Ways to Make Multiple Claim Amendments in Invalidation Actions and the Associated RiskDATE：2021-06-28 FROM：LexField
Mason Xi Kai Chen David Huang
LexField Law Offices
In a patent invalidation action, the patentee may make multiple amendments to the granted claims. Among the amendments, some could be more likely to be accepted ("safe amendments"), and some may have a higher risk of being rejected ("risky amendments"). At present, there is no clear procedural rule to specify how the other amendments should be handled when the patentee submits multiple amendments but one or more of them are deemed unacceptable. This poses a substantial risk to the patentee. Based on a case study on this issue, we have the following comments and recommendations:
(1) In practice CNIPA’s acceptance or rejection of amendments is essentially toward the "full set" of all the amendments submitted by the patentee, rather than individual amendments or individual claims. Therefore, if an amendment is not accepted, it essentially means that the entire set of amendments will not be accepted.
(2) Although the patentee can submit amendments after the oral hearing based on the opinions the examiners give during the hearing to abandon the unaccepted amendments and retain only the accepted amendments, the amendments submitted at this later timing could be rejected on the grounds that the applicable deadline has lapsed.
(3) CNIPA and the courts have yet reached a consistent position on how to treat such amendments submitted after oral hearings, which aggravates the risks faced by patentees who adopt the approach mentioned in (2).
(4) As alternatives, a patentee can try to submit amendments as early as possible, seek the examiner’s opinions and then submit updated amendments before the official deadline based on the examiner's feedback, or submit multiple sets of amendments at a time and then select one set based on the examiner's feedback. However, there is no guarantee that the patentee can eventually get the desired result.
(5) There is an urgent need for CNIPA to clarify the procedural rules for handling this situation in the Patent Examination Guidelines (“Guidelines”), so as to provide better guidance for the relevant parties.
Below are the detailed discussion of the relevant rules, cases and risks.
1. The practical manner of filing claim amendments restricts patentees’ choices
Under both the e-filing system and the traditional hard-copy system of CNIPA, the only manner for a patentee to file claim amends is to file the entire set of amendments in the form of "markup pages + replacement pages". If it is necessary to adjust the previous amendments (for example, to withdraw some of the amendments), the patentee has to resubmit a complete new set of "markup pages + replacement pages" for the entire set of claims. The patentee cannot adjust a single amendment or amendments to a single claim in an “individualized & targeted” manner.
The above manner of submitting amendments is an important reason that restricts the flexibility the patentee has in adjusting the amendments.
2. CNIPA and courts have disagreement in the application of relevant rules
CNIPA (particularly its Patent Reexamination and Invalidation Examination Department, "Invalidation Department") and courts in judicial review have disagreement on the rules by which to determine whether a claim amendment should be accepted. This disagreement is a major uncertainty a patentee faces when considering amendments to the claims.
Article 33 of the Patent Law states that amendments shall not go beyond the “original disclosures” of the patent. Article 69 of the Implementing Regulations of the Patent Law stipulates that amendments in an invalidation action “shall not broaden the scope of the original patent”. Based on these two articles, in the Guidelines CNIPA has made the following more detailed rules (Part IV, Chapter 3, Section 4.6):
Amendments to invention or utility model patents are limited to the claims. The principles are: (1) the subject name of the original claim shall not be changed, (2) compared with the granted claims, the protection scope of the original patent shall not be broadened, (3) it shall not exceed the scope recorded in the original specification and claims, and (4) generally, technical features not included in the granted claims shall not be added. In satisfying the above principles, the specific ways to amend claims are generally limited to deletion of a claim, deletion of a technical solution, further limitation to a claim, and correction of an obvious error.
As can be seen from the above, some of rules in the Guidelines have no explicit basis in Article 33 or 69. The Invalidation Department has further developed some internal rules in its practice. For example, after the introduction of "further limitation" rule to the Guidelines in 2017, a large number of controversial amendments emerged. In view of this, the then Patent Reexamination Board (now the Invalidation Department) provided explanations on the literal meaning, context and purpose of this rule, published articles【1】and held seminars on it, all aimed to provide better guidance to patentees. To a certain extent, these internal rules of the Invalidation Department also lack an explicit basis in Article 33 and Article 69.
