Brief of Shimano Inc. v. Patent Reexamination Board

On December 27, 2013, the Supreme People’s Court of China made its Judgment on Shimano Inc. v. Patent Reexamination Board (i.e. PRB). Supreme People’s Court (2013) Administrative Certiorari Case No. 21. In the Judgment, the court upheld the Invalidation Decision No. 15307 of the PRB, which announced invalid Chinese invention patent No. 02127848.2, titled Rear Derailleur, of which Shimano Inc. is the patent owner.

This case may trace back to the invalidation requests against the above Chinese invention patent filed by Ningbo Saiguan Bicycle Co., Ltd. The PRB made said Invalidation Decision announcing all of claims 1-6 invalid as two amendments made to the claims during the prosecution of the patent go beyond the disclosure of the initial description and claims, i.e. the initial disclosure of the parent application No. 94102612.4. Shimano appealed the Invalidation Decision. Since both the first instance court and the second instance court upheld the Invalidation Decision, Shimano requested retrial of the case by the Supreme People’s Court.

At issue in this case is, do the amendments made during the prosecution of the patent No. 02127848.2 introduce new matters, which are not contained in the disclosure of the initial description and claims? In particular, do the amendments from “circular bolt bore” to “circular bore” and from “mould pressing” to “pressing” go beyond the disclosure of the initial description and claims?

By referring this case to the precedent Zheng Yali v. Seiko Epson Corporation & PRB et al (referred hereinafter to as “Seiko Epson case”), Supreme People’s Court (2010) IP Administrative Case No. 53, it seems that the court is changing their mind on the new matter issue.

New Matter Issue before the SIPO

The new matter issue under Article 33 of the Patent Law had been debated extensively for several years before the Supreme People’s Court made the Seiko Epson case at the end of 2011. Applicants and patent attorneys criticized that, examination on amendment made during prosecution of patent applications was too strict, and rejections because of new matters had been issued by examiners too readily. Not surprisingly, the new matter issue had also been a very strong ground for acting against the validity of a Chinese patent during invalidation proceedings.

According to Article 33 of the Patent Law,

An applicant may amend his or its application for a patent, but the amendment to the application for a patent for invention or utility model may not go beyond the scope of disclosure contained in the initial description and claims, and the amendment to the application for a patent for design may not go beyond the scope of the disclosure as shown in the initial drawings or photographs.”

The Guidelines for Patent Examination (2010) of the SIPO prescribes that,

““The scope of disclosure contained in the initial description and claims” means contents described literally in the initial description and claims, and contents determined directly and unambiguously according to the contents described literally in the initial description and claims, and the drawings of the description. ”

Guidelines for Patent Examination (2010), Part II, Chapter 8, Section 5.2.1.1.

In practice, amendment to claims, including broadening the claims by deleting certain features, rewording or rephrasing certain features, narrowing the claims by additional features, may result in new matters. When assessing whether any new matter is added, examiners normally look not only to newly added, reworded or deleted features, but also to connections among relevant features as described. In a word, the new matter issue is assessed by determining whether the technical solution/invention as a whole after amendment has been contained in the application documents of the filing date.

Zheng Yali v. Seiko Epson Corporation & PRB et al and Its Influence

Seiko Epson case is also initiated from an Invalidation Decision made by the PRB, Invalidation Decision No. 11291 of April 15, 2008, where Chinese invention patent No. 00131800.4, titled Ink Cartridge, owned by Seiko Epson Corporation, was announced invalid. Seiko Epson appealed the Invalidation Decision and the latter was finally withdrawn by the second instance court. Then one of the petitioners of the invalidation proceedings, Zheng Yali, filed the request for retrial of the case before the Supreme People’s Court, which finally upheld the judgment of the second instance and rejected the retrial request.

In Seiko Epson case, the Supreme People’s Court elaborated on the legislative purpose of Art. 33 of the Patent Law: on one hand, it allows applicants to amend application documents so as to effectively protect their inventions, and on the other hand, it restricts amendment to application documents so as to prevent applicants from obtaining undue benefits of first filing on inventions which are not disclosed on the filing date and impairing the public reliance interest.

Regarding “the scope of disclosure contained in the initial description and claims”, the court considered that it should be interpreted from the view of a person of ordinary skill in the art, and it includes 1) contents which are explicitly expressed in the initial description, its drawing and claims in words or figures, and 2) contents which are directly and obviously derivable to a person of ordinary skill in the art by analyzing the initial description, its accompanied drawing and claims.

In this case, the court held that,

 “A person of ordinary skill in the art could, by analyzing the initial description, the drawing and claims, easily and readily conceive that the “semiconductor storage means” can be replaced by other storage means, and can derive that the (described) technical solution can be applied to an ink cartridge which uses a non-semiconductor storage means as well … Therefore, the amendment (from “semiconductor storage means”) to “storage means” does not introduce new matters.”

The “directly and obviously derivable” test applied in Seiko Epson case goes far from the regular understanding of new matter issue in the practice of the Chinese Patent Law and in many other jurisdictions. Many professionals criticized this test and considered that it confused with the “support issue”[1] under the Patent Law.

