I.Understanding of Article 33 and other regulatory documents

 Article 33 of the Patent Law provides that an applicant may amend his patent application as filed, but amendment of invention or utility model applications may not exceed the scope of disclosure contained in the original written description and claims, and amendment of design applications, the original drawings or photographs.

The first part of the provision gives the applicant the right to amend his patent application as filed, for multiple reasons. For instance, an inventor, by his innovation, creates a new technical solution for which an application is filed in order to patent his invention. The invention is generally defined in words, but it is not created for the sake of words, or the ability of the patent drafter to define it in words, which leaves room for error in the patent documents as filed from the technical solution as created by the inventor, thus, necessitating amendment.

However, due to the “first-to-file” doctrine, such amendment must be limited, or otherwise, the applicant might, by amending his application, include any content that comes after the application date. Thus, the second part of the provision imposes a limitation on amendment, that is, “amendment of invention or utility model applications may not exceed the scope of disclosure contained in the original written description and claims, and amendment of design applications, the original drawings or photographs.

To further clarify what is the “scope of disclosure contained in the original written description and claims,” the Patent Examination Guide explains that the scope covers “the textual content of the original written description and claims, and any content that can be directly and unequivocally determined from the textual content of the original description and claims, and the figures attached, if any.”

But, it gives no explanation on what can be counted as directly and unequivocally determined. Thus, it often leads to difference between an applicant and an examiner, between the substantial examination stage and the reexamination stage, between the substantial examination and the court judgment, and between different courts, which is rightly reflected in the cartridge case.

II.The cartridge case and related administrative and judicial practices

Zheng, a requester, filed a request for invalidation of Patent No. 00131800.4 owned by Seiko Epson on the account that the patent did not comply with Article 33 of the Patent Law. In the patent as issued, the “storage device” in both claim 1 and claim 40 was the result of voluntary amendment from the “semi-conductor storage device” when a divisional application was filed, which storage device was not originally disclosed either in the written description or the claims, other than a descriptions in the Technical Background in the written description that “... This is because the printing apparatus must be brought to the site of the manufacturer, and the storage device for recording control data must be replaced” and “...installed on one of the cartridges are a semiconductor storage device and a motor that is linked to the storage device.” Viewed the entire application document as a whole, it can be derived that in the description of conventional technologies “storage device” should be a short form of “semiconductor storage device.”

Based on the invalidation request, the Patent Reexamination Board ruled to invalidate the patent. It held that the whole of the original description and claims, including the embodiments, described the invention in relation to a semiconductor storage device from beginning to end. A storage device, which was used to store information and data, encompasses, apart from semiconductor storage device, magnetic bubble storage device or ferroelectric storage device. Since the original description and claims did not involve any other storage device, nor could it be directly and unequivocally concluded that any other storage device was installed in the cartridge, “storage device” cannot be limited to “semiconductor storage device” as originally disclosed in the written description and claims. Thus the amendment is not supported by the original scope of disclosure, and was in violation of Article 33 of the Patent Law. Disagreeing with the decision of the Patent Reexamination Board, the patentee sought review of the Board’s decision with the No. 1 Intermediate People’s Court of Beijing, which affirmed the Board’s invalidation decision No. 11291. Still dissatisfied, patentee appealed to the Beijing Higher People’s Court.

The Beijing Higher People’s Court articulated that a technical term or feature should be interpreted from the perspective of a person skilled in the art, taking into consideration of the specific context where the technical term or feature is used. The original claims included both the “semiconductor storage device” and the “storage device.” Secondly, at the substantial examination stage, the applicant defined the “storage device” clearly in its response to the Official Notice. Moreover, the original description defined “... installed on one of the cartridges are a semiconductor storage device and a circuitry that is linked to the storage device.” The description indicated that the “storage device” was a short form of “semiconductor storage device.” Thus, the amendment from the “semiconductor storage device” to “storage device” did not introduce new matters, and did not exceed the original scope of disclosure.

As shown, the administrative authority and the judiciary had different understandings and applications of Article 33 of the Patent Law, and such differences exist even between different courts.

III.Analysis on Article 33 and the determination

According to related stipulations of the Patent Law and the Patent Examination Guide, under Article 33 of the Patent Law, the determination of an amendment to an application is done on two levels. First, whether the amendment is literally supported by the original disclosure in the written description and claims. If the answer is yes, the amendment is still proper. If not, it will be further examined to see whether the amendment can be directly and unequivocally derived from the textual content of the original description and claims, and the drawings attached, if any. The determination on the first level is easy, while that on the second level, complex, leading to much difference in practice. Then, how should we determine “direct and unequivocally”?
It is well known that patent cases are different from ordinary ones in that they involve both technical and legal aspects. Thus, a patent case has to be analyzed and determined from these aspects and be it at the patent prosecution stage or the litigation stage. Technically, the determination should be done by the standard of a person skilled in the art, that is, a hypothetical “person” in the Patent Examination Guide. Legally, the examiner must determine in accordance with the Patent Law, the Rules for the Implementation of the Patent Law and the Patent Examination Guide, and the spirit of the laws and regulations. The method applies to any determination under Article 33 of the Patent Law as to whether a change to a patent application is direct and without doubt. Theoretically, if the above method is satisfied, the conclusion will be the same, no matter reached at the prosecution stage or the litigation stage, or in administrative or judicial proceedings. However, this can hardly be achieved in reality due to the following:

(a). The above method requires the examiner to stand in the shoes of a hypothetical person. The real examiner usually deviates from the requirement, and tends to develop a less-than-perfect understanding of the abstract provisions of the Patent Law and the Patent Examination Guide. These deviations may lead to different conclusions.

