Patent Administrative Litigation

Claim construction is the core of the Patent Law, a constant focus in patent examination and infringement judgments.

Article 2(2) of the Patent Law provides the basic definitions of inventions and utility models.

According to the provisions of Article 26(3) of the Patent Law, the description shall set forth the claimed invention or utility model in a manner sufficiently clear and complete so as to enable a person skilled in the relevant art to carry out the invention or utility model based on what is recited in the description to solve the technical problems and produce the expected technical effects.

A claim shall be supported by the description, which means that the technical solution in a claim shall be one that a person skilled in the art can conclude or generalize from the sufficiently disclosed content of the description, and shall not exceed the scope disclosed in the description. The reason why it is required by the Patent Law that claims be supported by the description is that the protection an applicant receives should commensurate with his or her contribution to the society, i.e., the protection scope of claims shall be the same as the scope disclosed in the description, neither overly broad to exceed the scope disclosed in the description, nor overly narrow to hurt the entitled rights and interests of the applicant for disclosing his or her invention. If the protection scope of a claim is overly broad to include prior art or an invention that (the applicant) has not completed yet but may be accomplished by other inventors in the future, the public’s interests may be harmed.

In drafting an application document, it is required that the essential technical features of solving the technical problems be recited in independent claims. Under the provisions of the Guidelines for Patent Examination, the essential technical features are technical features indispensable for an invention or utility model to solve the technical problems, the aggregation of which is sufficient to constitute the technical solution of the invention or utility model, distinguishing it from other technical solutions recited in the Background Art.

Since 2011, the SPC has expressed its opinions on Article 33 of the Patent Law in a number of cases about the legislative intent, meaning, and understanding of this article.

Article 23 of the Patent Law provides that any design for which patent right may be granted, first, shall not be a prior design, nor has any entity or individual filed before the date of filing with the patent office an application relating to the identical design and disclosed in patent documents announced after the date of filing; second, shall significantly differ from a prior design or the combination of prior design features; third, must not be in conflict with the legitimate right obtained before the date of filing by any other person.

Article 33 of the Patent Law has been very controversial in the industry in recent years.

Under the current Guidelines for Patent Examination, the reexamination procedure is a relief procedure initiated by the patent applicant who is dissatisfied with the decision of rejection of the application by the Patent Office; meanwhile, it is a continuation of the examination and granting procedure for a patent application. This dual nature determines that the Patent Reexamination Board normally restricts its examination to the grounds and evidence on which the decision of rejection is based, and is not obliged to undertake a comprehensive examination on the patent application.