The Application of Article 26.4 of China’s Patent Law and Rule 20.2 of the Implementing Regulations of the Patent Law

2013/1/17By Li Ningxin Examiner for Substantive Examinations at Patent Examination Cooperation Center of the Patent Office, SIPO, Beij,[Patent]

The third amendment of China’s Patent Law (Patent Law) sets a consolidation of provisions of Article 26.4 of the previous Patent Law, from which claims are involved, and of Rule 20.1 of the Implementing Regulations of the Patent Law (Regulations). The current Article 26.4 of the Patent Law is read as follows: ‘The claims shall be supported by the description and shall define the scope of the patent protection sought for in a clear and concise manner.” This article provides a clear definition of the substantive requirements of the claims. Firstly, it specifies the relation between the claims and the description, namely, the claims should be supported by the description. Secondly, it stipulates the scope of the patent protection under the claims, namely, the claims should be clear and concise. It has therefore been the most frequently cited article in office actions. Consequently, an examiner for substantive examinations should focus on how to reasonably apply the article in his/ her examination review on claims in the examination practice.
However, the author finds that there may be confusion when applying the current Article 26.4 of the Patent Law and Rule 20.2 of the Regulations in examining specific issues, and he would like to put forward his solutions to such confusion after discussing the distinctions and connections between the preceding easily confused articles.
I.The Concept Stipulated in Article 26.4 of the Patent Law and Rule 20.2 of the Implementing Regulations of the Patent Law
According to the Article 26.4 of the Patent Law, the claims shall be supported by the description. China’s Guidelines for Patent Examination (Guidelines) stipulates the following on the interpretation of this article: “The claims shall be supported by the description” means that the technical solution for which protection is sought in each of the claims shall be a solution that a person skilled in the art can reach directly or by generalization from the contents sufficiently disclosed in the description, and shall not go beyond the scope of the contents disclosed in the description...If the person skilled in the art can reasonably predict that all the equivalents or obvious variants of the embodiments set forth in the description have the same properties or uses, then the applicant shall be allowed to generalize the protection scope of the claim to cover all the equivalents or obvious variants.
Article 26.4, of the Patent Law also stipulates that the claims shall be supported by the description and shall define the scope of the patent protection sought for in a clear and concise manner. The Guidelines sets out three requirements for such clarity: firstly, the category of each claim shall be clear; secondly, the scope of protection as defined by each claim shall be clear; finally, the claims as a whole shall be clear as well, which means that the reference relations between the claims should be clear. Rule 20.2 of the Regulations provides that “the independent claim shall outline the technical solution of an invention or utility model and state the essential technical features necessary for the solution of its technical problem.” The Guidelines interprets the “Essential technical features” as follows: “Essential technical features refer to the technical features of an invention or utility model that are indispensable in solving the technical problem and the aggregation of which is sufficient to constitute the technical solution of the invention or utility model and distinguish the same over the technical solutions described in the background art.”
II. The difference between Article 26.4 of China’s Patent Law and Rule 20.2 of the Implementing Regulations
1. Support in the description
Article 26.4 of the Patent Law stipulates that “the claims shall be supported by the description, which in essence means that the scope of protection under the claims shall be corresponding to the content of the description,” namely, corresponding to inventor’s contribution to the prior art. Therefore, a claim with proper scope of protection should be written in order to balance the interests between the applicant and the third party. Where the generalization of a claim includes speculated content by the applicant and the effect thereof is difficult to determine or evaluate beforehand, the generalization shall be regarded as going beyond the scope of the contents disclosed in the description. If the generalization of a claim is such that the person skilled in the art has reasonable doubt as to whether one or more specific terms or options included in the generic terms or parallel options cannot solve the technical problem outlined by the invention or utility model and achieve the same technical effects, then it shall be surmised that the claim is not supported by the description. Otherwise, it shall be concluded that the claims are supported by the description.
There is a case in this regard. The applicant intends to describe his first claim as the following:
a.        An over-discharge protection circuit for rechargeable battery (ODPCRB) (14) with characterized in that:
Charging state detection unit (CSDU) (31)...; under voltage detection unit (UVDU)...; memory unit (MU) (34) with one input terminal connected to the foregoing output terminal of the under voltage detection unit and another input terminal connected to the output terminal of the said charging state detection unit. The memory unit operates in the following manner: MU will be set to (a) “1” when CSDU detects a charging current flows in the discharge circuit; (b) “1”and output the enable signal when no such flow is detected and under voltage detection is invalid; and (c) “0” and keep and output the signal of no permission when no such flow is detected and under voltage detection be valid; logic control circuit (35).
 
