Acceptance of Claim Amendments in Patent Invalidation Proceedings

Table of Contents

I. Restrictions on Amending Replacement Pages

II. Correction of Obvious Errors

III. Determination of the Source of Technical Features

IV. Summary

In patent invalidation proceedings, the patentee has the right to amend the claims at the legally prescribed time. Amending the claims is an important means for the patentee to further enhance the stability of the patent right and avoid its invalidation. Amending claims in patent invalidation proceedings is a seemingly simple but actually complex issue. On the one hand, there are relatively strict restrictions on claim amendments in patent invalidation proceedings, and the patentee has limited options. On the other hand, cases vary greatly, and claim amendments are often unacceptable, even becoming the focus of subsequent administrative litigation. Analyzing the rules and standards for accepting claim amendments is of great practical significance for patentees in invalidation proceedings.

Part 1. Restrictions on Amending Replacement Pages

The Implementing Regulations of the Patent Law stipulate that the petitioner for invalidation may request the invalidation of the patent right in its entirety or in part. In order to determine which claims are valid and which are invalid, the validity of claims needs to be determined one by one within the scope of the request during the trial of patent invalidation cases. In practice, it is also common for the requester to declare the entire patent right invalid, while the invalidation decision declares some claims invalid. Since the confirmation is carried out one by one according to the claims, it seems more in line with the substantive interests of both parties to verify whether the modification of a specific claim can be accepted separately. However, in fact, in the invalidation procedure, the modification of the claims needs to be submitted with the replacement page of the modification, and the examination usually takes the entire modified text as a unit. In the oral hearing of invalidation, the panel will determine whether the entire modified text of the claims can be accepted “as a set”. So far, there is no specific legal provision for this kind of examination. In administrative litigation cases, the State Intellectual Property Office once argued that the legal provisions of “Articles 52 and 61 Paragraph 2 of the Implementing Regulations of the Patent Law (revised in 2010)” should be used as the basis for the modification[1]. However, Article 52 of the Implementing Regulations of the Patent Law revised in 2010 is clearly aimed at patent applications, and Article 61 Paragraph 2 is clearly aimed at patent re-examination. Both of these clauses pertain to the patent granting procedure, not to the confirmation of rights procedure. The State Intellectual Property Office’s above assertion falls under the category of expansive or analogical interpretation.

The aforementioned restrictions on the replacement page are not absolutely applicable. In an administrative dispute between a patent company and the State Intellectual Property Office, the patent company argued that the State Intellectual Property Office’s “set-by-set” examination of amended claims lacked legal basis, and that the State Intellectual Property Office should accept the patentee’s in-court declaration of deletion amendments. The patent company also pointed out that the State Intellectual Property Office’s invalidation decision Nos. 58310, 57438, 53894, 55419, and 567686 all accepted the patentee’s in-court declaration regarding the deletion of unacceptable amended claims. In response, the Supreme People’s Court held that submitting a replacement page in writing is not the only way to clarify the basis for examination. A shared understanding of the amendments, based on a clear conceptual framework, can also promptly clarify the basis for examination and effectively advance the examination process. If a “clear concept” has already formed the basis for examination, mechanically requiring the submission of a replacement page before proceeding with the examination may actually cause procedural delays; or even worse, simply because a replacement page has not been submitted, the opportunity to submit it is denied, and it is directly regarded as no amendment has been proposed, which is even more detrimental to the fair and reasonable protection of the patentee. On the basis of fully arguing that the patentee’s amendment does not violate the law and whether there are any adverse effects, the Supreme People’s Court supported the decision of a certain patent company and ordered the State Intellectual Property Office to make a new examination decision [2]. It can be seen that in oral hearings, it is also permissible to make deletion-style amendments to claims that the panel clearly does not accept in court. Part 2 Correction of obvious errors As a text document, the claims are obviously prone to typographical errors. The “Guidelines for Patent Examination” stipulate that in the invalidation proceedings, the patentee may correct obvious errors. Many patentees believe that there are typographical errors in the original patent authorization text and hope to make amendments in the invalidation proceedings, but the acceptance standard for such amendments is relatively high. In the administrative dispute between Kang Company and the State Intellectual Property Office, Kang Company argued that the upper limit value of the “ratio of the absolute value of the maximum CT to the maximum CS” in the claim should be changed from “0.2” to “2”. The reason is that the value disclosed in the specification is “0.2”, and the value in the priority document is “0.2”. The Supreme People’s Court held that the upper limit value is different between different paragraphs of the patent specification. For example, according to the description in paragraph [0351], the upper limit value can be calculated to be about “0.67”; while paragraph [0360] clearly states that the upper limit value of the ratio of the absolute value of the maximum CT to the maximum CS is 2. Under these circumstances, it is difficult to determine that the description of the value as “2” in the patent claim is obviously wrong. Although the priority text can help a person skilled in the art to understand the claims in some cases, since it is not necessarily consistent with the Chinese text submitted when entering the Chinese national phase, it is not appropriate to make a unique interpretation of the Chinese text claims based solely on the description in the priority text. Accordingly, the Supreme People’s Court rejected Kang Company’s claim[3]. Based on the numerical values ​​disclosed in the specification and priority documents, there is indeed a possibility of typographical errors, especially given the possibility that parts of the specification were directly copied from the claims, with the possibility of errors in both places. However, due to other discrepancies between the specification and the patentee’s claims, whether these are indeed typographical errors remains questionable.

