There are no provisions on function features in Chinese Patent Law and implementing regulations. Before the 2006 Third Amendment, provisions on function features could be found in chapter 3.2.1 ("claims shall be supported by the description in compliance with Article 26.4") and chapter 3.2.2 ("claims shall be clear in compliance with Rule 20.1"), part II of the Examination Guidelines. The contents of chapter 3.2.1, part II of the Chinese Guidelines, correspond to part C, chapter III of the EPC Examination Guidelines, in which detailed comments are given on whether function features can be supported by descriptions such as "one example", "particular way" and "vague term". Chapter 3.2.2 prescribes that: "Usually, a product claim shall avoid as much as possible defining the invention in terms of features of function or effects." It clarifies the conditions in which function features can be used in an apparatus claim, before concluding that: "pure function features are not allowed."
It can be seen that although the meaning of the term "function features" in China is similar to the EPC conception, and the provisions on whether function features can be supported by the description are almost the same, according to the Chinese Guidelines before the Amendment, the examiners could raise objections on function features under Rule 20.1 even before discussing the support problems.
Problem definitions
Another prominent difference between the Chinese and EPC Guidelines lies in the requirements of description. We noticed that before the Amendment, in section 2.1 (the requirements of description), chapter 2 and section 4.1 (drafting of description), chapter 9 (software-implemented invention), part II of the Examination Guidelines, there were no such statements in section 4.9, chapter II, part C of the EPC Examination Guidelines, as "for the requirements of Article 83 and of Rule 42(1)(c) and (e) to be fully satisfied, it is necessary that the invention is described not only in terms of its structure but also in terms of its function, unless the functions of the various parts are immediately apparent. Indeed in some technical fields (for example, computers), a clear description of function may be much more appropriate than an over-detailed description of structure."
Apparently, no detailed considerations are given to the special technical fields such as computer networks and telecommunications, where function features are inevitable and widely used in Chinese practice. Nor does the law take into account any drafting requirements and interpretation principles in the description and claims in these fields. In Chinese practice, all features defined by function, whether they define the name of an apparatus or are used in chemical or mechanical areas, or to define a logic device, are called "function features", and are treated the same in theory.
Above all, in discussing the protective scope of function features, the Chinese Guidelines before and after the Amendment state: "Technical features defined by function in a claim shall be construed as embracing all the modes in which the function can be performed." Although there was dispute about whether to delete this statement at various seminars hosted by SIPO and the All-China Patent Agent Association, the new Examination Guidelines retain it. The provision on the interpretation of the protective scope of function features has become a characteristic of the Chinese Examination Guidelines, and it strongly affects examination practice of function features in China.
China and the US
What makes the situation more complex is that most applications coming from the US include function features in the form of "means-plus-function". This definition complies with US 35USC112 paragraph 6. The US MPEP 2181 explains the conditions in which US 35USC112, paragraph 6 can be applied and states: "The Donaldson decision affects only the manner in which the scope of a 'means or step plus function' limitation in accordance with 35U.S.C.112, paragraph 6 is interpreted during examination. The Donaldson decision does not directly affect the manner in which any other section of the patent structures is interpreted or applied." But the same section of US MPEP2181, says: "Interpretation of claims would be confusing indeed if claims which are not means- or step-plus function were to be interpreted as if they were, only because they use language similar to that used in other claims that are subject to this provision."
This statement indicates that in US examination practice, means-plus-function in accordance with 35USC 112 paragraph 6 is regarded as a particular kind of expression of functional language. The Chinese Patent Law, implementing regulations, and the Examination Guidelines, do not outline any corresponding provisions. Therefore, in the Chinese Patent Office these functions are examined in exactly the same way as other function features. Furthermore, China has no corresponding provisions, such as "apparatus claims must be structurally distinguishable from the prior art" of the US MPEP211, or other criteria on the examination of novelty and inventiveness of claims defined by function features. It is not easy for examiners to provide novelty and inventiveness comments on claims including function features under the three steps practice.
Although the Examination Guidelines give no provisions on examination in technical fields such as computer networks and telecommunications and do not distinguish means-plus-function under 35USC 112 paragraph 6 from other function languages, they do prescribe that "technical features defined by function in a claim shall be construed as embracing all the modes in which the function can be performed". This makes Chinese examiners cautious in the examination of function features as well as adhering to strict standards in patenting claims that include such definitions.
