logical reasoning on the basis of the original application documents shall not belong to the “contents directly and unequivocally deduced”.
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