At present, there is still a lack of research on a large number of actual cases to judge these situations. Faced with various revisions and changes based on the review guide, examiners are often confused and difficult to grasp. This paper introduces and analyzes the modification of out-of-range identification in a typical European case to increase our experience and understanding in this field.
Review principle of out-of-scope modification in European Patent Convention
1, on out-of-range revision of laws.
The European Patent Convention 123(2) stipulates: "The theme of the European patent application or the modification of the European patent shall not exceed the original application."
The European Patent Convention 123(3) stipulates: "The modification of European patent claims in the objection procedure shall not expand the scope of protection."
2, the European Patent Office Guide on modifying the basic principles of out-of-range judgment.
The guideline C.V 1.5.3. 1 of the European Patent Office stipulates: "If all changes (through addition, change or deletion) in the contents of the application result in that the information seen by the technical personnel in this field cannot be directly and explicitly derived from the information in the original application, even if the contents implicitly disclosed to the technical personnel in this field cannot be derived, then it should be considered that the modification has introduced a theme beyond the original application.
3. Relevant principles of judging out-of-range modification in European internal regulations.
(1) Section 6 of Chapter 6 cannot be modified: 6. 1. 1. After the filing of the application, the European patent application or the European patent may not be amended in a way that includes topics other than the original application (article 123 [2] of the Convention). This also applies to European divisional applications (Article 76 [1] of the Convention) or new European applications submitted in accordance with Article 6 1 of the Convention.
(2) Section VI of Chapter IC-VI stipulates that no modification is allowed: 6. 1.4. In general, it is not possible to remove one or more individual features from the disclosure through specific embodiments of the disclosed invention and form these features into the subject matter of independent claims. However, if the specification directly or implicitly discloses what is claimed separately, for example, if the features in this particular embodiment clearly constitute a single functional subunit, such claims may be allowed.
The European Enlarged Appeal Board ruled on case T04 14/97.
Authorized patent document
[Name of Invention]
Improved rearview mirror for motor vehicles
[claim]
[Excerpt from description]
..... Due to the slow response of the mirror, the detection of light causing glare after attenuation is introduced into the average electric control circuit period. ……
.. when the brightness level causing glare increases, the reflectivity level of the mirror moves from a higher reflectivity state to an intermediate reflectivity state through the first transfer area, and then moves to a lower reflectivity state through the second transfer area. The gradual change of reflectivity level is based on the fact that after the electrochromic element decays, the brightness causing glare is detected. ……
[from illustration]
Figure 13 is a curve drawn by the reflectivity level of the mirror relative to the brightness level of glare caused by various brightness levels in different environments.
Revised documents submitted through oral examination
[Name of Invention]
[claim]
The sixth supplementary claim
1, dual-purpose automatic rearview mirror for motor vehicles, ... The reflectivity of the mirror element is inclined and gradually changes between high reflectivity state and intermediate reflectivity state and between intermediate reflectivity state and low reflectivity state.
[Excerpt from description]
[from illustration]
[with attached drawings]
Figure 13
[Conclusion]
The change is not within the scope recorded in the original application documents.
[description]
This case involves an invention patent with the application number of EP87308999.9, which was granted to 1992 12.30, and the third party claimed that the claim 1 was invalid for the authorized text. The patentee submitted an amendment, and the expansion committee made a final decision on February 1999, arguing that the sixth supplementary claim 1 merged with the original claim by only extracting some continuous records disclosed in the original application documents, thus forming an intermediate summary claim. It cannot be considered as an impermissible intermediate generalization disclosed in the original application documents, so the modification belongs to the case of adding a new theme, as follows.
The mirror system described in the sixth auxiliary claim 1 relates to a system that gradually changes between high, medium and low reflectivity states, and is associated with the mirror system in the original application document that causes glare to be detected after attenuation. When the defendant (patentee) disclosed other configurations with the same effect, he introduced the gradual change of the mirror system between "high", "medium" and "low" reflectivity states. But the complaints department disagreed. In principle, any situation related to the contents here in the original application document has the possibility of exceeding 1 intermediate reflectivity states. Finally, the complaint department thinks that the sixth supplementary claim 1 constitutes an impermissible situation that was not disclosed in the original application documents. Therefore, the request violated (EPC) 123 and was rejected.
[analysis]
(1) The modification type of this case belongs to "simple addition and deletion of median generalized modification".
