At the end of 2011, the Supreme People's Court of China made a verdict on Seiko V. Patent Reexamination Board appeal case, setting forth how Art. 33 of the Chinese Patent Law should be applied. Art. 33 of the Chinese Patent Law provides that an amendment shall not go beyond the scope of disclosure contained in the initial description, claims and drawings. The reasoning in this verdict was found to be somewhat different from what is provided in the GUIDELINES FOR PATENT EXAMINATION (2010) and from what most examiners had applied.

Brief of the Facts

Seiko Epson Cooperation (to be abbreviated as Seiko Epson hereinafter) obtains a patent for invention in China relating to an ink cartridge, that is, Patent of Invention No. ZL00131800.4 (to be abbreviated as the present patent hereinafter). The present patent is a patent of the divisional patent application with the original application of patent application for invention No. CN99800780.3. In the independent claims of the original application, “semiconductor storage means” is recited. Whereas Seiko Epson submitted amendments after the filing of the divisional application, in which no “semiconductor storage means” but only “storage means” is presented in the amended document.

In 2006 and 2007, Foshan Kaideli Office Supplies Co., Ltd. (to be abbreviated as Kaideli Co. hereinafter), Zheng Yali and Shenzhen Yicai Industry Development Co., Ltd. (to be abbreviated as Yicai Co. hereinafter) filed requests for invalidation declaration to the Patent Reexamination Board against the present patent, with grounds including that the present patent did not comply with provision of Art. 33 of the Chinese Patent Law.

In 2008, the Patent Reexamination Board deemed that since the initial description and claims of the original application do not have a literal recitation of the “storage means” but only the literal recitation of the “semiconductor storage means”, the amendment from “semiconductor storage means” to “storage means” goes beyond the scope recited in the initial description and claims and therefore did not comply with the provision of Art. 33 of the Chinese Patent Law, and therefore declared that the present patent were totally invalidated in the Examination Decision of Request for Invalidation Declaration (to be abbreviated as No. 11291 Decision).

Seiko Epson was not satisfied with the No. 11291 Decision and brought an administrative law suit to the Beijing First Intermediate People’s Court. In the first instance, the Beijing First Intermediate People’s Court affirmed the No. 11291 Decision.

Then Seiko Epson appealed to the Beijing Higher People's Court, asserting that the “storage means” should be interpreted as the “semiconductor storage means” recited in the initial description. The Beijing Higher People's Court held that the “storage means” after the amendment was actually used in sense of the “semiconductor storage means” and did not form a new technical solution, and therefore the amendments complied with Art. 33 of the Chinese Patent Law. In the second instance, the Beijing Higher People's Court revoked the No. 11291 Decision and the judgment in the first instance.

Zheng Yali, who was the third party during the administrative litigation, was not satisfied with the judgment in the second instance, and appealed to the Supreme People's Court to petition for retrial. In the appeal, Zheng Yali did not accept the above mentioned interpretation of the “storage means” asserted by Seiko Epson, and also asserted that the present patent shall be invalidated since the amendments broadened the scope of protection.

Main Focus

During the hearing held by the Supreme People's Court, the focus issues of the dispute can be summarized as follows:

  1. Whether the interpretation of the “storage means” of the present patent by judgment in the second instance is correct or not;
  2. Whether the amendment relating to the “storage means” in claims of the present patent violates the provisions of Art. 33 of the Chinese Patent Law;
  3. What is the relationship between the restriction on amendment to patent application documents and the scope of protection of the patent; and
  4. What is the relationship between the restriction on amendment to patent application documents and prosecution history estoppels.

Supreme People’s Court’s Opinions

The Supreme People's Court’s opinions on the above focus issues are as follows.

With respect to (I), since Seiko Epson voluntarily amended the “semiconductor storage means” to “storage means” after the filing of the patent application, which means that Seiko Epson’s own opinion was that the “semiconductor storage means” to “storage means” had different meanings, the fact finding in the second instance that the “storage means” after the amendment was actually used in sense of the “semiconductor storage means” was not appropriate.

With respect to (II), the Supreme People's Court sets forth, from three aspects, whether the amendment concerning the “storage means” violated the provision of Art. 33 of the Chinese Patent Law.