The differences between the Guidelines (including CNIPA’s internal rules) and Articles 33 and 69 have led to inconsistencies in the application of law between CNIPA’s administrative actions and the courts’ judicial review. The administrative actions are usually directly based on the Guidelines and CNIPA’s internal rules, whereas the judicial review is in accordance only with Article 33 and Article 69 and the courts take the Guidelines and the CNIPA rules only for reference. In judicial practice, some cases have adopted the Guidelines and the CNIPA rules, but there were also cases that overlooked or even overruled the Guidelines and the rules.
For example, in the invalidation action on patent ZL200610113717.2 case【2】 , the court of the first instance adopted the Guidelines and the CNIPA internal rules, including a recognition of the position that "the scope of protection of the original patent shall not be broadened" should be judged by referring to the original scope of the very claim that was amended. However, the Supreme People’s Court, in its second instance judgement No. 2020 Zui Gao Fa Zhi Xing Zhong 246 (“246 Judgment”), specifically pointed out that the CNIPA’s Guidelines and rules have no legal effect on its proceedings, and held that "the scope of the original patent shall not be broadened" should be judged with reference to the maximum protection scope of the independent claims of the original patent.
This article does not intend to conduct an in-depth substantive analysis of the above-mentioned disagreement between CNIPA and the courts. From a procedural point of view, this disagreement undoubtedly increases the difficulty for the patentee to assess whether an amendment will be accepted e, thereby increasing the complexity of the patentee's planning of multiple amendments.
When considering multiple amendments, the patentee may have one claim or multiple claims on mind. In doing so, the patentee may need to consider (1) the possibility for the amendments to be accepted, (2) infringement comparison with existing or hypothetical infringements, (3) impact on the strength of the claims to be amended, and (4) the value the claims to be amended for enforcement. This can be a complicated decision-making process. Therefore, when there are both safe amendments and risky amendments as candidates for amendments (corresponding to factor (1)), the patentee needs to consider other factors and decide whether to take the risk of packaging the safe amendments with the risky amendments, or just putting forward safe amendments only out of caution.
The 246 Judgment made by the Supreme People’s Court is the latest example of the inconsistency between CNIPA and the courts. Under the spirit of this judgment, a large number of controversial amendments, including addition of new claims, may be considered acceptable under Article 69. However, based on our recent experience and knowledge, the Invalidation Department has not changed in practice to accept those controversial amendments that it previously would reject just because of the 246 Judgment. Therefore, if the patentee refers to the 246 Judgment and file risky amendments together with other amendments, it may result in all amendments not being accepted by the Invalidation Department, which in turn may cause the following problems.
The first problem is loss of time. If the Invalidation Department rejects all the amendments and makes its decision toward the granted claims, important claims among the granted claims could be invalidated. In this case, if the patent is also used in an infringement lawsuit, then the infringement lawsuit is likely to be dismissed or requested to be withdrawn. Even if the patentee finally has the risky amendment accepted through judicial review, obtains a new favorable invalidation decision, and then re-files the infringement lawsuit, a large amount of time has been lost.
The second problem is potential risk related to Article 33 of the Patent Law. The 246 Judgment did liberalize the application of Article 69, but there are indications that the court may meanwhile tighten the application of Article 33. In this situation, some amendments could still be held as new matter beyond the scope of the original disclosures, which would still return the claims to be examined to the granted claims. This situation is essentially a hidden, and thus riskier, "trap" for patentees.
3. Risks reflected in actual cases
We searched for relevant cases and noticed one approach the patentees have adopted to amend the claims: to file both safe amendments and risky amendments in a first submission, and then, if the Invalidation Department refuses to accept the risky amendments, to file a second submission deleting/withdrawing the risky amendments and only retaining the safe amendments. From the actual results, however, there is a risk that all amendments are rejected under this approach.
Particularly, there is a notable inconsistency among CNIPA, the first-instance court and the second-instance court on whether to accept the second submission and why. Thus, the cases together fail to provide a reliable guidance for patentees in a similar situation.
Case 1: invalidation action on patent ZL200920230829.5【3】
The patentee submitted a first set of amendments containing three types of amendments A, B, and C within the specified deadline (“Submission 1”). During the oral hearing, the collegial panel held that amendments of type A did not comply with the Guidelines while amendments of types B and C were in compliance. After the oral hearing, the patentee made a new submission containing amendments of types B and C only (“Submission 2”), essentially withdrawing amendments of type A. The panel held that although the actual timing of Submission 2 did not comply with the Guidelines, the amendments it contains were already reflected in Submission 1, and Submission 2 therefore should be regarded as having actually being submitted within the original deadline. The panel then made its decision based on Submission 2.
