The principle that the application documents may be amended during the Examination Proceedings also applies in China. However, according to Art. 33 of the Chinese Patent Law, amendments may not go beyond the scope of the original description and claims. In a recent decision, the Supreme People’s Court opposed the strict practice of the Boards of Appeal and also recommended a different treatment of amendments to inventive and non-inventive features.
The Application had made three different amendments in the claims. Firstly, in claim 1 he had changed “circular bolt bores” to “circular bores”. Further, in claim 6, he had rewritten the terminology “substantially circular hole” as “a hole through which a bolt extends”. And finally, in claim 2, he had amended “molding” to “pressing”
The Board of Appeal of the Chinese Patent Office rejected the Patent Application because all three amendments would go beyond the originally disclosed content of the Application.
The Supreme People’s Court, however, considers one of the three amendments to be admissible and sets aside the judgment of the lower court.
First of all, the court notes that Article 33, which provides that amendments may not go beyond the scope of the description and claims specified in the original documents, is intended to strike a balance between the interests of the inventor and those of the public. On the one hand, the inventor should be able to exhaust all possibilities to protect his contribution to the state of the art. On the other hand, however, the public should be sure that the amendment does not go further than the disclosure in the original Application.
In principle, Article 33 is to be understood as meaning that all information about the invention stated in the original Application is to be taken into account in the sense of a fixed collection of information. The disclosure content of the Application is embodied not only in the words and drawings of the Application, but also in the content which the skilled person derives from the description, the drawings and the claims.
In the present dispute, the terms “circular bolt bore” and “circular bore” actually have different meanings. Therefore, the amendment of claim 1 is not admissible.
In claim 6, “circular bore” is already limited to “circular bolt bore” upon careful consideration. This latter term is already contained in the original application documents. Thus, the terminology at issue, “a hole through which a bolt extends,” is allowable in claim 6 as a whole.
The third change is that “molding” in the field of mechanics means forming with the help of molds or mold analogies during the pressing process. In contrast, “pressing” means manufacturing by means of pressing. However, pressing does not necessarily require molding. It could also include forging or stamping. Thus, “pressing” is a superordinate concept compared to “molding”. Consequently, the amendment of claim 2 is not allowable.
The court concludes with general considerations that it would be fair to distinguish between amendments to “inventive features” and “non-inventive features” of the claim. If a patent is rejected only because of amendments to “non-inventive features”, this is neither fair nor in line with the intention of Article 33. Therefore, the Patents Office should actively search for ways to allow amendments in favor of the actual technical contribution within the scope of Article 33 without violating the principle of the first-to-file system. As an example, the court cites a review procedure that allows inadmissible amendments to be reversed before the patent is granted or after the patent has been granted on the basis of the original documents, in order to ensure that the protectable inventions actually receive effective protection.
Note: The judgment in itself confirms the strict practice of the Chinese Patent Office. Amendments are only admissible if they are clearly and unambiguously supported by the original documents. The court’s reference to special procedures for the correction of granted Patents is entirely justified, as China only has the complex Nullity Proceedings, but no simple procedures specifically adapted to correction requests.