Firstly, the legislative purpose of the Art. 33 of the of the Chinese Patent Law is, on one hand to make applicants have opportunities to amend and correct patent application documents so that invention creations which really possess inventiveness can be protected, and, on the other hand, to also prevent applicants from obtaining undue benefits on contents of invention which are not disclosed on the filing date and impairing the public’s trust on the initial patent application documents.

Secondly, “the scope recited in the initial description and claims” should be interpreted from the view of a person of ordinary skill in the relevant art, and includes (1) contents which are explicitly expressed in the initial description and its drawing and claims using characters, drawings or the like, and (2) contents which a person of ordinary skill in the relevant art can directly and obviously derive by analyzing the initial description and its drawing and claims.

Thirdly, it is specifically judged whether the amendments concerning the “storage means” violate the provision of Art. 33 of the Chinese Patent Law. A person of ordinary skill in the relevant art could, by analyzing the initial description and its drawing and claims, easily and readily conceive that the semiconductor storage means can be replaced by other storage means, and can derive that the technical solution can be applied to an ink cartridge which uses a non-semiconductor storage means as well. Therefore, in comparison with the contents which a person of ordinary skill in the relevant art can directly and obviously derive by analyzing the recitation of the description and its drawing and claims of the initial patent application disclosure, claims after the amendments do not introduce new technical contents, and the amendments concerning the “storage means” does not violate the provision of Art. 33 of the Chinese Patent Law.

With respect to (III), between the restriction on amendment to patent application documents and the scope of protection of the patent, there is a certain relationship and also obvious differences. When the patent applicant makes voluntary amendments in accordance with the provision of Rule 51 of the Implementing Regulations of the Chinese Patent Law, as long as the amendments do not go beyond the scope as recited in the initial description and claims, the scope sought to be protected may be broadened and may be narrowed in the amendments to the original claims. Therefore, the ground of the petition for retrial by the retrial petitioner that the present patent shall be invalidated because the amendments broadened the scope of protection is unable to establish and is unassisted.

With respect to (IV), application of prosecution history estoppels in patent right granting and affirming are not unconditional. An essential condition for applying the prosecution history estoppels is that a back and fill act made by a party impairs a third party’s trust and expectation on the act. Meanwhile, specific provisions by laws and other principles which are of the same importance also limit the application of prosecution history estoppels. According to the provision of Art. 33 of the Chinese Patent Law, in judging whether an amendment of a patent application document goes beyond the scope of initial description and claims, the scope of the recitation of the initial description and claims should be taken as a boundary in which there is no room to apply prosecution history estoppels, and the interpretation made by the applicant in the invalidation procedure after making the amendment should not be used to judge whether an amendment of a patent application document goes beyond the scope of initial description and claims.

Result of the Verdict

The petition of the retrial by Zhang Yali is rejected, and the judgment in the second instance is affirmed. The present patent is maintained to be valid.

More Discussions

In the verdict, the criteria used by the Supreme People’s Court for judging whether an amendment violates Art. 33 of the Chinese Patent Law are different from those provided in the GUIDELINES FOR PATENT EXAMINATION (2010).

In the GUIDELINES FOR PATENT EXAMINATION (2010), it is provided that “the amendment of the application documents shall not go beyond the scope of disclosure contained in the initial description and claims”. In addition, it defines “the scope of disclosure contained in the initial description and claims” to include “the content described in the initial description and claims, and the contents determined directly and unambiguously according to the contents described in the initial description and claims, and the drawings of the description”. See Part II, Chapter 8, Section 5.2.1.1 of the GUIDELINES FOR PATENT EXAMINATION (2010).

On the other hand, the Supreme People’s Court deemed that the scope recited in the initial description and claims should be interpreted from the view of a person of ordinary skill in the relevant art, and includes not only contents which are explicitly expressed in the initial description and its drawing and claims using characters, drawings or the like, but also contents which a person of ordinary skill in the relevant art can directly and obviously derive by analyzing the initial description and its drawing and claims. It can be seen that the Supreme People’s Court did not apply an examination so strict as provided in the GUIDELINES FOR PATENT EXAMINATION (2010).

It is a sign that the Supreme People’s Court does not agree with the excessively strict examination that had been applied in the Examination Division and the Reexamination Board of the Chinese Patent Office. The opinions in the verdict are not binding on the examination practice by the Examination Division and the Reexamination Board, but are more or less instructive, so that we expect fewer objections under Art. 33 of the Chinese Patent Law to appear in Office Actions.