Mainly two aspects for patent invalidation stage are revised this time:
1, more manners of amending patent documents are permitted during the invalidation stage;
2, regulations for petitioner to add grounds for invalidation and evidences are amended more clearly.
According to previous Guidelines, the patentee is permitted to amend the claims during the invalidation stage in three manners: deleting claim(s), combing claim(s) and cancelling technical solution(s). This time, the manner of "combining claim(s)" is replaced by “further limitation of the claim”, and one more manner of "correcting obvious errors" is accepted. Here, “further limitation of the claim” means, a claim is limited by incorporating one or more technical features recited in other claims of this patent, so as to narrow its protection scope. Compared with the past, the patentee could have more choices to amend the claims during invalidity actions. For example:
Claim 1: A+B;
Claim 2: A+B+C+D;
Claim 3: A+B+E.
In the past, it is forbidden for the patentee to obtain the technical solution A+B+C or A+B+D through modification when claim is renounces at the invalidation stage. While in the future, these two kinds of modifications can be accepted. Similarly, technical solutions A+B+C+E and A+B+D+E can also be accepted by the Patent Reexamination Board.
It should be noted that further limitation to the claims needs to meet other provisions relating to the amendments in the Guidelines, such as those of Article 33 of PRC Patent Law. That is to say, the patentee cannot combine the technical features in the claims at will to obtain technical solutions beyond the scope of the original claims and specification. In addition, the patentee is still forbidden to add the features only recorded in the specification or the drawings to the claims at the invalidation stage.
In order to ensure fairness, when the patentee further limits the claims or corrects obvious errors in the claims, the invalidation petitioner may, within the time limit specified by the Patent Reexamination Board, add the ground for invalidation against the amendments and state them in details. Back to the above claims 1 to 3, assuming that the patentee adds feature C in the original claim 2 to claim 1 and obtained the new claim 1: A+B+C, the new ground for invalidation which the petitioner could add are: the amendment to the new claim 1 going beyond the original scope, and the amendment being not supported by specification. However, if the petitioner adds ground of “expression of feature C being unclear” after the patentee makes the above amendment, it will not be accepted. The reason is that expression of feature C is not belong to the above amendment, thus the petitioner should have presented this grounds for invalidation when the request for invalidation was filed.
With respect to supplementing invalidation evidences by the petitioner, if the patentee has modified the claim(s), generally it/he is not allowed to supplement new evidences after one month from the date on which invalidation request is filed. But the patentee can adjust the combination manners of the evidences, and also can supplement the common knowledge documents, so as to evaluate the patentability of claims more sufficiently. The reasons lie in,
1) the amendment made by the patentee at the invalidation stage would not introduce the technical features not existed in the previous claims, which means that unexpected technical solutions will not exist;
2) preventing the petitioner from carrying out evidence raid after the patentee made the amendments;
3) avoiding the unreasonably prolonging of invalidation procedure, which means if the petitioner is allowed to supplement evidences after the patentee made the amendments, the patentee should be allowed to make further amendments in response to the supplementary evidences, and so forth, it leads to a too long period of invalidation procedure.
It can be seen, the role of claims is more important than ever before. When the preparing the application documents, under the circumstances that there is enough budget, the patent applicant might consider drafting all the technical features which might bring contribution to the invention as dependent the claims, and building technical solutions as many as possible by reference relations, so as to have more choices for the modification in the possible subsequent invalidation procedure.