(2) According to the judgment, the gradual change of reflectivity level from column 5 1 to column 39, line 52, in the original application document is based on the fact that the brightness causing glare is detected after the electrochromic member decays. From the figure 10 of the 36th column 19 ~ 33, it can be further known that the gradual change between the "high, medium and low reflectivity states" of the mirror is related to the brightness detection that causes glare after attenuation. Figure 13 shows the curve of reflectivity level versus brightness level of the mirror, resulting in glare at different ambient brightness levels. Although it is disclosed in the original application document that "the invention is possible according to the principle of having more than 1 intermediate reflectivity states", the precondition "correlation between gradient trend and glare brightness" is deleted, and it is not allowed to directly add gradient features to the above three reflectivity states. This modification belongs to the case of simply adding and deleting some features.
(3) Where the applicant or the patentee restricts the invention recorded in the original claim for any reason, it intends to expand it as much as possible within the scope recorded in the original application documents. Many cases seem to limit claims. Essence is a problem beyond the scope that cannot be ignored.
(4) There are two types of feature combinations that constitute the technical scheme of the invention: open type and closed type. Open feature combinations are free between features. The relationship between closed features can be divided into causality, interaction and modification, and their combination is an inseparable whole feature. The entirety of these features is used to realize the technical problems (functions and effects) to be solved by the present invention. This case belongs to causal type. Causal feature combination applies the former condition to the latter condition, and vice versa.
However, a part of the closed feature combination recorded in the original application document is divided and added to the claim, forming a new technical scheme with median generalization. Because the deleted features are not arbitrary, the new technical scheme has changed compared with the technical scheme of the original application documents, and its technical significance has also changed accordingly, which is bound to exceed the scope recorded in the original application documents. It is quite difficult to identify this modified form of adding a part of closed features in the claim, which needs special attention.
Comparison of relevant laws and regulations between Europe and China and its enlightenment
According to the clauses involved in the above-mentioned European cases and the final judgment results, combined with the relevant provisions of China, a vertical comparison is made, and some enlightenment is obtained from the median generalization and revision of the judgment beyond the scope.
(1) Europe adopts the novelty judgment method, which is suitable for the case that the lower concept can destroy the upper concept simply by adding features or modifying information. In view of the situation that the upper concept replaces the lower concept or deletes the technical features, an improved novelty judgment method is adopted. In the improved novelty judgment method, technical features can be divided into three relationships: cooperative relationship, superposition relationship and selection relationship. This case can be classified as an amendment to delete the technical characteristics of the cooperative relationship. The technical features of the cooperative relationship are recorded in the specification as a whole, while the revised claim adds some features and deletes some features. When the associated features are deleted, the function and nature of the whole technical scheme will also change, which will inevitably lead to out-of-range.
(2) Section 5.2.3, Chapter 8, Part II of China Review Guide lists three types of modifications: no addition, no change and no deletion. The deletion of claim features specifically relates to the deletion that is not allowed in the 5.2.3.3 part. "(1) Delete the technical features clearly identified as necessary technical features of the invention in the original application from the independent claim, …: Delete the technical terms related to the technical scheme recorded in the specification from the claim, or delete the technical features clearly identified as specific application scope in the specification from the claim." It can be seen that China's Review Guide gives a variety of situations that are not allowed to be deleted, including necessary technical features, related technical terms, and technical features about the specific scope of application. However, these situations are not detailed, and it is not clear what the criteria and principles are for whether features can be deleted, and whether the modification or deletion of features changes the traceability and ownership of the essence of the invention.
(3) The judgment of whether the modification is out of scope is essentially the judgment of whether the invention is changed, not just the judgment of the technical scheme change. It can be seen that there are two levels to identify the out-of-scope modification, one is whether there is identity from the technical scheme, the other is whether there is identity from the invention level, that is, technical significance, effect and purpose. This judgment basis can be used not only for the modification types discussed in this paper, but also for other types of modification forms. However, the three types of situations that are not allowed to be modified listed in China's Review Guide point out that it is not allowed to change the form, or the effect, or the characteristic structure, and it is not allowed to understand various forms of modification in the sense of the invention itself, that is, it does not consider the correlation between the modification of the technical scheme and the technical significance, nor does it explore the root or principle of the technical significance. In the face of various forms and complex changes, there is a lack of a more unified and clear judgment standard in a sense, that is, the judgment beyond the scope of modification and the judgment of identity can no longer be limited to the literal analysis of the identity of technical solutions, but should go deep into the invention level to understand and judge identity from the perspective of technical significance and effect.
Through the comparative analysis and research of specific cases and relevant regulations, we can see the differences in the identification and judgment basis of intermediate simple modification types between China and Europe. By other's faults, wise men correct their own. This paper aims to provide some references for the revision and application of China's patent law, its implementation rules and examination guidelines.