The court of the first instance held that Submission 1 contained amendments of type A that did not comply with the Guidelines and therefore should not be accepted, and the timing of Submission 2 did not comply with the Guidelines. The court then held that the collegial panel’s accepting Submission 2 based on Submission 1 which itself should not be accepted was wrong. The court thus ruled to revoke the invalidation decision.
The court of the second instance held basically the same position as that of the collegial panel. It held that the amendments in Submission 2 were amendments of types B and C included in Submission 1, and thus Submission 2 was essentially submitted within the applicable deadline. The second-instance court then ruled to uphold the invalidation decision.
Case 2: invalidation action of patent ZL200610113717.2【4】
This is the case in which the Intellectual Property Division of the Supreme People's Court made the above-mentioned 246 Judgment.
The patentee submitted within the specified deadline the first submission revising the 48 granted claims into 272 claims (“Submission 1”). During the oral hearing, the patentee tried to delete 196 of the 272 claims, and after the oral hearing, submitted the revised text containing the remaining 76 claims (“Submission 2”). The collegial panel considered that the further deletions reflected in Submission 2 are deletion of claims, and thus Submission 2 complied with the Guidelines regarding timing for deletions (which can be made any time before the Invalidation Department issues its decision). The panel thus made the invalidation decision based on Submission 2.
Case 3: invalidation action on patent ZL200480009662.X【5】
The patentee submitted a first set of amendments containing 38 claims within the specified deadline, which included further limitations to original granted claim 1 and new independent claims 16 and 28 which were formed by adding different features to original granted claim 1. The collegial panel held that the addition of new independent rights 16 and 28 did not comply with the Guidelines, and thus it did not accept Submission 1 but made its decision based on the granted claims.
In the first instance of judicial review, the patentee argued that it attempted to delete the new claims including independent rights 16 and 28 during the oral hearing, and that at least the revised claims 1-15 complied with the Guidelines and should be accept. On this, the court of the first instance held that even if the aforementioned argument from the patentee were true, the amended claims 1-15 submitted during the oral hearing included amendments other than deletions, which thus had exceeded the applicable deadline and should not be accepted.
The above three cases all involve a first submission of amendments and a second revised submission formed by deleting part of the amendments in the first submission. It can be seen that in all the three cases, the Invalidation Department and the courts regarded the second submission as a separate and newly submitted document. A question then is whether the new submission complies with the deadline and acceptable. Normally, the one-month deadline for the patentee to submit other-than-deletion amendments has gone before the oral hearing.
In Case 1 and Case 2, the second submission was deemed to meet the deadline and should be accepted, but the authorities’ specific reasons for the acceptance were different. In Case 1 the second submission was regarded as having essentially been submitted within the original deadline and thus acceptable even if it contains amendments of the "consolidation" manner. In contrast, in Case 2, the second submission was regarded as “further deletions” on top of the first submission and thus it was accepted in line with the timing requirement for amendments of the “deletion” manner (which can be submitted before the invalidation decision is made).
Case 2 has its further uniqueness. The invalidation decision in this case was made during the exploratory period after CNIPA introduced the "further limitation" rule to the Guidelines. On the one hand, the collegial panel lacked a clear legal basis to directly reject the patentee’s Submission 1 of drastically increasing the number of the claims. On the other hand, likely out of the purpose of reducing the workload for all, the panel had the motivation to ask the patentee to reduce the number of claims. Therefore, the panel finally accepted Submission 2 with some claims deleted, possibly as a compromise between these two considerations.
However, the difference in the reasons for the acceptance of Submission 2 in the first and second cases still shows that even within the Invalidation Department, there may not be a unified practice on the acceptance. In Case 3, as an inference from the result of the case and the language in the judgment by the first-instance court, the Invalidation Department refused to accept Submission 2 the patentee attempted to submit. In addition, in both Case 1 and Case 3, the court of the first instance clearly pointed out that Submission 2 did not comply with the Guidelines on the deadline for claim amendments and therefore should not be accepted.
