Study On Standard For Determining Compliance With The“amendments To Claims Should Not Go Beyond The Scope Of Initial Disclosure” Requirement

Article 33 of "China patent law" sets a basic requirement for amendments to patent application. In accordance with Article 33, the applicant can amend his application for a patent, but the amendment to the application for a patent for invention or utility model may not go beyond the scope of disclosure contained in the initial description and claims.1 Article 33 is usually referred as “no amendment goes beyond the scope” principle.(the author used “‘not beyond’ principle ” for short in the thesis). The ‘not beyond’ principle provides for the patent applicant’s right to amend the application documents, and some restrictions to the right which prohibits the amendment go beyond the scope of the original application. If the amended patent application documents which do not meet the ‘not beyond’ principle will be rejected in the review process or will be declared invalid after the grant of the patent right. The legal consequence is very serious if the amendment to the application being judged as "beyond".“the scope of disclosure contained in the initial description and claims” is a critical factor when we use ‘not beyond’ principle to examine a amendment. “the scope of disclosure” is defined as “includes the contents described in the initial description and claims, and the contents determined directly and unambiguously according to the contents described in the initial description and claims” in the 《Guidelines for Patent Examination》. Other laws and regulations are not made any further explanation to it. So there are kinds of explanations to “the scope of disclosure” around the patent practical area.In China at present, there are mainly three kinds of standard to determine whether amendments comply with the principle or not. One is named "support" standard which is advocated by practical agent community. The "support" standard is same to the standard of Article 26, as long as the amendment which can be supported by the original disclosure is not beyond the scope of disclosure. Other is named "the only one" standard which is advocated by the administrative authority in the actual examination process. The standard requires a amendment must be the only one which can be determined by the original disclosure. Other is named "obviousness" standard which is advocated by the judicial authority. There will be three different results when apply these standards separately. In order to keep stability of the whole patent legal system, the aim of this study is to get a suitable standard for China’s patent system by comparing the legislation and juridical practice of the United States and Europe.This article in Introduction provides an overview of the thesis, including the research method, the significance and innovation of the thesis.In part one, the article introduces the present situation of China’s legislation and judicial practice to amend patent application document properly. It focuses on the reasons which lead to current situation and the specific meanings of the three kinds of standards.Part two of the article aims to compares legislation and judicial practice of Europe, the United States with China. This article is based on the legislative system of China, Europe and America, by studying on the related cases, to find the differences of standards about how to amend claims.Part three of the article is to provide China’s relevant legislative and judicial suggestions. This article combines the analysis and comparison of the China, Europe and USA legislation and juridical practice which studied in former parts, then obtain that the three kinds of standards are all not appropriate, we should adopt the standard of Europe to determine an amendment is allowable or not.