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INTELLECTUAL PROPERTY NEWS
CONTENTS OF THIS ISSUE
skilled in the art by totalizing the whole statement in Amendment Requirements of
Chinese Patent Applications
the originally attached description, etc. If, therefore, an Compared with Those of
amendment does not introduce new technical matters in Japanese Patent Applications
connection with the technical matters introduced in this - Based on the Seiko Epson Ink Cartridge
way, it can be said that the amendment shall be made Decision -
within a scope of "matters stated in the originally filed description, etc." (Reference: A request for cancellation of trial decision, Decision by the Intellectual Property High Court, Grand Panel, May 30, Heisei 20 (2008), In the examination of Chinese applications, amendment (Heisei 18 (2006) (Gyo-Ke) No. 10563) "Solder-resist").
requirements are judged relatively strictly. Amendments On the other hand, regarding amendment requirements, that are permitted in the USA or Japan are often not Article 33 of the Chinese Patent Law provides that "an allowed by Chinese examiners. Therefore, it is essential applicant may amend his or its application for a patent, for applicants to bear this amendment restriction in but the amendment to the application for a patent for an mind when preparing application documents and to invention or utility model may not go beyond the scope make a voluntary amendment prior to issuance of an of the disclosure contained in the initial description and Office Action. However, in recent years the Supreme claims" and appears to specify the same requirements Court has rendered successive decisions that relax the as those of Article 17bis (3) of the Japanese Patent Law. amendment content restriction and the trend of the However, the Examination Guidelines explain that the decisions has been attracting attention.
"scope described in the initial description and claims" represents the "literal content of the initial description 1. Judgment Standard of Amendment
and claims, and the content that can be directly and Requirements in Japan and China
unambiguously determined from the literal content of the initial description and claims, and drawings." (1) General rule
In Chinese examination practice, the phrase "can be With reference to the amendment requirements, directly and unambiguously determined" is strictly Article 17bis (3) of the Patent Law of Japan sets out that interpreted. According to the "examination internal ". any amendment of the description, scope of claims operation rules" referred to by examiners, the judgment or drawings . shall be made within the scope of the standard is specified as "the content that can be uniquely matters stated in the description, scope of claims or determined from the literal content of the initial drawings originally attached to the application . " In description and claims, and drawings." Therefore, addition, the Examination Guidelines explain that the in general examination, basically, nothing other than "matters stated in the originally attached description, the content unchanged from the text of the initial etc." refer to technical matters introduced to a person description and claims or the text to which a minor change in expression was added is permitted. In this reproducing apparatus in view of another statement in respect, whether an amendment is permissible or not the description (the statement of technology, etc. for in China appears to be examined based on a judgment reducing battery power consumption by adjusting the standard different from that of Japanese examination power supply when the recording and/or reproducing apparatus receives no operation command), the amendment is permitted. (Reference: A request for (2) Judgment example
cancellation of decision of cancellation, Decision by The Examination Guidelines on the Japanese the Tokyo High Court, February 19, Heisei 14 (2002) amendment requirements provide the following (Heisei 10 (1998) (Gyo-Ke) No. 298) examples to illustrate what kind of amendment is permitted or not permitted. An English translation of The Examination Guidelines of Japan relating to the Examination Guidelines is available at http:/ www.
amendments was revised in 2003, and on that occasion the judgment standard on the scope within which [Example 1] Amendment for changing the matters amendment can be made was changed from the matters used to specify the invention (example of prohibited "directly and unambiguously" deduced by a person skilled in the art from the disclosures of the description Amendment for changing the phrase "when control or drawings to "obvious matters from the disclosures of means are not executed normally" in claims to the phrase the originally attached description, etc." The current "based on a negation signal in case control means are Examination Guidelines were created by the revision of not executed normally" is intended to be made. If the the Examination Guidelines in 2010.
originally attached description, etc. merely states that, On the other hand, a typical example of the violation of when the control means are not executed normally, the Article 33 of the Patent Law in the Chinese examination absence of a positive signal lasts for a predetermined practice is as follows.
period of time and a resetting signal occurs, the amendment is not permitted. This amendment adds a [Example 1] Concretization of publicly known technology case of occurrence of the resetting signal based on "a According to the above "examination internal operation negation signal," which is different from the no signal rules," if the originally attached description and state, and which is not, however, stated in the originally claims set forth that "members A and B are coupled attached description, etc. (Reference: A request for in a commonly used method" and the coupling cancellation of decision of cancellation, Decision by method commonly used in the present field includes the Tokyo High Court, November 6, Heisei 13 (2001) soldering, fastening with a rivet, inlay, fastening with (Heisei 12 (2000) (Gyo-Ke) No. 221) a nail and fastening with a bolt, each of the following three amendments is deemed to violate Article 33 of [Example 2] Amendment for limiting part of the matters the Patent Law. Referring to the disclosures of the used to specify the invention (example of permitted originally attached description, the content added by these amendments can be presumed to be included in a Amendment changing "a recording or reproducing plurality of choices based on publicly known common apparatus" in claims to "a disc recording or reproducing sense, but since there are other possible choices, they apparatus" is intended to be made. What is stated in cannot be said to correspond to the scope that can the originally attached description, etc. as an example be "uniquely" and "directly and unambiguously" is a reproducing apparatus intended for CD-ROMs. However, if it is extremely clear that the amendment is /1/ The members A and B are coupled in a commonly applicable not only to a reproducing apparatus intended used method, such as soldering, fastening with a for CD-ROMs but also to any disk recording and/or rivet and fastening with a bolt.
