An increasing number of foreign enterprises and individuals have filed Chinese patent applications in recent years. However, as the patent laws and regulations of China contain provisions not found in other jurisdictions, it is necessary to adopt an effective strategy when drafting a patent application that aligns with domestic patent practice so as to obtain effective patent protection in China.
When describing key technical content, use varying technical perspectives and degrees of generalization. The Patent Law and Guidelines for Patent Examination set strict stipulations on amending documents. Namely, amendments to patent application documents should be documented in the original description and claims, or be capable of being directly and unambiguously determined from the original description and claims.
More specifically, if the original application documents only describe specific technical content, further summary or generalization of the technical content will normally not be permitted once the application has been filed. If the broad scope sought in the original claims is challenged by prior arts, the applicant will have to limit their claims in line with the specific technical content in the original description, resulting in an unduly narrow scope of protection.
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Accordingly, it is necessary for the applicant to use different degrees of generalization and technical perspectives in describing the key technical content in the patent application description. For example, if the specific technical content is the formula G=R2+R and R>1, a number of intermediate generalizations can be added in the original description based on the function of the formula in the technical solution, e.g. G increases as R increases; when R increases by a specific quantity, G will increase by a quantity greater than the specific quantity; when R=0, G=0.
Using varying technical perspectives and degrees of generalization to describe key technical features makes it much easier to amend the claims as desired after the application has been submitted in order to avoid having to unduly narrow down the claims in order to obtain patent rights.
Place important technical features in dependent claims. The examination guidelines stipulate that the specific methods of revising claims once a patent has been granted are generally limited to the deletion and combination of claims and the deletion of technical solutions. Furthermore, in general, technical features not included in granted claims may not be added to claims.
Here it can be seen that once a patent has been granted, a patent holder may not use information in the description to overcome deficiencies, even where the description contains technical information that can overcome deficiencies in the claims. Accordingly, dependent claims may be the only means of remedying a fatal deficiency in an independent claim.
Given these strict limitations on revision once a patent has been granted, important technical content should be included in the dependent claims when drafting the patent application to the greatest extent possible, so that the dependent claims can serve as a sturdy bulwark that makes up for the deficiencies in the independent claims.
Dependent claims should address not only challenges posed by prior art, but also possible deficiencies, e.g. a lack of clarity in the independent claims or lack of support for a technical solution from the description, so as to sufficiently fulfil their protective role.
Do not indiscriminately pursue the broadest scope of protection. The doctrine of equivalents may be applicable in Chinese patent infringement actions, and the doctrine of prosecution history estoppel can be a limit to the doctrine of equivalents.
If a claim is granted after amendment and statement of limiting opinions, it is likely to be subject to the doctrine of estoppel in a patent infringement action. If a similar claim has not been subject to substantial amendment or a statement of limiting opinions, it may better be able to enjoy the application of the doctrine of equivalents. Thus the unbending pursuit of the broadest scope when drafting a patent application may produce the opposite result, while drafting claims with the appropriate scope of protection may, contrarily, be more beneficial in an infringement action.
A stable right is a key condition to securing effective patent protection. As mentioned above, due to strict limitations on revision once a patent has been granted, carrying out sound revision when responding to an official action is conducive to securing a stable right. Not doing so and putting one’s hopes instead on remedies that may be available after a patent has been granted could expose one to numerous significant risks.
Draft several types of independent claims for a computer-related patent application. Although there has been a large number of computer-related patents granted in China, patent infringement cases have not clearly indicated what kinds of claims can effectively protect computer-related inventions or how the scope of protection of such claims is to be interpreted. To the contrary, these cases serve more to demonstrate that the requirements in respect to the drafting of patent documents are inconsistent between the courts and the patent office.
In order to respond to existing uncertainty in patent infringement judicial procedure as effectively as possible, we would recommend that several types of claims be included in applications for computer-related patents. These could include process claims, apparatus claims comprising functional modules or apparatus claims comprising specific hardware combined with a processor or controller. A detailed description of the hardware environment should also be provided.
Conclusion
Chinese patent laws and regulations may contain provisions unlike those in those of other countries, but fully understanding and addressing these provisions when drafting patent applications, as described above, is conducive to securing more effective patent protection in China.
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Wei Xiaowei is a patent attorney of CCPIT Patent and Trademark Law Office. She can be contacted on +86 10 6604 6450 or by e-mail at weixw@ccpit-patent.com.cn
