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European Patent Applicants Filing in China
Common Mistakes
Zheng LiZhongzi Law OfficeSeptember, 2014
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Overview
Functional claimingNew subject matter in amendmentConsumer method claimsLegal admission of prior artMultiply dependent claims
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Functional Claiming
Technical feature defined by its functionTwo different approaches to construe such a claim
Examination Guidelines by SIPOCover all possible means that can implement the function
Directives by Supreme Court of ChinaCover only embodiments disclosed and their equivalents
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Functional Claiming
Supreme Court’s solutionExamination Guidelines apply to filing and prosecutionDirectives apply to infringement actions
However, bifurcation does not solve the problemBus Stop caseNokia v. Huaqin
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Functional Claiming
Bus-stop Stand caseClaim 1: “electronic display screen for forecasting arrivals”Description: “multi-line LED display that can show real-time
information about the estimated time and distance of the next bus”Beijing High Court:
Patent validShanghai High Court:
Functional claimingBut no embodimentsScope of protection cannot be determined
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Functional Claiming
Claim 7: A terminal device configured to determine a message to be
transmitted on the basis of inputs received from a user, characterized in that
the terminal device is further configured to check at least one piece of property information concerning the message being entered or already entered, and
the terminal device is configured to select, in order to transmit the message, a data transfer method associated in predetermined selection conditions with the property information
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Functional Claiming
Beijing High Court:Patent valid
Shanghai High Court:Functional claimingBut no embodimentsScope of protection cannot be determined
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Functional Claiming
How to avoid adverse construction?Telescoping embodiments—starting with generic embodiments and
continuing with specific embodiments Each functional feature must be supported by one or more structures
for implementing the functional element
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New Subject Matter
StatuteS.33: “any amendment shall not go beyond the scope of original
disclosure”Examination Guidelines
The amendment must be stated in the original disclosure, or can be directly and unequivocally obtained from the original disclosure
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New Subject Matter
Hus trilogyDeleting phrase “other keys are prompt keys” from claim 1
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New Subject Matter
Beijing High CourtEvery embodiment disclosed requires the other keys to be prompt
keys so that the user can select the desired character from the candidates
The original description teaches that Chinese character input can be done with a small number keypad.
Those skilled in the art cannot think of a solution that has prompt keys outside the number keypad after reading the original disclosure.
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New Subject Matter
SIPO amended Examination GuidelinesStricter rules regarding new subject matter
SCC tried to provide more flexibility to applicants in amending claimsSeiko Epson, the original disclosure includes not only what is literally
expressed in the original description and claims, but also what is apparent to those skilled in the art after reading them.
Zeng v SIPO, in determining whether an amendment goes beyond the original disclosure, the common knowledge of those skilled in the relevant technical field should also be considered.
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New Subject Matter
How to get prepared for amendments?Description should support a variety of potential amendments to the
claimsTelescoping embodimentsRanges for an important parameter, in addition to preferred valuesPossible alternatives, even if not preferred
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New Subject Matter
Timing of voluntary amendmentFiling, examination request, and entry of examination phaseDivisional application: examiner tends to give more flexibility
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Consumer Method Claims
Only consumer infringes?Hus trilogy:
Chinese character inputBeijing No.2 Intermediate Court: induced infringement
Midea v. Gree: sleep-mode of air conditionerThe manufacturer must have used the claimed method in configuring
and testing the product in its manufacturing process
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Admission of Prior Art
What is stated as “prior art” in the specification“technical background” or “technical field”
Admission of prior artNon-admission of common knowledge
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Multiply-Dependent Claims
Useful tool to enrich the original disclosurePossible combinations of technical features
Save moneyNo official fees when expending in prosecution
PCT applicationsThe original published version in international phase is the basis for
official fees