In 2011, the decisions of the Supreme People’s Court in the Seiko Epson Cartridge case, the Jiangsu Simcere case and the Zeng Guansheng case impacted the Patent Reexamination Board and the Patent Office examination procedures under Article 33 of China’s Patent Law. In the Seiko Epson case, for instance, the “support” theory developed and claimed that a support test should be used to determine whether an amended claim is within or without the relevant scope. Others, who adhere to the “obviousness” theory, believe that an amendment should be allowed, when it contains content that is obvious to people skilled in the relevant art. Others, who advocate for the “technologic contribution” theory, say that an amendment should be allowed to contain technologic elements that do not contribute technologically to the solution that the invention is intended to provide. These viewpoints have led to quite a dispute and analysis in academic circles.

For this reason, the Patent Wen Liping, Head of Second Division for Material Engineering Complaints, Patent Reexamination Board, SIPO Reexamination Board of the State Intellectual Property Office (SIPO) has designated researchers to conduct several comparative studies on the subject. They started from the original legislative intents from European and U.S. legal provisions governing amendments to patent applications. In so doing, they aimed to rediscover the original legislative intent behind Article 33 of the Patent Law in China. Due to the various research topics involved and the limitation of this article, the author will only compare the legal provisions and legislative intents for out-of-scope amendments between Europe, the U.S. and China, to highlight a few lopsided viewpoints in patent-related fields.

I. Legal provisions governing application amendments

(I) European provisions

In Europe the legal provision covering amendment limitation is Article 123 of the European Patent Convention (EPC). Article 123 (2) provides 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.” This fundamental clause applies to all procedural amendments, as well as amendments to specifications, claims or drawings. The EPO Guidelines for Examination further explains the intent underlying Article 123 (2) 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.”

Then, how to determine whether or not an amendment “extends beyond the content of the application as filed?” The EPO gives an additional rule, which is referred to as the “public test,” which states, “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.” In determining compliance with Article 123 (2), the public test is the mostly applied as a bright line rule for any kind of amendment.

(II) American provisions

It is well known that in the U.S., amendments to claims and specifications are governed by two different clauses, i.e. 35 U.S.C. 132 and 35 U.S.C. 112 (a). Just as many research reports have concluded, this easily causes people to think that claims and specifications are examined using different standards. Some scholars go even further to suggest that similar paired clauses should be adopted in the patent legislation of China. After reading the ruling of the Supreme People’s Court in the Seiko Epson Cartridge case, which introduced the support test to judge whether an amendment is within or without the relevant scope, the author conducted research into the legal provisions of the U.S. and their original legislative intents. The author sought to discover why different examination standards are separately applicable to amendments of claims and specifications, and whether there is anything Chinese law can borrow. However, surprisingly the examination standards are exactly the same with each other. Then, why are these exactly the same standards divided into two different sections? To answer that, the original legislative intents and history must be reviewed.

Before 1793, in the U.S., patent legislation did not require presenting claims. 35 U.S.C. 112 (a) governed the writing of specifications, and 35 U.S.C. 132 controlled amendments to specifications. After 1793 as claims were required to be provided, amendments to specifications and claims were both governed by 35 U.S.C. 132. The situation continued until 1967 when in In re Ruschig, the court required differentiation between amendments to specifications and those to claims. This requirement, however, was not fully implemented, for a long time thereafter, and either 35 U.S.C. 112 (a) or 35 U.S.C. 132 was applied to claim amendments. In 1981, in In re Rasmussen , the United States Court of Customs and Patent Appeals (CCPA) expressly emphasized that claim amendments must be handled only in accordance with 35 U.S.C. 112 (a) instead of 35 U.S.C. 132, as the latter was applicable only to amendments to specifications, abstracts and drawings. These historical changes indicated that the two clauses were used by the United States Patent and Trademark Office (USPTO) to avoid any possible procedural confusion. In addition, there is a sentence in MPEP§ 2163.01 “while the test or analysis of description requirement and new matter issues is the same, the examining procedure and statutory basis for addressing these issues differ.” It proves that with respect to out-of-scope amendments, 35 U.S.C. 112 (a) and 35 U.S.C.132 mean to apply the same standards to amendments to claims and specifications, i.e. in the original application “an applicant must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention,” and “each claim limitation must be expressly, implicitly, or inherently supported in the originally filed disclosure.”