The examiner points in the office action that:
memory unit (34) is a generic terms in the claims, which generalizes a relatively wide scope of protection with only one example carried out by way of RS flip-flop or D flip-flop in the description. According to the application documents, it is apparently that the output of permission or no permission of the memory unit’ can only be achieved by RS flip-flop or D flip-flop and no other memory unit can do so. A typical example in this regard is that the memory has no such feature, and neither T flip-flop nor a Schmitt trigger can do so. The claim cannot be supported by the description because it is difficult for a person skilled in the art to predict that the technical problem can be solved by all others modes besides the carry-out modes generalized by the generic term for application. The applicant shall limit his or its generic terms to RS flip-flop’ or D flip-flop’ which has support from the description.
The description disclosed the working principle of ODPCRB to the public. It is achieved by way of MU as following: (a) when the voltage difference is less than the set voltage, the CSDU (31) will output a signal of “1” and MU is set to “1”; (b) after being charged by the solar battery panel, the voltage of rechargeable battery (13) will rise to a set voltage. The UVDU will have an output logic so that there is no under voltage, and it is unnecessary to rewrite the MU (34) which will output a signal of “1”; (c) when voltage of the solar battery panel is lower than that of the rechargeable battery (13) at night, the initial MU will output a signal of “1” because there is no charge in the rechargeable battery (13), the Schottky diode or switch circuit will be turned off, and there will be no current flowing in the charging circuit (12); (d) when the difference between the input and output terminal of charging circuit (12) is greater than the set voltage, CSDU (31) will have a output logic that there is no charge and MU (34) will be maintained as “1,” rechargeable battery (13) will provide LED lamp with power; (e) when the voltage of the rechargeable battery (13) decreases to the set voltage due to the energy consumption of the rechargeable battery (13), UVDU will output a clear signal to the MU (34), which will output a signal of “0,” according to which the LED drive circuit (16) will turn LED lights (17) off; (f) when there is no under voltage for rechargeable battery (13), MU will maintain a signal of “1,” according to which the LED drive circuit (16) will input a signal of keeping up lighting all night until the day logic takes control of the circuit (35) and turns it off according to the output signal of the illumination detection circuit (15).
As far as the trigger is concerned, the description states that the memory unit mentioned therein is the trigger where the over-discharge protection circuit is manufactured according to the present invention, including but limited to RS flip-flop, D flip-flop, and other triggers. Therefore, it can be concluded from the above description that the invention is carried out by way of MU and it is able to do so, and the RS trigger or D flip-flop is only a preferred tools for the implementation of the present invention. The MU mentioned under claim 1 is further defined by the specific technical features and should possess the functions of said specific technical features. As a counter-example for question, the notification of opinions of the examination enumerates memory, T flip-flop or Schmitt triggers which do not have the said functions and as a result do not belong to MU under claim 1 and thus cannot be included in the scope of claim 1. The content of claim 1 can be obtained and generalized from the disclosed description and does not go beyond the scope of the description. Therefore, claim 1 is supported by the description and in line with the provisions that the claims shall be written in accordance with the descriptions pursuant to paragraph 4, Article 26 of the Patent Law.
2. Clear and concise statement
Article 26.4 of the Patent Law stipulates that “the claims shall clearly and concisely state the requested patent protection scope in accordance with the descriptions,” which in essence makes it possible for a person skilled in the relevant field of technology to define the scope of protection applied for.
