“Disclaimer Amendment” - Definition and Acceptable Conditions from the Second-Instance Judgment of the “Zirconia Case”

米阳 杨巍

Introduction

“Disclaimer amendment” refers to a manner of claim amendment to exclude one or more technical features, thereby limiting the claim’s scope of protection. Disclaimer amendment is a special type of amendment that is not common in patent practice, and therefore often causes confusion and misunderstanding. Recently, the Supreme People’s Court made a second-instance judgment (Administrative Judgment No. 44 (2021)) on the patent application entitled “Method for producing a colored item, in particular orange, made from zirconia, and colored decorative item made from zirconia obtained according to this method (application No. 201480035281.2, hereinafter referred to as the zirconia case). The “disclaimer amendment” in patent practice will further analyzed in light of the second-instance judgment of the zirconia case.

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Regarding disclaimer amendment, the Guidelines for Patent Examination issued by the China National Intellectual Property Administration (“CNIPA”) provides the following rules and examples in Part II, Chapter 8, Section 5.2.3.3 (3):

“There is a situation in which no other intermediate numerical value within the initial numerical range in relation to a certain technical feature is described in the description and claims as originally filed, but the applicant, in view of the fact that novelty and inventive step are prejudiced by the contents disclosed in reference document(s), or in view of the fact that the invention is impracticable when said feature takes a certain part of the initial numerical range, chooses to use "disclaimer amendment" to exclude said part from the initial numerical range, so that the numerical range of the claimed technical solution as a whole does not obviously include said part. If under such situation, the amendment is generally not allowed because it goes beyond the scope of disclosure contained in the description and claims as originally filed, with the exception that the applicant can prove, in accordance with the contents described in the application as originally filed, that the invention is impracticable when said feature takes the "disclaimed" numerical value, or that the invention possesses novelty and involves an inventive step when said feature takes the numerical value after "disclaimer".

“For example, a claim defines a numerical range of X1 = 600~10000, and the reference document differs from the claim only in that the former discloses a numerical range of X2 = 240~1500. As X1 and X2 overlap partially with each other, the claim does not possess novelty. There is a situation in which applicant amends X1 by disclaiming the part overlapping with X2, i.e., 600-1500, from X1, and thus said numerical range retained in the claim is changed to be from X1 > 1500 to X1 = 10000. Under such situation, such amendment shall not be allowed if the applicant cannot prove, based upon the contents as originally disclosed and the prior art, that the inventions within the numerical range of from X1 > 1500 to X1 = 10000 involve an inventive step over those within the numerical range of X2 = 240~1500 described in the reference document, nor proves that the invention is impracticable when X1 is within 600-1500.”

As can be seen from the above, the Guidelines for Patent Examination do not provide a clear definition of “disclaimer amendment”, but only gives a specific example disclaiming a numerical range, resulting in the lack of uniform and clear guidance in practice. Through this article, the applicable scope, legislative intention and acceptable conditions for “disclaimer amendment” will be sorted and analyzed in light of the judgment of “the zirconia case” by the Intellectual Property Court of the Supreme People’s Court.

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Definition and applicable scope of disclaimer amendment

In the administrative judgment of “the zirconia case”, the Supreme Court has provided a general definition of “disclaimer amendment”: disclaimer amendment refers to introduction of negative technical feature(s) upon claim amendment, which excludes a certain subject matter from the protection scope of the claim, thereby limiting the protection scope. For example, the claims can be amended by using expressions such as “not including”, “not comprising” or “excluding”. Although only the example in relation to a numerical range is provided in the Guidelines for Patent Examination, it should be understood from both the legislative intention and practice that “disclaimer amendment” is not limited to numerical range only, but covers a wider range of features, including numerical range and element set.

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In addition, in order to balance the interests of the public and the patentee, the claimed subject matter retained after disclaimer amendment can be accepted only if it has been directly or implicitly disclosed in the description and claims as originally filed.

It is easy to understand “direct disclosure”, and “implicit disclosure” can be illustrated by the example given in the Guidelines for Patent Examination: for the numerical range of X1 = 600 to 10,000, if the numerical range of X1 = 600 to 10,000 has already been disclosed in the specification, the numerical value of 1,500 may be considered to be implicitly disclosed even though it has not been specifically disclosed in the specification.