In an administrative dispute between a Philippine company and the State Intellectual Property Office, the Philippine company argued that the amended claims submitted during the invalidation proceedings should be accepted. The amended text changed the subject of the mass-to-surface-area ratio from “aerosol forming agent” to “homogeneous tobacco material bundle,” and argued that this amendment was clearly erroneous. The Philippine company argued that the term “mass-to-surface-area ratio” in the original claim 1 was clearly defined in the specification and drawings, specifically for homogeneous tobacco material bundles, and should be defined according to the definition in the specification and drawings. The Supreme People’s Court held that the technical content regarding the mass-to-surface-area ratio of homogeneous tobacco material bundles described in the specification does not automatically mean that the different limitation in claim 1 is clearly erroneous. Accepting the amendment would add technical features not included in the granted claims, potentially expanding the scope of patent protection. The ratio of mass to surface area can also be used to limit aerosol forming agents, and there is no possibility of other interpretations or modifications. Accordingly, the Supreme People’s Court rejected the lawsuit filed by a certain company in the Philippines[4].

As can be seen from the above cases, obvious errors in modifications are handled with great care, both in invalidation proceedings and administrative litigation. Even if the basis for the modification is recorded in the specification, if there is any doubt, the modification may still be rejected. On the other hand, this also requires patentees and patent agencies to improve the quality of their work during the patent granting process and avoid clerical errors during the patent application stage.

Part 3. Determination of the Source of Technical Features

The revised Patent Examination Guidelines of 2017 relaxed the standards for further limiting claims. One or more technical features recorded in other claims can be added to the claims to narrow the scope of protection. This type of modification has become the most common modification method in practice. In this type of modification, without modifying the expression and logical structure, directly incorporating the technical features in other claims into the claim to be modified is usually acceptable. However, whether it is acceptable if the expression is modified is controversial. In an administrative dispute between a limited company and the State Intellectual Property Office, claim 3 of the original patent in question was subordinate to claim 1, with the additional technical feature being “a method according to any one of the preceding claims, wherein step (a1) includes signaling a phase relationship between the first vector and the second vector.” The patentee added the technical feature in independent claim 12 as “wherein receiving signaling of at least one channel matrix from the first station includes receiving a phase relationship between the first vector and the second vector.” The patentee added the technical feature in independent claim 13 as “wherein signaling at least one channel matrix to at least one of a first master station and a second master station includes signaling a phase relationship between the first vector and the second vector.” Both the State Intellectual Property Office and the court of first instance held that the features added to claims 12 and 13 did not originate from claim 3, and therefore the modifications should not be accepted. The Supreme People’s Court held that the modifications to claims 12 and 13 involved adding relevant content to the claims, which clearly did not expand the maximum scope of protection defined by the original patent claims. Although the original claims of the patent in question did not verbatim record the technical features added by the patentee to claims 12 and 13, the newly added content was substantially the same as the original claim 3, which stated that “step (a1) includes sending the phase relationship between the first vector and the second vector by signaling”. The Supreme People’s Court ruled to overturn the invalidation decision and the first-instance judgment [5]. It is evident that, for the source of technical features, it is not necessary to verbatim cite other claims; achieving “substantial similarity” is acceptable. It is noteworthy that claims 12 and 13 in this case are product claims, while claim 3, which it cites, is a method claim. This means that adding technical features from a method claim to a product claim is permissible. Part 4 Summary In patent invalidation proceedings, the adversarial relationship between the parties is very strong. The petitioner is in an offensive position and can fully select claims and evidence favorable to themselves, launching attacks with relative flexibility. The patentee, on the other hand, is in a passive defensive position, and amendments to the claims are a very important means of increasing patent stability. If the amended claims are not accepted during the trial, it is obviously very detrimental to the patentee in maintaining the validity of the patent. This article analyzes several typical situations in which claim amendments are not accepted in patent invalidation cases, hoping to help patentees defend their patent rights within the reasonable scope of claims and avoid the adverse consequences of patent invalidation.

References:

[1] Intellectual Property Court of the Supreme People’s Court, Judgment Summary: Acceptance of Claim Deletion Amendments in Oral Trial Proceedings of Patent Invalidation Examination.

[2] Supreme People’s Court, Civil Judgment No. 870 of 2022.

[3] Supreme People’s Court, Civil Judgment No. 607 of 2023.

[4] Supreme People’s Court, Civil Judgment No. 1288 of 2023.

[5] Supreme People’s Court, Civil Judgment No. 1059 of 2023.