For example, in the united states, the description shall contain a written description of the invention[2], Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co. 598 F.3d 1336 (Fed. Cir. 2010).Amendment to the claims may be rejected as not contained in the initial application documents. The purpose is to ensure that an applicant provides enough information in the initial disclosure such that it is clear that the applicant invented what is claimed. Disclosure in an application that merely renders the later claimed (by amendment) invention obvious is not sufficient to meet the written description requirement. Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1568 (Fed. Cir. 1997)

Under the European Patent Convention, it is prescribed that:

The European patent application or European patent may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed. 

European Patent Convention, Article 123 (2).

The EPO takes a strict approach to amendment under this statute. The policy consideration and the practice regarding the new matter issue are as follows:

"The underlying idea of Art. 123(2) EPC is that an applicant is not allowed to improve his position by adding subject-matter not disclosed in the application as filed, which would give him an unwarranted advantage and could be damaging to the legal security of third parties relying on the content of the original application (see G 1/93). An amendment should be regarded as introducing subject-matter which extends beyond the content of the application as filed, and therefore unallowable, if the overall change in the content of the application (whether by way of addition, alteration or excision) results in the skilled person being presented with information which is not directly and unambiguously derivable from that previously presented by the application, even when account is taken of matter which is implicit to a person skilled in the art."

Case Law of the Boards of Appeal, Part II Chapter E §1, Article 123(2) EPC.

Also, in the European patent practice, so called "intermediate generalization” may bring the new matter issue. In the situation where claim 1 is defined by features A + B, claim 2 is defined by additional features C + D, an amended invention of features A + B + C would be considered as adding new matter if the solution of features A+B+C is not disclosed in the initial application. Whatever, after the Seiko Epson case, examiners take a less stricter examination than before on amendment made during the prosecution of patent applications before the SIPO, though the debate continues.

Shimano v. PRB

In Shimano v. PRB, the Supreme People’s Court held that,

the initial structures “circular bolt bores” are “defined by two elements: 1) circular bores and 2) for passing through by bolts. Shimano amended “circular bolt bores” and “bolt bores” into “circular bores” and deleted the element of “for passing throughout by bolts”… To a person of ordinary skill in the art, “circular bores” and “circular bolt bores” have different meanings. The amendment can not be determined from the initial application documents… The description of “the bolt bores 8a and 8b may be replaced by devices having various other shapes” are indefinite and too broad, it can not be a basis for concluding that a circular bore is described and that “circular bolt bores” equals to “circular bores”.

… In the mechanical field, mould-pressing means during press processing, a mould or a similar means is used, while pressing means manufacturing under press. The latter doesn’t necessarily need a mould, and may include forging and punching. To a person of ordinary skill in the art, pressing is a general definition of mould-pressing, the meanings thereof are different. The amendment form “mould-pressing” to “pressing” can not be determined from the initial application documents.”

The court restated the policy consideration of Article 33 of the patent law, and especially stressed that the new matter issue reflects the first to file doctrine of the patent law.

“The legislative purpose is to balance the interest of the applicant under the first to file doctrine and the public interest … based on the first to file doctrine, any amendment to the application documents shall not go beyond the disclosure of the initial description and claims. The consideration behinds this is to encourage an applicant to sufficiently disclose his invention on the filing date and to prevent the applicant from incorporating invention which is not disclosed on the filing date into the application so as to obtain the benefit of first filing.”

Regarding what is the “disclosure contained in the initial description and claims”, the court held,

““The disclosure of the initial description and claims” shall be interpreted as all of the information regarding the invention rendered by the initial description and claims and is a fixation of all of the information. … “The disclosure contained in the initial description and claims” could be, in particular, contents described directly in the initial description, its accompanied drawings and claims in words or figures, and contents which could be determined by a person of ordinary sill in the art according to the initial description, its accompanied drawings and claims. When assessing whether amendment goes beyond the disclosure of the initial description and claims, distinctiveness of the technical field, habitual expression, level of knowledge and cognitive abilities of the person of ordinary skill in the art, inherent necessary connection between technical elements of a technical solution shall be taken into consideration.”

Conclusion

In Seiko Epson case, amendment from “semiconductor storage means” of a ink cartridge to “storage means” was allowed, while in Shimano v. PRB, amendment from “circular bolt bores” to “circular bores” and from “mould-pressing” to “pressing” was denied by both the PRB and the Supreme People’s Court.

It seems that the court abandons, at least eases up the “directly and obviously derivative” test applied in Seiko Epson case and returns to a test close to the “determined directly and unambiguously” test prescribed in the Guidelines for Patent Examination and applied by examiners of the SIPO. What’s the exact difference between the two tests? The Supreme People’s Court did not give a clear answer in Shimano v. PRB.

Since the Supreme People’s Court didn’t clearly indicate what practical test shall be taken in connection with the new matter issue, we can expect that the SIPO will continue to maintain a strict criteria, but less stricter criteria than the practice before Seiko Epson case was made, in assessing whether any amendment goes beyond the disclosure of the initial description, its drawings and claims. At least the amendment from a particular feature to a general feature, which later is not contained in the initial application documents, will generally not be permissible even if, to a person of ordinary skill in the art, the general feature is obvious over the particular feature.