European Patent Applicants Filing in China Common Mistakes Zheng Li Zhongzi Law Office September, 2014

Overview Functional claiming New subject matter in amendment Consumer method claims Legal admission of prior art Multiply dependent claims

Functional Claiming Technical feature defined by its function Two different approaches to construe such a claim Examination Guidelines by SIPO Cover all possible means that can implement the function Directives by Supreme Court of China Cover only embodiments disclosed and their equivalents

Functional Claiming Supreme Court’s solution Examination Guidelines apply to filing and prosecution Directives apply to infringement actions However, bifurcation does not solve the problem Bus Stop case Nokia v. Huaqin

Functional Claiming Bus Stop case

Functional Claiming Bus-stop Stand case Claim 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 valid Shanghai High Court: Functional claiming But no embodiments Scope of protection cannot be determined

Functional Claiming Nokia v. Huaqin

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

Functional Claiming Beijing High Court: Patent valid Shanghai High Court: Functional claiming But no embodiments Scope of protection cannot be determined

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

New Subject Matter Statute S.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

New Subject Matter Hus trilogy Deleting phrase “other keys are prompt keys” from claim 1

New Subject Matter Beijing High Court Every 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.

New Subject Matter SIPO amended Examination Guidelines Stricter rules regarding new subject matter SCC tried to provide more flexibility to applicants in amending claims Seiko 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.

New Subject Matter How to get prepared for amendments? Description should support a variety of potential amendments to the claims Telescoping embodiments Ranges for an important parameter, in addition to preferred values Possible alternatives, even if not preferred

New Subject Matter Timing of voluntary amendment Filing, examination request, and entry of examination phase Divisional application: examiner tends to give more flexibility

Consumer Method Claims Only consumer infringes? Hus trilogy: Chinese character input Beijing No.2 Intermediate Court: induced infringement Midea v. Gree: sleep-mode of air conditioner The manufacturer must have used the claimed method in configuring and testing the product in its manufacturing process

Admission of Prior Art What is stated as “prior art” in the specification “technical background” or “technical field” Admission of prior art Non-admission of common knowledge

Multiply-Dependent Claims Useful tool to enrich the original disclosure Possible combinations of technical features Save money No official fees when expending in prosecution PCT applications The original published version in international phase is the basis for official fees

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