Claims interpretation limited to disclosed information

By Jiang Fengtao and Yang Cunji, Hengdu Law Offices
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A patent’s description and figures may be used to interpret the information within its claims, but this does not mean that any information in its description itself may be interpreted as part of its claims. When the description is used to interpret the claims, the description should be the basis so as to make the scope of protection of the claims consistent with the scope disclosed in the description. Information insufficiently disclosed in the description should not be interpreted into the scope of protection of the claims.

Jiang Fengtao Managing Partner Hengdu Law Offices
Jiang Fengtao
Managing Partner
Hengdu Law Offices

Patent in dispute

In a patent rights confirmation dispute involving an invention entitled “Nickel-iron smelting process from nickel oxide ore containing crystallized water through a blast furnace”, claim 1 reads as follows:

“A nickel-iron smelting process from nickel oxide ore containing crystallized water through a blast furnace, characterized in that: … sintered ore blocks, coke, limestone/lime, dolomite and fluorite are mixed and smelted in a blast furnace to obtain nickel iron, where the weight ratios of the following additives and sintered ore are as follows: fluorite 0.3 ~ 20% ….”

The patent rights holder asserted that the quantity of added fluorite in claim 1 was arrived at based on the quantity of chromium oxide, whereas the quantity of added fluorite disclosed in the comparison documents was arrived at based on the quantity of silicon dioxide and calcium oxide, making comparison of the two impossible.

The Supreme People’s Court (SPC) in this case set out that the description for the patent in question did not mention anything about the relationship between the quantity of added fluorite, the chromium oxide content and the fluidity of the molten iron. The SPC also noted that the description made no mention of the creative work done by the retrial applicant in respect to the particularities of chromium oxide to resolve the molten iron liquidity issue.

When using the description and figures to interpret a claim, the SPC stated, the interpretation should be based on the description, so as to make the scope of protection consistent with the scope disclosed in the description.

From this perspective, the quantity of added fluorite in claim 1 for the patent in question should not be interpreted as being limited to being calculated based on the amount of chromium oxide in the nickel oxide ore.

Yang Cunji Associate Hengdu Law Offices
Yang Cunji
Associate
Hengdu Law Offices

Patent system at its essence

The patent system is, essentially, trading disclosure for exclusivity. The description is the scope of the disclosure and the claims are the scope of exclusivity. The standards for disclosure are clarity and completeness, such that a person skilled in the art can realize it. Information that does not meet these criteria should not be deemed information disclosed within the description in exchange for exclusivity.

During this exclusivity exchange, the scope of exclusivity should be equal to that of the disclosure, based on the principle of reciprocal exchange. On the other hand, the rights holder may reduce the scope of exclusivity at its own initiative, based on the principle of disposal of rights. These two aspects determine that the scope of exclusivity must fall within the scope of the disclosure. Article 26, paragraph 4 of the Patent Law specifies that description-based claims are the legal embodiment of this basic principle.

Article 59 of the Patent Law specifies that the scope of protection of an invention or utility model patent is determined by the content of its claims. Accordingly, the word “claim” (权利要求) emphasizes that such a demand should be asserted to the maximum extent of the rights supported by the description, while also emphasizing that the demand arises based on a request.

In other words, information that is not disclosed or not fully disclosed in the description should not fall within the scope of the patent’s protection because it falls outside the boundaries of the maximum extent supported by the description. Disclosed information not asserted in the claims does not fall within the scope of the patent’s protection because its protection was not requested.

The description and figures can be used to interpret the claims to make the scope of patent protection clearer and more definite, but, in doing so, the essence and basic principles of the patent system should be exemplified so the interpreted claims can satisfy the basic requirement of using the description as the basis for patent protection, and cause the scope of protection to be consistent with the information disclosed in the description. Information not disclosed or insufficiently disclosed in the description should not be interpreted into the claims’ scope of protection.

Article 26, paragraph 3 of the Patent Law stipulates that the description should give a clear and complete explanation of the invention or utility model such that a person skilled in the art could realize it. Where a description only provides a specific technical solution without providing experimental data, and the technical solution is tenable only if validated based on experimental results, the technical solution will be deemed impossible to realize due to a lack of technical means to resolve the issues.

In the case mentioned above, after reading the description for the patent in question, a person skilled in the art would not have obtained any theoretical deduction or practical validation that could lead him or her to believe that the quantity of added fluorite for the patent in question was arrived at based on the content of chromium oxide or that it could indeed resolve the pertinent technical issue and generate the anticipated technical effect.

Accordingly, the description of the patent in question failed to fully disclose the technical solution calculating the quantity of fluorite to add based on the content of chromium oxide. As such, the technical solution could not be interpreted into claim 1 for the patent in question.

In the claims game, respecting and safeguarding the basic principle of trading disclosure for exclusivity and continuously improving the rules for claims interpretation are beneficial in fairly and reasonably defining the scope of patent protection. So doing thereby not only protects the legitimate rights and interests of rights holders and encourages creation and invention – it also prevents inappropriate monopolization of the public domain and the impediment of technical innovation.

Jiang Fengtao is the managing partner and Yang Cunji is an associate at Hengdu Law Offices

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