(III) Chinese provisions

In China, with respect to amendment limitation, Article 33 of the Patent Law provides the fundamental requirements and is the source for other relevant provisions in the Implementation Regulations of the Patent Law and the Patent Examination Guidelines. The Patent Law has been revised three times, and the wording has been changed from “(an amendment shall) not extend beyond the scope recorded in the original application” to “(an amendment shall) not extend beyond the scope recorded in the original specification or claim.” However, one thing is unchanged, i.e. no amendment will exceed the “scope recorded” in the specification or claim originally filed. In other words, what Article 33 emphasizes is the “scope recorded” other than the exact writing. Hence the fundamental rule for determining whether an amendment is within or without the scope has never been changed. Therefore, we should always be aware of and base our judgments on the “scope recorded” in the original application.

II. Analysis and comparison between original legislative intents of different countries

(I) Provisions of Europe and the U.S.

The legislative intent of the European law is far from that of the U.S.. The European provisions intend to prevent an applicant from obtaining an unfair advantage or damaging the legal security of third parties by amending the application. The American provisions emphasize the “possession” rule. But, a close study finds that they actually express the same idea, but from different perspectives. The European line of demarcation between an applicant and any third party is drawn only by the application filed on the filing date. An amendment may be made only within the scope so defined; otherwise the applicant could be unfairly enriched, and the legal security damaged of third parties relying on the content of the original application. The American requirement is that an amendment China Intellectual Property GLOBAL ip 74 China IP 5-6/2014 should not violate the possession rule, i.e. the original application should convey clearly to those skilled in the art that the applicant was in possession of the subject matter as of the filing date sought, and no amendment may extend beyond the scope of what it already possesses.

As shown, the American provisions start from the perspective of applicants. It emphasizes that an applicant must clearly describe in the original application the invention that he is in possession of as of the filing date. One can only seek patent protection within the limit of his possession, and may not amend the application by adding matters of which he is not in possession. The European provisions are viewed from the perspective of the public. They emphasize the line of demarcation between an applicant and any third party to prevent the applicant from being unfairly enriched or any third party from being victimized. Despite different perspectives and emphases, the European provisions and the American provisions express the same meaning that an applicant shows what he has invented in the application filed on the filing date; he is given the rights that accord with the invention filed as of the filing date; and he is allowed to amend the application only within the limit of the rights so given.

(II) Provisions of China

Despite alterations, Article 33 of the Patent Law maintains that an amendment should not extend beyond the “scope recorded” in the original specification or claim. In determining whether the scope is exceeded or not, the content or scope of the claim should be primarily determined according to the original specifications or claim. In this respect, the Patent Examination Guidelines provides that the content or scope of the claim will be derived “directly and unambiguously” from the original specifications or claim. As the basis for determination was changed from “information disclosed in the original application” to “information recorded in the original application” or from “[information that can be] derived” to “[information that can be] confirmed.” Such changes caused many people to wonder whether that meant the standards or criteria had become stricter. As a result, it was assumed that any amendment not recorded in the original application was deemed beyond the scope of the original. However, in so doing, they totally neglected the fundamental, original meaning and spirit of the provision. Article 33 of the Patent Law states that the “scope record” rather than the record per se should not be exceeded.

As shown, the Chinese amendment provision is very similar to its European and American counterparts in legislative intent: The line of demarcation is drawn between an applicant and any third party as of the filing date; the invention as described and defined by the application on the filing date must be used to determine the legitimacy or scope of the rights to be granted to the applicant; and once defined as of the filing date, the content or scope of the application is not allowed to be changed without authorization. In short, an applicant is allowed to amend his application within those restrictions: The line of demarcation between an applicant and any third party in Europe, the scope of “possession” in the U.S., or the “scope recorded in the original specification or claim” in China.