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In addition to the above conditions, disclaimer amendment can only be applied to specific and limited situations as follows.

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(1) The situation where patent application’s novelty prejudiced due to its protection scope partially overlapping with that of a conflicting application

When a claim has no novelty for having protection scope partially overlapping with that of a conflicting application, for example, the claim comprises a larger numerical range or a generic term, while the conflicting application discloses a smaller numerical range or a specific value within the same numerical range or a specific term, the applicant can exclude the part disclosed in the conflicting application by disclaimer amendment to establish novelty of the claim.

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(2) The situation where patent application’s novelty is prejudiced due to accidental anticipation

“Accidental anticipation” refers to the situation where the prior art belongs to a technical field far from that of the present application, solves a completely different technical problem and relates to a completely different inventive concept, so that the prior art cannot provide any teaching or enlightment for the present invention, but it does prejudice novelty of the claim of the present application for having protection scope partially overlapping with that of the claim. Similarly, in case of accidental anticipation, the applicant can exclude the part accidentally anticipated by the prior art by disclaimer amendment to establish novelty of the claim.

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(3) The situation where the claim relates to subject matter being excluded from patentability for non-technical reasons

The Guidelines for Patent Examination states in Part II, Chapter 1, Section 3.1.4 that: “a patent application is considered partially contravening Article 5.1 of the Patent Law if a part of the application contains certain content that is contrary to the laws or social morality or that is detrimental to public interest and the rest part of the application is not. In respect of such an application, the examiner shall notify the applicant to amend his application by deleting the part contravening Article 5.1 of the Patent Law during examination.”

The Guidelines for Patent Examination states in Part II, Chapter I, Section 4.3.2 that: “for a method possibly serving both treatment purpose and non-treatment purpose, unless it is clearly stated that the method serves non-treatment purpose, it may not be granted a patent right”.

That is, for the above two situations, the Guidelines for Patent Examination have clearly stipulated that the applicant can disclaim non-patentable subject matter.

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(4) The situation where the invention is impracticable if the feature takes a certain part of the initially defined range

The “invention (being) impracticable” herein is based on common knowledge which is usually obvious, and is easy to be recognized and understood by those skilled in the art, and it will not substantially affect the understanding of the protection scope of a claim by those skilled in the art.

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Further explanation of the acceptable conditions for disclaimer amendment in the “zirconia case”

In the “zirconia case”, one of the controversial issues is whether the applicant’s amendment to claim 1 is a disclaimer amendment and whether it should be accepted.

In the Re-examination Decision made by reexamination and invalidation department of CNIPA, it is stated that: “claim 1 distinguishes from reference document 1 in that claim 1 does not comprise copper oxide powder, but comprises 1 wt%-6 wt% cerium oxide powder. The applicant amended claim 1 by further defining “wherein the first mixture does not comprise copper oxide powder” when the request for re-examination was filed, and the amendment is a disclaimer amendment. Upon examination, the collegial panel holds that since amended claim 1 still lacks inventiveness over reference document 1, the forgoing amendment does not comply with the provisions as to amendments”.

It seems that the Re-examination Decision is made according to the provisions regarding disclaimer amendment of the Guidelines for Patent Examination, which states that, if disclaimer amendment cannot make an invention novel or inventive, such amendment shall not be allowed. It seems that this statement can be interpreted as follows: if one can prove that an invention after disclaimer possesses novelty and inventiveness over the prior art, the disclaimer amendment may be accepted. That is, the establishment of novelty and inventiveness is the prerequisite of acceptance of disclaimer amendment. However, in our opinion, such a widespread understanding is actually a misunderstanding of disclaimer amendment.

In the judgment of the second instance, the Supreme Court also points out that the examination logic on disclaimer amendment in the Re-examination Decision is debatable. The examination logic is to first determine whether the disclaimer amendment goes beyond the disclosure of the application as originally filed, and then determine whether the disclaimer amendment can be accepted according to whether the application possesses novelty and inventiveness after disclaimer amendment; if the application possesses novelty and inventiveness after disclaimer amendment, then the amendment can be accepted; otherwise it cannot be accepted. This examination logic seems difficult to be of self-justification. In examining whether disclaimer amendment can be accepted, the collegial panel ignored the legislative intention of disclaimer amendment, resulting in confusion in determining whether such amendment can be accepted or not.

