CHANG TSI
Insights
Section 4.6 of Chapter III in Part IV of the Patent Examination Guidelines stipulates the modification of patent documents in the invalidation declaration procedure as follows:
4.6.1 Modification Principles
The modification of an invention or utility model patent document is limited to the claims and shall be made in response to the reasons for invalidation declaration or the defects pointed out by the collegial panel. The principles are:
The patentee of a design patent shall not modify its patent document.
4.6.2 Modification Methods
On the premise of meeting the above modification principles, the specific methods of modifying 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.
The deletion of claims means removing one or some claims from the claims, such as independent claims or dependent claims.
The deletion of a technical solution means deleting one or more technical solutions from two or more parallel technical solutions in the same claim.
The further limitation of a claim means adding one or more technical features recorded in other claims to the claim to narrow the protection scope.
In the Examination Decision of Invalidation Declaration Request No. 568806, the brief case description is as follows: The requester X filed an invalidation declaration request with the National Intellectual Property Administration against the patent right of an electronic technology company. In response to this invalidation declaration request, the patentee modified the claims of the target patent as announced in the authorization. The collegial panel considered that this modification method was unacceptable and made a decision to declare the patent right completely invalid based on the claims as announced in the authorization.
Regarding the patentee's modification method, for the convenience of readers' understanding, this article omits some claims and features and also makes characterizations (letters represent independent claim features or additional technical features of dependent claims). See the following table for details:
The current Patent Examination Guidelines allow the modification methods of claims in the invalidation declaration procedure to be generally limited to the deletion of claims, the deletion of technical solutions, the further limitation of claims, and the correction of obvious errors. Among them, compared with the deletion of claims, the deletion of technical solutions, and the correction of obvious errors, the further limitation of claims leaves relatively loose and flexible modification possibilities for the patentee. The Patent Examination Guidelines define the further limitation modification as "adding one or more technical features recorded in other claims to the claim to narrow the protection scope". Therefore, when judging whether a certain claim modification method belongs to "further limitation", it is only necessary to examine: (1) Whether the modified claim completely contains all the technical features of the original claim; (2) Whether the modified claim has added new technical features compared with the original claim; (3) Whether the newly added technical features all come from other original claims. If the modified claim does not completely contain any original claim or the newly added technical features compared with the original claim do not come from other original claims, then this modification method may be "rewriting" or "secondary generalization" of the claim rather than "further limitation".
Returning to this case, the modified claims submitted by the patentee are essentially as follows: Deleting the original claims 1 - 3 and taking the original dependent claim 4 as the new independent claim 1; Adding the additional technical features of the original dependent claims 5 and 6 to the original independent claim 1 in an "or" manner to obtain the new independent claim 7; Modifying the original dependent claims 7 and 8 - 11 to directly or indirectly refer to the new independent claim 1 to form the new dependent claims 2 - 6, and also modifying the original dependent claims 7 and 8 - 11 to directly or indirectly refer to the new independent claim 7 to form the new dependent claims 8 - 12, and making adaptive modifications to the serial numbers and reference relationships of the remaining claims. Thus, the original dependent claims 7 and 8 - 11 refer to both the new independent claim 1 and the new independent claim 7.
The specific reasons why the collegial panel did not accept the above modification method are as follows:
For this patent, after the original dependent claims 7 - 11 are further limited and modified to become the new dependent claims 2 - 6, the original dependent claims 7 - 11 no longer exist in the modified claims and cannot be further limited again. However, the new dependent claims 8 - 12 essentially further limit the original dependent claims 7 - 11 again, so it does not conform to the regulations on the modification of patent documents in the invalidation declaration procedure in Section 4.6 of Chapter III in Part IV of the Patent Examination Guidelines.
1. Whether the Combination of Claims Is Equivalent to the Modification Method of "Further Limitation"
The combination of claims means incorporating all the technical features of the combined multiple claims into one claim. If only all the technical features of a dependent claim are incorporated into the independent claim it refers to, the new claim obtained by this combination method has essentially the same content and protection scope as the original dependent claim. It should be noted that the protection scope of the new claim obtained by the "further limitation" method should, in principle, be smaller than, rather than greater than or equal to, the protection scope of any combined claim. For example, in this case, the new independent claim 1 seems to be obtained by combining the additional technical features of the original claims 2, 3, and 4 into claim 1, but the protection scope of the new independent claim 1 is actually equivalent to that of the original claim 4. Therefore, the new independent claim 1 is not obtained by "further limiting" the original independent claim 1, but by deleting the original claims 1 - 3 and taking the original claim 4 as the new independent claim 1. Another example is that the new dependent claim 2 in this case is actually obtained by combining the original claim 7 and claim 4, and the protection scope of the new dependent claim 2 is smaller than that of the original claims 7 and 4 before combination. This modification method belongs to the "further limitation" of the original claim 7. It can be seen that the combination of claims is not necessarily equivalent to the modification method of "further limitation".