The word “clearly” requires: (a) a precise and clear claim. The claims shall be identified as not in line with the provisions of Article 26.4 of the Patent Law where a ambiguous or ambiguous claim is used as the name of the subject matter, such as a new theory of dynamic simulation of inertia, for the claims, which will make it impossible for a person skilled in the relevant field to determine what the applicant intends to protect: a product or a method? (b) a clear scope of protection for the claims. If there is no clear relation between the features outlined in the claims, it shall be deemed as not in line with the provisions of paragraph 4, Article 26 of the Patent Law because it is impossible to determine the scope of protection of the claims. For example, claim 1 of an application for an invention reads that “the said gearbox includes the detection roller (11) connected to the paper sprocket of coding machine (10)...; the said detection apparatus includes the detection roller (11) connected to the paper sprocket of coding machine (10).” A person skilled in the relevant field of technology cannot determine if “the detection roller (11) connected to the paper sprocket of coding machine (10)” belongs to the gearbox or the detection apparatus. Therefore, the claims are not in line with the provisions of Article 26.4 of the Patent Law because the scope of protection of the claims cannot be determined. (c) a clear relation of references between all claims. It shall be deemed as not in line with the provisions of Article 26.4 of the Patent Law where there is a logic error in the content of claims for references. There is an example in this regard. Claim 5 makes a reference to claim 1 and the preceding dependent claim, which has the characteristic that it has thirteen buttons, and each combination of the thirteen buttons (52) has its own LED (53) which has a connection with different scales in the thirteen buttons (52). This feature is only contained in claim 4. Therefore, it is contrary to the provisions of Article 26.4 of the Patent Law because scope we cannot be certain where claim 5 makes reference to any items from claims 1 to 3, and thus the scope of protection is unclear.
The word “concisely” requires: (a) claims should be short and to the point. For example, claim 2 of an application for invention reads: “2. there are features for the book response system, which meets the requirements of claim 1 of the application for invention; that there will be no less than a said doll included in a plurality of dolls; that, of them, every doll is configured in response to the presentation and/or display of the said current pages; and every doll is configured in different ways in response to the said current pages”; its claim 4 reads: “4. there are features for the book response system, which meets the requirements of claim 2, that , of them, every doll is configured in response to the said current page.” It is obvious that the additional technical features defined by claim 4 have been substantially described in claim 2 for reference. It is natural that such repeated definition of the same technical features will result in a vague scope of protection and thus run contrary to the provisions of, Article 26.4 of the Patent Law. (b) a concise expression of claims. There shall be no unnecessary description on the cause or reason and no commercial advertising words in the claims and all words shall focus on the technical features.
3. Special provision in the regulations
There is a special provision in the Regulations, namely Rule 20.2, for which there are no similar stipulations in the patent laws of other PCT member countries. The paragraph stresses on the integrity of the technical solution as a whole and it shall be in response to the technical problem recorded in the description for solution, namely, the claim must have the necessary technical features for the solution of the technical problem. There is an example in this regard. Claim 1 of an application for invention is as follows:
“a digital photo frame, including a body with a hole on its back side and swivel bracket with a rotatable connection in the said hole. There are features for such frame that the swivel bracket is composed of rotating disk, the inner holder and outer holder; that one end of the inner holder is inserted in and connected with the spout of the outer holder and fixed on the indentation of the outer holder through a flexible item, whereas the other end of the outer holder is fixed on the rotating disk; that there are many bulges set on the flank of the said rotating disk or the said hole, and, in response to the bulge designation, the other of them has corresponding hollows to counter the said bulges, to rotate the said swivel bracket and change the corresponding relationship between the said projections and depressions so that the body supported by the rotary bracket be in a different orientation.”
It can be inferred from the technical background that the current digital photo frame typically includes a plurality of interfaces and dust cover to block the abovementioned interfaces, which will increase the cost of the frame. This is an application related to a digital photo frame with a dust cover. When the rotary bracket is put together thought the free end on the plane connected with the vertical connecting portion of the outer holder. Its interfaces will be covered to realize its dustproof function. Therefore, claim 1 is not in line with the provisions of Article 26.4 of the Patent Law because it lacks the necessary technical features in response to the technical problems the description intends to solve, namely, the connecting portion of the outer holder.
