China: Supreme Court decisions open up greater possibilities for amendment of Chinese patents

09 January 2013

Leo He, Christine Yiu

In the past, China’s State Intellectual Property Office (SIPO) and Patent Re-examination Board (PRB) adopted a relatively strict view on the scope of permissible amendments both pre- and post- grant. The rules are set out in the Patent Examination Guidelines and have been applied consistently in prosecution by the SIPO and in invalidation actions by the PRB. However, the position has changed recently as a result of two decisions handed down in late 2011 by the Supreme People’s Court in the Simcere case[1] and the Seiko-Epson case[2] in both of which the Court applied a more liberal approach to amendments. The decisions have sparked a heated debate amongst the patent community with many describing the decisions as a bold step forward. 

The Simcere case

In the Simcere case, the patent claim as granted was to a pharmaceutical composition comprising the active ingredients of amlodipine, or a physiologically acceptable salt thereof, and irbesartan, with the weight ratio of 1:10-30. The patentee sought to amend the claimed range from “1: 10-30” to a specific ratio of “1:30” during an invalidation action. This type of post-grant amendment was not allowed under the then existing practice of the PRB. The Patent Examination Guidelines (Part IV, Chapter 3, para 4.6) state that “Subject to the above principles of amendments, the specific manners of amendment are generally limited to deletion of a claim, combination of claims, and deletion of a technical solution. ”At first instance, the PRB rejected the application to amend.

The patentee lost on its appeal to the Beijing No.1 Intermediate People’s Court but successfully set aside the PRB decision on the subsequent appeals to the Beijing Higher People’s Court and the Supreme People’s Court. The Supreme People’s Court held that: (1) the purported amendment does not go beyond the scope of the original specification because a composition of 1mg: 30mg of amlodipine: irbesartan is disclosed in one of the embodiments as the preferred ratio; (2) given that the purported change to the patent claim complies with the principle of amendments, it is unreasonable to disallow this type of amendment simply on the basis that it does not belong to one of the three permitted types of amendment as set out in the Examination Guidelines. The Supreme People’s Court found the PRB to have interpreted the provision on amendment too strictly.

Seiko-Epson case (the Ink Cartridge case)

In the Ink Cartridge case, the patentee sought to amend the claim in a divisional application during the prosecution by changing the term “semiconductor storage device” to “storage device”. Article 33 of the Patents Law allows voluntary amendments to a patent application provided that "the amendment to the invention or utility model patent application documents does not exceed the scope specified in the original written descriptions and claims". The Examination Guidelines (Part II, Chapter 8, para 5.2) state that “The scope of disclosure contained in the initial description and claims includes the contents described in the initial description and claims,  and the contents determined directly and unambiguously according to the content described in the initial description and claims, and the drawings of the description.” 

Previously, the threshold for what can be directly and unambiguously determined from the specification was set very high. On appeal to the Supreme People’s Court, it was held that the original disclosure of the specification includes not only the textual content of the original application but also any information that can be directly and clearly “inferred” from the original application by the ordinary skilled person in the art. The Supreme Court went on to say that, as long as the inferred content is obvious to the skilled person, it can be included within the scope of the specification. On this basis, the amendment was allowed.

What’s next?

These two decisions on amendments were handed down by the Supreme People’s Court only months apart from each other thereby showing a more liberal approach to amendments than in the past. Since then, the lower courts have been applying this more liberal approach when determining applications to amend in the cases before them. This is good news for patentees because there is now more scope to amend a patent both during prosecution and during an invalidity action. Also, the approach to amendment in China is now more aligned with international practice. It is hoped that in due course the SIPO will  amend the Examination Guidelines so as to follow the Supreme People’s Court’s ruling.

Other items in the Patents Update newsletter for January 2013:

> England: The Patent Box

> EU: Unitary Patent Regulation and Unified Patent Court Agreement; An update

> Germany: "Customary usage in the trade" gains importance in determining infringement in repair/reconstruction cases

> Germany: Stay of first instance infringement decisions in standard essential patent actions

> Holland: Cross-border patent litigation revival 'Solvay vs Honeywell'

> Spain: Some interesting peculiarities of Spanish Utility Models

> England: The Patents Court exercises its jurisdiction to grant a pan-European declaration of non-infringement

> England: Patent litigation statistics for 2011 and 2012

> England: The Patents Court exercises its jurisdiction to grant a pan-European declaration of non-infringement




[1] Nanjing Simcere Pharmaceutical Research Ltd. et al. vs. PRB (Supreme Court Case No. 17 of 2011)

[2] Seiko-Epson Ltd. vs. PRB (Supreme Court Case No. 53 of 2011)


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Christine Yiu

China and Hong Kong

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