(b). Different stages of practice have different natures. For instance, at the administrative stage, the consideration is given to fairness and justice, and administrative efficiency; at the judicial stage, the balance is tilted towards fairness and justice. The difference leads to different application of different laws and regulations. For example, the judiciary deems the Patent Examination Guide only as a reference rather than a basis to decide a case. For another example, the patent prosecution is to determine whether a patent to be granted and the patent validation stage deals with a patent that has already been granted. At the prosecution stage, the consideration starts from whether the applicable granting requirements are satisfied; at the patent validation stage, the consideration is given to both the granting requirements and the legislative stability. As a result, a single case may be concluded differently at the different examination stages.

Now, back to the cartridge case, when submitting divisional application, the applicant changed the “semi-conductor storage device” to the “storage device,” which was, as stated in the description, “because the printer must be sent to the manufacturer, and the storage device that records the control data must be replaced” and “one of the ink cartridges is installed with a semi-conductor storage device and a motor that is linked to the storage device.”

In determining whether the change complied with Article 33 of the Patent Law, first, the determination should be made according to a person skilled in the area of ink cartridge. The person should know all the common technical knowledge before the application or priority date, and can obtain prior art in the area. He should learn that more than one type of storage device exists in the ink cartridge area, such as the semiconductor storage device, the magnetic bubble storage device and the ferroelectric storage device. Also, this common-sense knowledge must have been known to the applicant that made the change.

Second, the textual content of the description indicated that the applicant intended to solve the problem that “the bad contact of the semiconductor storage device in the printer often leads to data loss.” Also, in the embodiment, the technical scheme responded to this technical issue. Obviously, the original description and claims described the invention in relation to the semiconductor storage device, and did not involve any other storage device type. In other words, the invention was restricted to the semiconductor storage device. The change from the “semi-conductor storage device” to the “storage device” was without the original scope of disclosure and incompliant with Article 33 of the Patent Law. Thus, the Patent Reexamination Board was correct in its decision to invalidate the patent.

However, the Beijing Higher People’s Court held that the change did not add new matter, and thus was still supported by the original disclosure. Its reasons were as follows:

a. A technical term or feature should be understood from the perspective of a person skilled in the art, in the specific context where the term or feature is used;

b. The original claims included both the “semiconductor storage device” and the “storage device”;

c. At the substantial examination stage, the patentee defined the “storage device” clearly in its statement of opinions in reply to the notice from the Board;

d. The sentence in the original description that “one of the ink cartridges is installed with a semi-conductor storage device and a motor that is linked to the storage device” implied that the “storage device” was abbreviated from the “semiconductor storage device.”

Regarding point “a,” it is true that a technical term or feature needs to be understood from the perspective of a person skilled in the art, which is required in Article 33 of the Patent Law. In the present case, a person skilled in the ink cartridge art knows clearly that the “storage device” and the “semiconductor storage device” are obviously two different concepts. Thus, their implications are different, either from the understandings of the technical terms or features, or from the act of the applicant to make the change.

Regarding point “b,” the original claims used the “semiconductor storage device” and the “said external storage device.” In the specific context, the “said external storage device,” which appeared in a dependent claim and to a person skilled in the art, referred to the “semiconductor storage device” in the related independent claim.

Regarding point “c,” although the patentee, in its statement of opinions, defined the “storage device” as the “semiconductor storage device” in the original description, it is open to discussion whether the opinion is governed by the estoppel doctrine. The doctrine has its specific scope of application, and may not necessarily apply to all the opinions of the applicant. As far as the current case is concerned, the explanation of the applicant to define the storage device was not intended to contradict the view of the patent examiner or differentiate its invention from prior art. Thus, it may not be entirely subject to the estoppel doctrine.

Regarding point “d,” the sentence in the original description that “one of the ink cartridges is installed with a semiconductor storage device and a motor that is linked to the storage device” failed to imply that the applicant used the “storage device” as an abbreviation of the “semi-conductor storage device” when it drafted the description. In fact, this was no more than a way to simplify a term in writing.

IV.Conclusion

Application amendment is common in patent examination practice. When Article 33 of the Patent Law is used to determine an amendment, although the determiner is clear and definite, the conclusion may be different, due to the abstractness of the determiner and related legal provisions, and the different nature of each examination stage. Despite this, to pursue fairness and justice is the ultimate goal of Article 33 of the Patent Law and all patent practitioners.

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