Based on the above cases, it can be seen that if the patentee files both safe amendments and risky amendments in one submission, and then tries to delete the risky amendments and retain only the safe amendments when the Invalidation Department refuses to accept the risky amendments, there is risk that all amendments are eventually rejected.
4. Possible alternatives have own uncertainties with no guarantee on results
It can be seen from the above cases that the key reason for the above risk is that Submission 2 was filed after the original deadline for amendments. This is also the primary consideration in search for possible alternatives under the current rules.
A first possible alternative is that the patentee files Submission 1 as early as possible within the original deadline, and then try to liaise with the examiner to find out whether all the amendments are acceptable. If the examiner has an objection, the patentee may consider filing Submission 2 still within the deadline. However, this approach has its own uncertainty: before the oral hearing, the examiner may be unwilling to review the file in depth and communicate with the patentee on whether an amendment may be accepted.
Another possible alternative is that the patentee can make two or even more submissions at the same time within the deadline, and make a choice based on the examiner's opinions in the subsequent proceedings. The patentee may try to communicate with the examiner before the oral hearing, or during the oral hearing, for this purpose. However, first, as mentioned above, the examiner may not be in a position for such a communication before the oral hearing. Second, even during the oral hearing, the examiner may refuse to have a detailed discussion on this issue but could simply ask the patentee to choose one of the submissions as the basis for examination (the invalidation requester is likely to push the examiner to ask the patentee for a choice first).
Under the above two alternatives, Submission 2 is submitted within the specified deadline and thus can avoid the risk highlighted in the 3 cases we studied. However, procedural uncertainties associated with the alternatives also mean that in individual cases there is no guarantee for the desired result.
5. CNIPA’s rules in the Guidelines need to be revised
In sum, when the patentee makes multiple amendments in an invalidation action, it would face uncertainties and risks, regardless of whether the patentee adopts the approach reflected in previous cases or the alternatives we propose above.
The inconsistency in the application of law between CNIPA and the courts involves basic concepts of the patent law and the balance between the patentee and the public interest, and thus the two authorities need to negotiate for appropriate revisions to Article 69 and relevant rules in the Guidelines. Besides this, CNIPA can greatly reduce the risks faced by patentees as shown in the above 3 cases by just revising the rules in the Guidelines. For example, CNIPA may consider one or both of the following rules:
(1) It can be made clear, in terms of the legal status, that Submission 2 formed by withdrawing certain amendments in Submission 1 according to the patentee’s statements made during the oral hearing is not a fresh submission, but is a revision to Submission 1 and thus shall still enjoy the filing date of Submission 1.
(2) In line with the basic principle that an invalidation action on a patent is toward each of the claims of the patent individually, it can be made clear that that the “unit” of the examination on whether amendments are acceptable is the individual claims, in that even if an amendment to one claim is not accepted, it does not affect the status of amendments to other claims in the same submission.
The implementation of this rule (2) may require CNIPA to also adjust its IT system so that amendments to different claims can be made separately, rather than being restricted by the current "full set of claims" manner.
We believe that these two rules do not affect the balance of interests between patentees, invalidation requesters and the public, nor do they compromise the value of published patent documents as a “public notice” on the scope/boundary of patent rights, but can provide the patentees with the much-needed certainty.
"Understanding and Application of "Further Limitation of Claims"", Liu Ming, Liu Yang.
Invalidation decision: No. 35611 (made in April 2018);
The judgment of the first instance: (2018) Jing 73 Xing Chu No. 6316 (made in December 2019);
Second-instance judgment: (2020) Zui Gao Fa Zhi Xing Zhong No. 246 (made in December 2020).
Invalidation decision: No. 24085 (made in September 2014);
Judgment of first instance: (2014) Jing Zhi Xing Chu Zi No. 71 (made in February 2017);
Judgment of second instance: (2018) Jing Xing Zhong No. 77 (made in April 2019).
Invalidation decision: No. 35611 (made in April 2018);
Judgment of first instance: (2018) Jing 73 Xing Chu No. 6316 (made in December 2019);
Judgment of second instance: (2020) Zui Gao Fa Zhi Xing Zhong No. 246 (made in December 2020).
Invalidation decision: No. 34891 (made in January 2018);
Judgment of first instance: (2018) Jing 73 Xing Chu No. 7914 (made in November 2020)