Restrictions of Claim Amendment in Nullity Proceedings

A few months ago, two nullity actions were initiated against two Chinese patents before Patent Reexamination Board (hereinafter referred as “PRB”) and both Patents were decided to be invalidated after the proceedings. The prosecution histories of the Chinese patents revealed that the patent owner applied exactly the same set of claims as their parallel national patents in Japan and United States.

As is known to all, patent laws, procedures and practices may vary substantially in different countries. Therefore, a patent may be stable under the patent law of one nation, while its parallel patent may be vulnerable and subject to invalidation in another nation.

In the nullity proceeding of the case above, the claimant alleged that all technical features as defined in the independent claims have been disclosed in the prior art and therefore the patent should be invalided. If the nullity action happens in Japan, the usual strategy for the patentee would be amending the claims by replacing the generic (superordinate) technical features with specific (subordinate) technical features disclosed in the original specification. However, such amendments are not allowed under China Patent Law.

Article 69 of Implementation Regulations of the Patent Law of China and Section 6.4, Chapter 3, Part IV of Patent Law of China and Patent Examination Guideline of China,

any amendment to the claim in the nullity proceeding shall comply with the principles:

(1) the title of the subject matter of a claim may not be changed;

(2) the extent of protection may not be extended as compared with that in the granted patent;

(3) the amendment may not go beyond the scope of disclosure contained in the initial description and claims; and

(4) addition of technical features not included in the claims as granted is generally not allowed. In addition, the patent document of a design patent may not be amended.

Furthermore, the claim amendment in nullity proceedings is limited to three manners as followed: 1) deletion of a claim means one (or more) claim;

2) combination of claims means that two or more claims dependent on a same independent claim and having no relation of dependency are combined together; and

3) deletion of a technical solution means to remove one or more technical solutions from several parallel technical solutions defined in the same claim.

It is worth noting that the combination of claims mentioned above is applicable ONLY in three situations:

(1) in response to the request for invalidation;

(2) in response to causes for invalidation or evidence added by the petitioner;

(3) in response to causes for invalidation or evidence not mentioned by the petitioner but introduced by the PRB.

In the case discussed above, the patentee is restricted from including specific technical features stipulated in specification into the claims. Eventually, the claims are believed to be lack of novelty and decided to be invalidated.

Thus, considering the differences in law and practices of different nations, it is strongly recommended to approach a Chinese patent attorney for reviewing the claims to avoid possible future issue before filing of national application.