2. Whether the Modification Method of Changing the Hierarchical System of Claims by Adding Claims Should Be Accepted in the Invalidation Declaration Procedure
In this case, the patentee added a new independent claim 7 and its corresponding dependent claims, changing the original set of claims (original claims 1 - 11) into two sets of claims (new claims 1 - 6 and 7 - 12). The collegial panel accepted the new independent claim 7 because the new independent claim 7 is from the original dependent claim 5 or 6, which is an original claim of this patent and not a new claim formed through modification. It is of course the basis for examination and does not have the problem of being unacceptable due to so-called modification.
Similarly, see the case of "(2021) Supreme Court Intellectual Property Final Case No. 556" (from the Abstract of Judgments of the Intellectual Property Tribunal of the Supreme People's Court (2023)): Company A filed an invalidation request for the patent in question. The patentee modified the claims of the patent in question. The National Intellectual Property Administration declared the patent right in question completely invalid. Company A was not satisfied and filed a lawsuit with the Beijing Intellectual Property Court, requesting to revoke the sued decision. The Beijing Intellectual Property Court rejected Company A's lawsuit request. Company A was not satisfied and appealed to the Supreme People's Court. The focus of the dispute about claim modification in this case is whether the technical solutions of modified claims 4, 7, 11, 12 and claims 8 - 10 referring to claims 4 and 7 should be accepted. After hearing, the Supreme People's Court held that: The modified claims 4 and 7 are actually the original claims 3 and 13, and they are not actually combined from the original claims 1 and 3 and the original claims 9 and 13 respectively. The modified claims 4 and 7 are all original claims of this patent and should be accepted.
It can be seen that whether the modification method of changing the hierarchical system of claims by adding claims can be accepted depends on whether the claim modification method itself conforms to the regulations of the Patent Examination Guidelines. Unmodified claims are of course the basis for examination and do not constitute an evaluation object for legal or other restrictions on claim modification. Therefore, when confirming the basis for examination, it should first be clear whether the relevant claim is an original claim or a new claim formed through modification. For claim modification, a substantive examination should be carried out, with the substantive change of the protection scope before and after modification as the basic basis. Generally speaking, simple adjustments in writing that do not substantially affect the protection scope, such as simple changes in claim serial numbers, simple conversions in the writing methods of dependent claims and independent claims, and simple splitting of claims containing parallel technical solutions, do not constitute claim modification.
3. Whether a Claim Can Be Modified by "Further Limitation" Multiple Times
Section 4.6 of Chapter III in Part IV of the Patent Examination Guidelines stipulates the modification principles of patent documents in the invalidation declaration procedure, that is, the modification of claims should be made in response to the reasons for invalidation declaration or the defects pointed out by the collegial panel. That is to say, the modification of claims in response to invalidation declaration must be based on the reasons for invalidation declaration or the defects pointed out by the collegial panel. In this case, in response to the invalidation request filed by the requester, the patentee further limited and modified the original dependent claims 7 - 11 to become the new dependent claims 2 - 6, that is, the patentee has made a responsive modification to the invalidation reasons. After that, the patentee further limited and modified the original dependent claims 7 - 11 again to form the new dependent claims 8 - 12, which is a non-responsive modification and violates the modification principles stipulated in the Patent Examination Guidelines. Therefore, the new dependent claims 8 - 12 should not be accepted. It can be seen that in the invalidation declaration procedure, a claim cannot be modified by "further limitation" multiple times in response to the same invalidation reason or defect pointed out by the collegial panel. Only one responsive modification is allowed.
Similarly, refer to the case of "(2021) Supreme Court Intellectual Property Final Case No. 556" again. The judgment puts forward the following requirements for the purpose of modifying patent documents in the invalidation declaration procedure:
The patent validation procedure is a procedure to test the authorization legitimacy after the claim has been authorized because it is invalidated by others. It is neither a comprehensive review procedure for authorization legitimacy nor a procedure for optimizing claim writing. Therefore, the modification of claims in the patent validation procedure should generally be limited to responding to the reasons for invalidation declaration (including the reasons for invalidation declaration or supplementary evidence put forward by the invalidation requester and the reasons for invalidation declaration or evidence not mentioned by the invalidation requester but introduced by the National Intellectual Property Administration). Modifications that are made in the name of overcoming the defects pointed out by the reasons for invalidation declaration but actually aim to optimize claim writing, that is, non-responsive modifications, can be rejected because they do not conform to the institutional positioning of the patent validation procedure. Otherwise, it is not difficult to imagine that once non-responsive modifications can be accepted, the patent validation procedure will inevitably be transformed into a tool for obtaining additional opportunities to optimize claim writing after authorization. This is neither conducive to improving the quality from the beginning of writing and authorization nor conducive to the real function of the invalidation declaration request procedure, and will also lead to an imbalance in the interests of the public, including relevant stakeholders, after patent authorization. Therefore, for non-responsive modifications, even if they do not exceed the so-called "information scope" and "protection scope" and belong to the modification methods allowed by the Patent Examination Guidelines, they can be rejected. For example, if the modification of a claim lacks the corresponding invalidation request and reasons, generally, there is no need to further examine its modification scope and method, and it can be directly rejected. Another example is that in the same administrative review procedure, when the reasons for invalidation declaration of a claim have been responded to by modifying the claim and the modified claim has been accepted, further modifications of the original claim and the corresponding new claims obtained generally no longer have a response object and can be rejected.
