[co-author: Tao Chen]

When a patentee responds to the challenge in the patent invalidation proceedings in China, sometimes it is necessary to amend the claims in order to obtain a decision from the CNIPA to maintain the validity of the patent right. The "Patent Examination Guidelines"(the Guidelines) specify the timing, principles, specific ways, etc., for amending claims in invalidation proceedings. Let’s get through them item by item.

Timing to Amend the Claims

The timing to amend the claims corresponds to 2 circumstances.

1. Before the PRID (Patent Reexamination and Invalidation Department) makes a decision, the patentee may delete the claims or the technical solutions in the claims.

2. The patentee may amend the claims by means other than deletion within the reply period only in the following three cases:

-Responding to the request for invalidation.

-Responding to the additional reasons or supplementary evidence of the petitioner.

-Responding to the reasons or evidence not mentioned by the petitioner but introduced by the PRID.

Principles and Ways to Amend the Claims

For invention or utility model patent, the amendment is limited to the claims, and the amendment principles are as follows:

-The subject title of the original claim shall not be changed. For example, you cannot change a product claim to a method claim and vice versa;

-Compared with the granted claims, the protection scope shall not be expanded;

-The scope of the original specification and claims shall not be exceeded; and

- Generally, technical features not included in the granted claims shall not be added.

On the premise of satisfying the above principles, the specific ways of amending the claims are generally limited to the deletion of claims, the deletion of technical solutions, the further limitation of claims, and the correction of obvious errors.

Deletion of Claims or Technical Solutions

Deletion of a claim refers to the removal of one or more claims from a claim set. For example, the patentee can delete independent claim 1 and make the original dependent claim 2 the new independent claim 1.

Deletion of technical solutions refers to the deletion of one or more technical solutions from the technical solutions listed in the same claim. For example, claim 1 includes solutions a and b, and solution b is deleted.

Correction of Obvious Errors

What is an "obvious error"? The Guidelines stipulate: "the so-called obvious error means that the incorrect content can be clearly determined from the context of the original specification and claims, and there is no possibility of other interpretation or amendment."

It is permitted to amend obvious errors that can be recognized by those skilled in the art, i.e., grammatical errors, and typographical errors.

Further Limitation of Claims

A further limitation of a claim means that one or more technical features described in other claims are added to the claim to narrow the scope of protection.

The way of "further limitation" amendment highlights two keywords, "add" and "narrow". The way is to "add" new features to a claim, and the result is that the protection scope of the claim is "narrowed". It includes the following three (3) ways.

a. Add one or more technical features of a claim to an independent claim. For example, claim 2 includes features a, b, and c. When amended, feature a, or features b and c are added to the independent claim 1.

b. Add technical features of the multiple claims to an independent claim. For example, claim 2 includes features a, b, and c, and claim 3 includes features d, e, and f, when amended, add features c and f to the independent claim 1.

c. Further limit the dependent claims, when the cited independent claim has been limited.

Next, I would like to show the typical cases of amendments that do not meet the requirement of "further limitation".

a. After limiting the original independent claim, the original independent claim is still retained in the claim set.

The CNIPA believes that after being further limited, the original independent claim becomes a new one, and the original one no longer exists and should not be retained. Therefore, this amendment is not allowed.

b. Combine the technical features in the original claims to add one or more new claims.

As this amendment does not further limit any of the original claims, it neither qualifies as "adding features" nor meets the requirement of "further limitation", therefore this amendment is not allowed.

c. Add different technical features from other claims or add additional features from different dependent claims to the same independent claim to form a plurality of new parallel independent claims.

The CNIPA believes that when features are added to an original independent claim to form a new one, the original one no longer exists. Therefore, it is not permissible to re-introduce other features into the original independent claim to form another or more new independent claims.

d. Only further limit the dependent claims, where the cited independent claim is not further limited.

Since the independent claim has not been amended, the overall protection scope of the claims has not been narrowed, which does not meet the requirement of "narrowing the scope of protection", so it does not belong to the amendment of "further limitation" and is not allowed.

Comments

The main purpose of amendment of claims in invalidation proceedings is to give the patentee an opportunity to amend the claims to maintain the patent right valid, rather than to give the opportunity to rearrange the claims. The best time to orchestrate the claims should be during the drafting stage before filing a patent application.

In the patent invalidation proceedings, the patentee needs to weigh the pros and cons, give careful consideration to the amendment of the claims, and strictly meet the requirements of the examination guidelines on the ways of amending the claims, so as to avoid falling into a disadvantageous situation due to the amended claims not being accepted.