This article offers suggestions for the application of the reason that “the claims shall be based on the specification” in the patent licensing and confirmation procedure through explaining the relationship between that reason and reasons other than the three conventional attributes of a patent (novelty, originality or practical applicability).
Partner,
Director of the patent litigation department
Beijing Gaowo Law Firm
Relationship between the reason that “the claims shall be based on the specification” and that “independent claims lack necessary technical features”.
Article 20.2 of the Implementing Regulations for the Patent Law (2010) intends to regulate the relationship between the specification and the independent claims, and to ensure that the technical solution defined by the independent claims can be adapted to the content recorded in the specification, especially the background technology, technical problems, beneficial effects, etc.
After detailed legal interpretation and explanation of the relationship between the reason that “the claims shall be based on the specification” and that “independent claims lack necessary technical features”, the Supreme People’s Court (SPC) decided, in the retrial judgment of Xing Ti Zi Case No. 11 (2014), that “independent claims that lack the necessary technical features and do not meet the requirements of article 21.2 of the implementing regulations, generally cannot be supported by the specification, and do not meet the requirements of article 26.4 of the Patent Law”.
Th author believes that that the above-mentioned judgment is actually aimed at the situation that the complete technical solution is recorded in the specification, but the independent claims do not reflect such a technical solution, and some of the technical features are missing. However, the judgment fails to decide on the situation that “neither the independent claims nor the specification contains a complete technical solution that can be implemented, or solve the asserted technical problem”.
Relationship between the reason that “the claims shall be based on the specification” and that “the specification is fully disclosed”.
Article 26.3 of the Patent Law provides the requirements on the full disclosure of the specification. Article 6 of the Judicial Interpretation of Patent Licensing and Confirmation Cases, issued by the SPC in September 2020, lists three circumstances of insufficient disclosure: “technical solutions cannot be implemented”; “technical solutions cannot solve technical problems”; and “excessive labour is required”.
The third circumstance that “excessive labour is required” is a difficulty in practice, which means that, if based on the disclosure of the specification, those skilled in the art need to put in more than a reasonable limit of intellectual work to realise the technical solution of the invention and solve the technical problem to be solved by the patent in question, it essentially violates the basic principle of “disclosure for protection” of the patent, and should also be regarded as “insufficient disclosure of the specification”.
The SPC also pointed out, in the second-instance judgment of Zui Gao Fa Zhi Xing Zhong Case No. 109 (2020), that the specification of the involved patent application failed to fully and completely disclose the relevant technical content essential for the understanding and realisation of the application, and achieve the extent that those skilled in the art can realise, and could not solve the technical problem to be solved, and therefore failed to comply with the provisions of article 26.3 of the Patent Law.
The author believes the reason that “the claims shall be based on the specification” requires that the claims should be able to be derived or generalised from the content fully disclosed in the specification. If the disclosure is insufficient because the technical solution of the specification itself “cannot be implemented”, “cannot solve the technical problem”, or “requires excessive labour”, even if the content of the claims is formally recorded in the specification, it should be determined that the claims are not based on the specification, and do not comply with the provision of article 26.4 of the Patent Law that “the claims shall be based on the description”.
How to correctly apply the reason that “the claims shall be based on the specification” in the administrative litigation for patent licensing and confirmation.
In the process of patent licensing and confirmation, the above-mentioned problems may contain the following two situations, which need to be handled according to the circumstances of the case.
First, the specification records a complete technical solution, but the independent claims do not reflect this, and lack some of the technical features. In this case, the provision of article 20.2 of the implementing regulations for the Patent Law, that “independent claims lack necessary technical features” should apply, and the patent application should be rejected, or the granted patent should be declared invalid on the ground that the independent claims that do not comply with the provisions of article 26.4 of the Patent Law are “not based on the specification”.
Second, the specification fails to disclose a full technical solution. In this case, the provision of article 20.2, that “independent claims lack necessary technical features”, should apply, and the patent application should be rejected, or the granted patent should be declared invalid on the ground that the disclosure of invention and creation in the specification fails to meet the requirements of article 26.3 of the Patent Law.
Conclusion
If a patent itself does not meet the requirements of “full disclosure of the specification” and/or that “the independent claims should record the necessary technical features to solve the technical problem”, it will not meet the requirement that “the claims shall be based on the specification” in most cases.
Since the tribunal or court hears cases based on the reasons put forward by the parties, the parties and lawyers should take the initiative to combine the reason that “the claims shall be based on the specification”, and the reasons other than the three conventional attributes of a patent.
Liu Lindong is director of the patent litigation department and a partner at Beijing Gaowo Law Firm. He can be contacted on +86 185 0081 3549 or by email at liulindonglvshi@163.com