/2/ The members A and B are coupled by soldering.
However, will the Examination Guidelines also be /3/ The coupling method of the members A and B changed in China based on court decisions, as the is one of soldering, fastening with a rivet, inlay, Examination Guidelines were revised in Japan based fastening with a nail and fastening with a bolt.
on court decisions? Regarding the following decision, a number of commentaries have been already offered [Example 2] More generic idea by Chinese lawyers, but this paper reviews the decision If the description sets forth "a reproducing apparatus from the standpoint of comparison with Japan.
intended for CD-ROMs," the amendment changing "a recording or reproducing apparatus" in claims to "a 2. Chinese Precedent Regarding
disc recording or reproducing apparatus" is deemed the Judgment of Amendment
to "fulfill amendment requirements" according to the Requirements (Decision Rendered by
Japanese examination guidelines, since "it is extremely the Supreme Court on December 25,
clear that the invention is applicable not only to a reproducing apparatus intended for CD-ROMs but also to any disk recording and/or reproducing apparatus In recent years the Supreme Court has rendered in view of another statement in the description (the decisions that relax the existing Chinese Examination statement of technology, etc. for reducing battery Guidelines relating to amendment requirement, and power consumption by adjusting the power supply these decisions have been attracting attention.
when the recording and/or reproducing apparatus The case concerns a request for cancellation of an receives no operation command)." However, in the invalidation trial decision relating to Chinese Patent No. Chinese examination practice, it is highly likely that the 00131800.4, which is owned by Seiko Epson Corporation amendment is deemed to violate Article 33 of the Patent and whose title of invention is "ink cartridge." Claim 1 Law. Since the term "disc recording or reproducing and relevant drawings at the time of granting the patent apparatus" is not directly described in the originally are as follows (The parenthesized drawing numbers in attached description, etc. and the term "a recording or the claims were added by the author.) reproducing apparatus" can include apparatuses other than the "disc recording or reproducing apparatus," the amendment cannot be said to be the "only" one that can An ink cartridge (40) mountable on a carriage of an be "directly and unambiguously" determined from the inkjet printer to supply ink to a recording head of the originally attached description, etc.
inkjet printer through an ink supply needle, the ink cartridge comprising: a plurality of walls; As can be understood from the foregoing, in Japan the an ink supply port (44) formed on a first wall of the times of the "direct and unequivocal" standard have plurality of walls and configured to receive said ink long gone, but in China, such a standard appears to supply needle and; a memory device (61) supported by said ink cartridge In the judgment of Article 33 of the Chinese Patent and storing ink-related information; Law, the "scope described in the initial description a circuit board (31) attached to a second wall and claims" is the "only scope that can be determined" crossing the first wall of said plurality of walls, and from the disclosures of the initial description, and this located on the midline of said ink supply port; and scope is clearly narrower than the "scope that can be a plurality of points of contact (60) formed on an logically determined" by a person skilled in the art external surface of said circuit board, said points from the disclosures of the initial description based on of contact being a plurality of points of contact his/her common general technical knowledge.
configured to bring said memory device in contact with the inkjet printer and forming a plurality of Patent Law. The grounds of the trial decision were that the entirety of the description including the Examples discloses only the "semiconductor memory device," and that the "memory device" disclosed in the "background art" represents that of the background art and does not represent a component of the invention of the present application.
In an administrative lawsuit against this trial decision, the first-instance court rendered a decision that upholds the grounds and the conclusion of the invalidation trial decision. However, the second-instance court ruled that the amendment did not violate Article 33 of the Patent Law and dismissed the invalidation trial decision and rendered a decision by which the present patent reverted to the examination stage. The grounds of the second-instance decision were that "since in the description of the present case, the 'memory device' could be interpreted to be used as an abbreviation of the 'semiconductor memory device,' the amendment did not correspond to the addition of a new matter."In response to this, the demandant for the invalidation trial filed an appeal with the Supreme People's Court for a retrial of his case. In the retrial, while the Supreme People's Court pointed out errors in the grounds of the During the examination of the present patent, the decision of the High Court, in conclusion it upheld the applicant amended a "semiconductor memory device" second-instance decision. The essential points of the in claim 1, etc. to the "memory device." The relevant decision were as follows.