In terms of whether the applicant’s amendment to claim 1 is a disclaimer amendment and whether it should be accepted, the Supreme Court holds that “the applicant amended claim 1 by further limiting that ‘the first mixture does not comprise copper oxide powder’ during the reexamination procedure. The amendment is not an exclusion of a specific subject matter covered by claim 1, but a further limitation to the whole technical solution of claim 1, thereby failing to meet the formal requirements of disclaimer amendment. Also, the amendment is necessitated neither by establishing novelty over a conflicting application with partially overlapping technical contents or over accidental anticipated prior art, nor by excluding therefrom a subject matter that is non-patentable for non-technical reasons. Therefore, this amendment does not meet the requirements on specific situations of disclaimer amendment. Therefore, the above amendment does not belong to disclaimer amendment and should not be accepted”.

In the judgment, the Supreme Court further explains the acceptable conditions for disclaimer amendment. the amendment should be firstly subject to strict examination to determine whether it meets the formal requirements of disclaimer amendment, whether it belongs to the specific situations applicable to disclaimer amendment, and, after comprehensive consideration of the contents disclosed in the description and claims as originally filed, the disclaimed contents, and the contents retained after disclaimer amendment, and the relationship among the three, whether those skilled in the art can determine that the claimed subject matter retained after disclaimer amendment has been directly or implicitly disclosed in the description and claims as originally filed. After the amendment is determined as disclaimer amendment and is acceptable, it is determined whether the amended claim possesses novelty and inventiveness. In other words, the Supreme Court has made it clear that the fact that the amended claim possesses novelty and inventiveness should not be taken as a prerequisite for determining whether disclaimer amendment is acceptable.

Finally, explanation is given below starting from the legislative significance of disclaimer amendment to facilitate a clearer and straight understanding of disclaimer amendment and its acceptable conditions.

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The legislative significance of “disclaimer amendment”

As can be seen by taking the provisions on disclaimer amendment by the European Patent Office, the Japanese Patent Office and other jurisdictions, and the above-mentioned four specific situations that allow disclaimer amendment into consideration together, the proposal of disclaimer amendment is actually to solve problem(s) encountered in some special situations that are extremely rare and beyond the control of the applicant in patent practice.

As we all know, it is impossible for an applicant to be aware of all conflicting applications and prior arts and exclude them from the protection scope of a patent application when drafting and filing the patent application. As the conflicting application is an earlier patent application that is filed earlier and disclosed later than a later application, the applicant of the later application cannot know its existence, let alone its specific technical contents. In addition, in some cases (usually in the field of chemistry), there is a prior art which discloses technical content partially overlapping with the protection scope of the claimed invention, but the prior art belongs to a technical field that is far from that of the present application, solves completely different technical problem(s) and relates to a completely different inventive concept, and thus the person skilled in the art would never make the claimed invention if starting from the prior art. In other words, this prior art indeed would not motivate the skilled in the art to make improvement on its basis to obtain the claimed invention, and cannot be used to evaluate inventiveness of the claimed invention, but simply accidentally discloses the contents partially overlapping with the claimed contents, therefore prejudicing novelty of the claimed invention. In the above-mentioned two situations, the patent application would not be granted a patent right due to double patenting if the applicant is not allowed to disclaim the overlapping contents, which is obviously unfair to the applicant. Therefore, for the fair protection of patentee(s), a special amendment, namely disclaimer amendment, is proposed to provide a remedy for applicants, in an effort to provide reasonable protection for inventive creations.

Due to the special nature of disclaimer amendment, however, unconditional allowance thereof would have adverse effect and alter the conventional drafting manner of patent applications. Thus, the adoption of disclaimer amendment is indeed extremely strict and is not applicable for most cases. Such amendment is generally not considered as disclaimer amendment and thus is not acceptable, if the amendment is made solely for the purpose of overcoming novelty or inventiveness defects caused by the disclosure of the prior art and is not applicable to the above-mentioned situations.

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