Furthermore, where there are many technical problems the description intends to solve, it is not a must to record all the features of the technologies for all technical problems and attention should be paid to whether the technical methods in the description is a complete solution to the problem in the description.
It can be seen from the above discussion that, when applying Article 26.4 of the Patent Law, there should be an analysis on what kind of technical features of the claims generalize a broader scope of protection, then find the corresponding content from the description in response to the technical features and analyze the reason for such feature’s not being able to make a broader generalized scope. The said paragraph requires the applicant to focus on the claim itself. If it is possible for a person skilled in the relevant field of technology to conclude a different scope of protection from the description, then it shall be determined that there is an ambiguous scope of protection for such a claim. The technical problems the description intends to solve are the starting point of Rule 20.2 of the Regulations. A conclusion shall be reached whether the claims contain the necessary technical features for the solution of the problems, and no necessary technical features shall be upheld when taking into account claims generalized in generic terms, by parallel options or numerical range, definition in terms of function, inconsistency with description, and other ambiguousness of the scope of protection of claims.
II. The connection between Paragraph 4, Article 26 of China’s Patent Law and Rule 20.2 of the Implementing Regulations of the Patent Law
There are some connections between Article 26.4 of China’s Patent Law and Rule 20.2 of the Implementing Regulations of the Patent Law when applying the law. The following will make a comparison between the provision of Patent Law with no support from the description and the clear and concise definition of the scope of patent protection, and the stipulation of the Regulations on no necessary technical features.
1. Application of law where there is no support from the description and no necessary technical features
Where the method for the invention is clearly and completely disclosed in the description and the necessary technical features for the solution of the technical problems is not recorded in the independent claims, the independent claim shall be supported by the description, namely, the technical solution method cannot be generalized from the content of the description of the independent claims. Therefore, the independent claims neither satisfy the requirement of Rule 20.2 of the Regulations, nor meet the provisions of Article 26.4 of the Patent Law. On the contrary, if the technical solution is not clearly and completely disclosed in the description and the independent claim lacks the necessary technical features for the solution of the technical problems, it may consider the application of the provisions on the inadequate disclosure under Article 26.3 of the Patent Law rather than the abovementioned two provisions.
 
In addition, it is not appropriate to reach a conclusion that the independent claims lack the necessary technical features when they are not completely consistent with the features ascertained by the examiner even if they have been written in the description for the solution of the technical problems. Under such circumstances, it is necessary to apply the provisions of no support from the description under Article 26.3 of the Patent Law.
2. Application of law where there is a clear and concise definition of the scope of patent protection and no necessary technical features
For example, the independent claims seek for the protection of a circuit. However, its technical solution just enumerates various components of the device in the circuit and does not describe the connection relationship between the components, whereas the description records the connection relation between these components. Under such conditions, Rule 20.2 of the Regulations will be applied where the independent claims satisfy the preconditions provided by Article 22 of the Patent Law and such independent claims must clearly define such special connections. There should be a concrete analysis on whether an independent claim clearly and concisely defines the scope of patent protection or not. There will be no ambiguousness in the claims even if there are no such connections, and their absence just means that the protection applies to all kinds of connections and a person skilled in the art can clearly define the scope of right protection. Otherwise, comments may be based on the clear and concise definition of the scope of patent protection under Article 26.4 of the Patent Law.
 
(Translated by Yuan Renhui)
 
 

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