Opening question: If the scope of protection of independent claims is expanded during active modification, wil
Opening question: If the scope of protection of independent claims is expanded during active modification, will the modification go beyond the scope?
In practice, students often confuse the concepts of modifying and expanding the scope of rights protection, thinking that expanding the scope of rights protection is beyond the scope, but it is not necessarily. Here Xiaoding tries to have a look;
Out-of-scope modification is a general requirement for the modification of patent application documents. In any case, the modification of the application documents shall not exceed the scope recorded in the original specification and claims;
With the progress of the review procedure, in order to prevent the applicant from revising repeatedly and reduce the efficiency of the review, a series of modification restrictions are stipulated, such as not changing the right type during the review and not merging the rights from the specification when it is invalid;
The revision rules in the Audit Guide are scattered and difficult to master, so Xiaoding will sort out the restrictions on the revision of application documents in each stage according to the revision time.
#0 1
Legislative purpose
Before sorting out, we must first understand the legislative purpose of the scope of revision. Why are modifications allowed and not allowed? It's so complicated, isn't it much simpler to directly stipulate that no modification is allowed?
The reason for this provision is to strike a balance between the interests of the applicant and the public;
Why are modifications allowed?
From the applicant's point of view, in order to overcome the limitations of the applicant's expression and cognitive ability, and the applicant's cognition of the existing technology will change with the issuance of the examination opinions, the applicant needs to modify the application documents to express his original intention and modify the claims;
From the public's point of view, in order to facilitate the public to understand and use the invention, it is objectively necessary to improve the accuracy of patent application documents. If the improper expression makes the public misunderstand the meaning of the application documents when using them, it will cause public losses, so the applicant also needs to make timely amendments;
Why can't it be out of range?
First of all, in order to realize the first application system, the patent law fully cooperates with the public to prevent the applicant from adding unfinished invention content to the application documents.
Secondly, in order to ensure the smooth progress of the authorization procedure, the out-of-range modification can also urge the applicant to fully disclose his invention at the application stage to avoid squeezing toothpaste for a little supplement;
To sum up, on the one hand, Article 33 of the Patent Law gives the applicant the opportunity to modify and correct the application documents, and tries to ensure that truly creative inventions can be authorized and protected as much as possible; On the other hand, it prevents the applicant from obtaining improper benefits from the undisclosed invention content on the application date, which is the legislative purpose of exceeding the scope of revision;
#02
Out of scope meaning
After mastering the legislative purpose, we need to have a deep understanding of "not exceeding the scope recorded in the original specification and claims". The Guide points out that "the scope of records" includes the contents of written records and the contents that can be directly and undoubtedly determined according to the contents of written records and the attached drawings of the instructions;
It is further pointed out in the Regulations that "the content directly determined without any doubt" refers to the content that can be uniquely determined by the technical personnel in the technical field according to the contents recorded in the original claim, specification and attached drawings of the specification, although there is no clear written record in the application documents.
This is similar to the identification of public content in the prior art, that is, it is necessary to uniquely determine the modified content from the original application document. Regarding the identification of uniqueness, the regulation gives an example, saying that even if the added content belongs to common sense, but common sense has multiple choices, it also belongs to the situation that the modification is beyond the scope;
That is to say, although the conventional connection mode of A and B is well known to those skilled in the field, it cannot be the only conclusion based on the original document, so no matter which mode you add on the basis of the original document, you will turn an uncertain thing into a certain content;
In this case, those skilled in the field can't determine this way only in the original document, so they can't get it directly from the original application document without any doubt, which is beyond the scope;
There is still a big difference between the creativity and judgment supported by this judgment method and the instruction. Later, we will talk about the out-of-range judgment methods such as modifying novelty method or indirect novelty method.
#03
Time and limitation of modification
As shown in the figure below, opportunities to modify patent documents include
1, which can be modified actively before approval;
2, in the process of review can be modified according to the defects put forward by the examiner;
3. It can be modified when the review is put forward or the review notice is received;
4, in the process of invalidation request can also be modified;
However, with the deepening of the audit process, in addition to the premise that the scope cannot be modified, more restrictions are gradually added, as shown in the following figure:
It can be seen that in addition to active modification, the later the review process is carried out, the more restrictions there are on modification, but there is a premise that out-of-range modification is not allowed. The purpose of this setting is to improve the examination efficiency of the patent office, urge the applicant to take the writing of the patent right seriously, and write a broad and reasonable scope as much as possible;
It should be pointed out here that the scope of protection of inextensible rights in the above figure is different in the stages of trial, examination and invalidation, specifically:
The actual trial stage means that the revised claims have expanded the scope of protection relative to the claims in the original application text, so the basis for revision is the original application text when oa reply is actually reviewed;
The re-examination stage means that the revised claim has expanded the scope of protection compared with the claim targeted by the rejection decision. If there is only one right of refusal, it can only be mentioned from the specification;
The invalid stage means: compared with the authorized claim, the protection scope of the original patent shall not be expanded; For a patent that has been declared invalid by an effective decision, in the subsequent invalidation procedure, the basis for the modification of the claim should be the part that is kept valid, not the claim that is authorized to be announced;
Through these modification restrictions, the applicant can be prevented from repeatedly modifying and the examination efficiency can be reduced;
#04
Modify the out-of-range and expand the scope of protection
At this point, the opening question should have been solved. In the process of active revision, the applicant has greater freedom. As long as it does not exceed the scope recorded in the original specification and the claims, the applicant may expand or narrow the scope of his request for protection, and may even rewrite the claims.
Therefore, if it is recorded in the original application documents, such as the description that the elastic element is a leaf spring, a spiral spring or a torsion bar spring, but the record is correct, it is no problem to change the spiral spring into an elastic element when actively modifying it at this time, as long as it does not exceed the scope recorded in the original application documents, you can care whether I expand the scope or narrow the protection scope!