Case Study On Invention Patent Application Documents’"Amendments Cannot Go Beyond Scope Of Original Application Disclosure"

Article33of the Patent Law is the provisions of principle about amendments ofpatent application documents cannot go beyond scope of original applicationdisclosure. The legislative aim of it is to achieve balance between the interests ofpatent applicant and those of the public at large. But the process of refinement throughthe Guidelines for Examination and the patent examination practices both emphasizenot to prejudice the public interest more than the guarantee of the applicant’s rights,which results in the prevalence of jeopardizing the applicant’s rights. In this thesis, thediscussion about legislation and practice is brought out by issues reflected byfollowing five cases.This article is divided into the preface, main body and the epilogue.In the preface the author recommends the purpose of this article. By discussingthe problem existing in the related legislation and practice, the author proposes certainsuggestion for consummating legislation and application of “amendments cannot gobeyond scope”.The main body is constituted by five chapters:The first chapter: summary of “Amendments Cannot Go Beyond Scope”. In thischapter, the author introduces some concepts and theories related with “amendmentscannot go beyond scope” so as to foreshadow the analysis and discuss of chaptersbelow.The second chapter: judgment subject of “amendments cannot go beyond scope”. In this chapter, the author analyzes the institutional arrangement and necessity of take“a person of skill in the art” as the examining subject in the patent administrationdepartments’ activities of examination and approvals, with taking “fuel heating systemfor diesel engine” as a point of penetration. On this foundation, the author makescomments on case and gives some advice.The third chapter: the way of judgment of “amendments cannot go beyondscope”. In this chapter the author takes the case “Roller mill” and “Honeysuckleactivated tea” as a point of penetration, and analyzes the corrupt practice in the way ofthe judgment of “amendments cannot go beyond scope” of our country. The authorproposes to take examples from legislative and practice of the occident and definesthe concept of “directly and undoubtedly determine” in the Guidelines forExamination. The author also suggests to take examples from the way of the judgmentof creativeness to replace the way of judgment of “the one and only alter mode”.The forth chapter: review of generalized mode modification. In this chapter, theauthor takes the case “Tube Assembly and method” as a point of penetration, thenanalyzes the place of unreasonable when the examiner apply “amendments cannot gobeyond scope” to review generalized mode modification in practice. At last, theauthor proposes to apply “support by instruction book” to review it, and gives reasonsto support above viewpoint.The fifth chapter: the consistent coordination of applying “amendments cannotgo beyond scope”. In this chapter, the author takes the case “Ink cartridge” as a pointof penetration, then points out that the examiner uses different standards and severityto apply “amendments cannot go beyond scope” in our country’s review practice. Toensure the authority and systematicness of review activity, and incarnate our country’sencouragement for the spirit of innovation, the author proposes that in the regard ofamendment made in authorizing period while accepted by the examinant, whoseapplied examining standard and severity in the patent invalidation proceedings shouldbe correspondent with that in the patent authorizing period, at least should not bestricter than the former.In the section of epilogue, the author summarizes the main point and suggestionof former chapters.