disclosure of the description is found in the Background "The judgment of the second-instance court to the Art section and reads as follows. "Although a result effect that the ‘memory device' in the claims was an by such technical development can be applied to a abbreviation of the ‘semiconductor memory device' newly manufactured ink-jet recording apparatus, the is erroneous. The ‘memory device' in the description application to a recording apparatus already shipped is used as a generic idea of the ‘semiconductor from a manufacturer would be practically impossible memory device.' However, from the disclosures of the when taking into consideration the cost, labor, and other description, drawings and claims of the present case, a factors. This is because the recording apparatus has to person skilled in the art could easily conceive of using be carried to the manufacturer and memory means in other memory devices and replacing the ‘semiconductor which control data is recorded must be exchanged." memory device' with them, and could deduce that the The Example section of the description discloses only invention of the present case can be applied to the ink the "semiconductor memory device 61" corresponding cartridge using a non-semiconductor memory device in to the component 61 in the drawing.
the same way. Hence, the amendment does not exceed Regarding this patent, a request for an invalidation trial the scope described in the initial description, etc." was made and the patent re-examination committee In addition, the decision explains the general judgment rendered an invalidation trial decision on the grounds standard on Article 33 of the Patent Law as follows.
that the above amendment violates Article 33 of the "The scope described in the initial description and claims should include the content clearly expressed passing judgment on the trial decisions made by the literally and graphically in the initial description and Patent Office in the lawsuits for cancellation of trial attached drawings, and claims, and the content directly and clearly deduced by a person skilled in the art from On the other hand, independence of the Intellectual all of the initial description and attached drawings, and Property Office from courts is relatively high in China, claims, and as long as the deduced content is clear to a and in general, even a decision by the Supreme Court is person skilled in the art, the content should be found not readily reflected in the Guidelines for Examination. to be included in the scope described in the initial Hence, it can hardly be said that the above decision description and claims." rendered by the Supreme Court is readily reflected in This judgment made by the Supreme Court is the examination practice. However, it is well known significant, since it indicates a tendency to widen the that the courts have demonstrated the tendency to relax "scope described in the initial description and claims" the judgment standard of Article 33 of the Patent Law. in the judgment of Article 33 of the Patent Law from If in the process of obtaining Chinese patent protection, the "only scope that can be determined" to a "scope that an applicant faces the problem of unavoidable violation can be reasonably determined" based on the disclosures of amendment requirements, it is worth remembering of the initial description, etc. Almost simultaneously that there is a chance that the way will be opened up if s/ with the case, a similar judgment was also made he directly contacts the examiner by phone and consults public in the case of "amlodipine irbesartan compound him on an acceptable amendment and cites the above preparation" (ruled by the Supreme People's Court on court view in a written argument. In the invalidation October 8, 2011).
trials, the number of cases in which the trial decision is invalidated on the grounds of the violation of Article 33 of the Patent Law is still high. However, we would like to add that if the applicant files an administrative lawsuit In Japan, on the basis of a decision of the Intellectual and the case is reviewed in a second-instance trial or Property High Court on May 30, Heisei 20 (2008), the further retrial, there is a chance that the judgment of the Patent Office announced that "consistency with the trial decision may be overturned.
Grand Panel decision will be made without changing the examination practice based on the existing Examination Guidelines." Takako ITO (Ms.) It remains doubtful whether or not the concrete Patent Attorney Admitted in Japan.
amendment examination practice at the Japanese Patent * This article was provided in cooperation with Shangcheng & Office conforms to the court practice concerning the Partners, in Beijing, China. She used to be a member of our amendment in court. In fact, even after the revision of the firm and currently works for the Chinese patent firm.
Examination Guidelines, in the lawsuits for cancellation of trial decisions in court, there are examples in which the trial decisions on the amendments made by the Patent Office were cancelled.
However, it can be said that in Japan, the standard of the Grand Panel decision of the Intellectual Property High Court was promptly adopted in the Examination Guidelines, at least formally. In Japan, courts and the Patent Office are different organizations in the judicature and administration, but the courts can exert influence over the practice of the Patent Office by HOMEPAGE ADDRESS: http://www.yuasa-hara.co.jp LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING C h i e f e d i t o r : YABE, KozoAssistant editor : TERACHI, Takumi Section 206, New-Ohtemachi Building, 2-1, Ohtemachi 2-chome Editorial staff : OKAMOTO, Yoshinori; HIROSE, Shinobu; Chiyoda-ku, Tokyo 100-0004, Japan ARAI, Noriyuki; TAKEYAMA, Naoharu; AOSHIMA, Emi; NAKAMURA, Shogo; This newsletter pertains to general information and should not be taken as offering either legal advice or opinion relative to specific situations. The newsletter is intended to inform our clients and friends about matters of recent interest in the field of Intellectual Property Laws. If readers have any questions regarding topics in the newsletter, please contact the editor-in-chief, at the Law Division of our firm.

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