III. New findings – Comment on American provisions

Our comparative study finds that the American provisions are sometimes misunderstood. This breakthrough of our research is provided below.

(I) Consistency between standards governing amendments to specifications and claims

In the U.S., the historical evolution indicates that amendments to specifications and claims are governed by different clauses to avoid procedural disorder. The examination standard in 35 U.S.C. 112 (a) that is applicable to claims is the same as that in 35 U.S.C. 132 that is applicable to specifications. Both the standards are based on the legislative intent that “an applicant must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention” and that “each claim limitation must be expressly, implicitly, or inherently supported in the originally filed disclosure.” This is one of our essential research results, which is totally different from previous conclusions that the standards were different from each other in 35 U.S.C. 112 (a) and U.S.C.132.

(II) Consistency between standard for determining out-of-scope amendment and standard for support requirement of specifications

There has been a viewpoint that in the Patent Law of the U.S., the standard for determining out-of-scope amendments is the same as that for the support test of specifications. As long as the examiner believes that an amendment is supported by the specification, the examiner will not issue a notice of objection that the amendment is without the scope of disclosure. Through a detailed comparative study, this author finds that on one side, the Manual of Patent Examination Procedure (MPEP) expressly provides: “if the originally filed disclosure does not provide support for each claim limitation, or if an element which applicant describes as essential or critical is not claimed, a new or amended claim must be rejected under 35 U.S.C. 112 (a) as lacking adequate written description.” The “essential or critical” elements are intentionally highlighted and used as a reason to reject an application. On the other side, regarding the satisfaction www.chinaipmagazine.com 5-6/2014 China IP 75 of the written description requirement for a generic claim, the MPEP expressly states that “the written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species. A ‘representative number of species’ means that the species which are adequately described are representative of the entire genus.” Similar provisions can also be found in the section “Addition of Generic Claim.” That means that the written description requirement must be satisfied either by the application or amendment. In other words, the same standard is applicable to both applications and amendments.

As identical clauses are used to regulate the written description requirements f o r f i l i n g and amendment, and no provision in the MPEP explicitly states that the applicable standards are the same, this indicates that any amendment, which contains the elements described by the applicant as essential or critical, must be supported in the written description. The same applies to an amendment to a genus claim. The legislative intents for the support requirement and the amendment requirement are consistent in the U.S., which is, however, not the case in China.

(III) Prior art to be taken into account or not in determining out-of-scope amendments

The MPEP 2163 II indicates that an amendment is determined by a person skilled in the art, who has the common knowledge in the art as of the filing date. The more common knowledge exists in the art, the less the specifications need to describe the invention in detail. With respect to prior art, it only states that the examiner should still consider the subject matter added to the claim in making rejections based on prior art, since the new matter rejection may be overcome by the applicant. From it, the author argues that in determining whether an amendment is “expressly, implicitly, or inherently supported in the originally filed disclosure,” the common knowledge in the art needs to be considered, but cannot be extended to beyond the prior art on the filing date. Moreover, in another case as mentioned in the Chisum on Patents (Section 7.04), the Federal Circuit Court drew a similar conclusion: An amendment can only be extended to apply to all the content disclosed, rather than any content that a person skilled in the art deems obvious in the said disclosure. For this, the author believes that from the possession requirement, non-obvious content should be taken into account in determining whether an amendment is within or without the scope.

IV. European or American provisions to borrow

(I) Legislative intents are in the same strain

From the above, the legislative intents are very similar in Europe, the U.S. and China, in that all the legal provisions allow an applicant to amend his application within the boundaries defined in the filed application. Such amendment should not go against or beyond the true expression of intention by the applicant, thereby damaging the legal security of third parties relying on the content of the original application.

In Article 33 of China’s Patent Law, the basis for determining out-of-scope amendments has never been changed, which is always the “scope recorded.” In other words, the legislative purpose has remained the same. That is, the line of demarcation between an applicant and any third party is drawn only by the application on the date filed, to prevent the applicant from being unfairly enriched and protect third parties from being damaged by relying on the content of the original application. Whatever terms are used, be it the “information disclosed,” the “information recorded,” “information derived,” “information confirmed,” fundamentally the information in the record should be obtained from the original application.

(II) “Scope recorded” cannot extend to include obvious content

From the legislative intent of Article 33 of China’s Patent Law, an applicant can only benefit from what he has invented. An amendment that introduces any element that is not part of the technology of the invention in the original application will unfairly enrich the applicant and damage the legal security of third parties. Therefore, an applicant should, in his application, describe the technology sought to be patented in a clear and complete manner, so that people skilled in the art can, soon after reading the description, understand and reproduce the technology. This is the basis on which to disclose the technology in exchange for protection under the Patent Law. For this reason, an applicant, in writing his application, should directly describe the technological information that he wants to protect. He should directly declare his true intention rather than rely on implied expressions. Any technological information that is not described in the application and will not be thought of by people skilled in the art after reading the description should not be the basis for a line of demarcation between the applicant and any third parties. It is certain, however, that an application does not need to contain technologic information that is not connected with the contribution of the inventor and is self-evident to people skilled in the art from a technological perspective. Such technological information is deemed disclosed by implication.

(III) Article 33 and Article 26 (4) are essentially different from each other

At the very beginning the two articles are different from each other in legislative intent. Article 33 intends to use the application filing date as the basis on which to draw a line of demarcation between the applicant and third parties. It allows an applicant to amend his application, but without damaging the legal security of third parties. It takes into account the scope that people skilled in the art can define directly and unambiguously from the original application. Article 26-(4) intends to determine whether the technology obtained by people skilled in the art either directly from or by the sum of the contents disclosed in the specification is the technological contribution of the applicant.

Second, the two articles are different from each other on the basis of scope determinations. Article 33 determines on the basis of the “scope recorded in the original specification and claim,” and the information that people skilled in the art can define, directly and unambiguously, by using their existing common technologic knowledge and the prior art specified in the original application. Article 26 (4) determines on the basis of the “scope disclosed in the specification” that people skilled in the art define on the basis of the explicit information written in the original specification and also by considering the related prior art, using normal experimental or analytical methods and with reasonable prediction. This scope is apparently different from the “scope recorded” in the specification under Article 33.

Of course, we never want to deny that the scope supported (or disclosed in the specification) and the scope recorded (in the application) may coincide with each other. In the Seiko Epson Cartridge case, for example, the specification describes all the distinctive variants of a sufficient number of storage devices. Thus, the amendment to the storage device does not extend beyond, but is supported in, the scope recorded in the original application. However, the coincidence does not mean that the standards in the two articles can be used interchangeably. Within the existing architecture of the Patent Law, it is difficult, if not impossible, to define the demarcation that satisfies both the support requirement and the not-out-of- scope requirement.

V. Conclusion and recommendation

The comparison finds that Chinese provisions and their European and American counterparts contain very consistent legislative intents and ways of operation. However, a few incorrect opinions have been taken for granted for many years in academic circles and need to be corrected. For instance, one opinion suggests that China should relax the standard for determining out-of- scope amendments and become identical with the American standards because standards are the same in two aspects. But different legal provisions have different purposes. Article 33 is used to regulate the pool of technologic information that an applicant is aware of and expressly discloses to the public. The information, i.e. the scope recorded in the original specification and claim, is the basis on which a line of demarcation is drawn between the applicant and the public. Article 26-(4), on the basis of the scope recorded in the original application, allows people skilled in the art, with logical reasoning and definite experimental or other noncreative efforts, to extend the scope disclosed for extended protection. The obviousness test, in addition, is the criterion for determining whether an invention contains substantially distinctive elements by using the three-step approach. Therefore, the support test or the obviousness test is unacceptable because it mixes the legislative purposes of different provisions.

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