In examination practice before the amendment of the Guidelines, the most frequently raised objections to function features are clarity objections under Rule 20.1 and support objections under Article 26.4. Because of the principle "Usually, a product claim shall avoid as much as possible defining the invention in terms of features of function or effects in section 3.2.1 (claims shall satisfy clarity requirements under Rule 20.1)", for a period of time, Rule 20.1 was the easiest and most frequently used ground for objection to function features, especially in technical fields, such as computer networks and telecommuntions. While Rule 20.1 itself only prescribes that the claims shall clearly and concisely define the matter for which protection is sought in terms of the technical features of the invention or utility model, to most applicants, patent attorneys and some examiners, the legal framework covering function features seemed unreasonable.
Unsupported by description
At the same time, objections under Article 26.4 were raised more frequently in software-implemented inventions, which have lots of function features to define the virtual modules in apparatus claims. Since this kind of invention is mainly realized by software, it is described with reference to software flowcharts, without detailed description of hardware where the software is loaded. For most such applications, Chinese examiners are likely to object to the apparatus claim as being unsupported by the description.
In Chinese prosecution practice, examinations of this kind of claim shall be in compliance with sections 4.1 and 4.2, chapter 9 (software-implemented invention), part II of the Examination Guidelines. Unfortunately, before the Amendment, these parts of the Guidelines failed to give detailed drafting requirements on the description and claims of this kind of inventions. Therefore, although the examiner's grounds for such objections were not always well founded, applicants at that time found it hard to overcome them.
The amendment of the Guidelines and the problems regarding function features, especially in electrical field, became hot topics among examiners, patent attorneys and applicants, who provided lots of opinions and proposals after extensive discussions. Finally, the Guidelines came into force on July 2006, bringing two major changes regarding function features.
First, the provisions originally prescribed in chapter 3.2.2 ("claims shall satisfy clarity requirements under Rule 20.1") part II of the Examination Guidelines are moved to chapter 3.2.1 ("claims shall be supported by the description in compliance with Article 26.4"), part II of the Examination Guidelines.
According to the amended Guidelines, in the examination of claims including function features examiners shall see whether the claims can be supported by the description and give their comments. This means most objections on function features will be raised under Article 26.4; the abuse of Rule 20.1 will be alleviated accordingly.
However, the requirements for drafting the description have not been changed, nor are there detail provisions on whether a claim can be supported by the description added at the same time. Therefore, new problems may arise in judging whether a claim can be supported by the description.
Standards
More importantly, since the interpretation principle "technical features defined by function in a claim shall be construed as embracing all the modes in which the function can be performed" still exists, it is likely that the examiners will continue to maintain strict standards in their examination on claims including function features under Article 26.4. Besides, the new Guidelines make examination requirements on amendments stricter than before. Reasonable generalization in compliance with Article 26.4, if introduced after the new filing, is believed to go beyond initial disclosure under Article 33. Therefore we would suggest the applicants pay more attention to the drafting of descriptions when using function generalization in the claims to cover what have been described.
Secondly, the conception "functional module" is introduced into section 5.2.2, chapter 9, part II of the Examination Guidelines. Meanwhile, in section 5.1, new requirements (to satisfy 26.3) are added for drafting applications involving improvements in hardware structures of the computers devices.
It seems that the provisions on section 5.2.2, chapter 9, part II of the new Guidelines find a solution for pending apparatus claims of software-related applications. According to this portion of the new Guidelines, as long as the apparatus claim is drafted in a way that corresponds to and is consistent with the method claim, and detailed description of the method is given with reference to the software flow chart, the apparatus claim is believed to be supported by the description even without block figures of the apparatus or a description of it.
Provisional measures
It should be noted that if the apparatus claims are treated as this category, the protection scope will exclude an apparatus that realizes the solution by the hardware. The protection scope of the apparatus claim eventually obtained according to this Chinese practice might deviate from what the applicants want in the EP or US practices. In fact, in the fields of telecommunication or computers, any solutions achieved by software can be realized by hardware in theory. For someone skilled in the art, after reading the description of the solution with reference to flowchart of the software, inventive thinking is not needed to achieve the same function by prior art hardware design techniques such as VHDL. Therefore, the applicants believe the apparatus claim can get support for the description even though the hardware is not described in detail, and the protection scope of the apparatus claim shall be construed as including the solution achieved by hardware. Furthermore, it seems unreasonable to prescribe that the apparatus claim has the same protection scope as the method claim (section 5.2.2, chapter 9, part II). Therefore, we believe the contents of section 5.2.2, chapter 9, part II of the Examination Guidelines are transitional provisions only, and improvements need to be made in the future.
Only chapter 9, part II of the Examination Guidelines relates to software implemented inventions. In this section, the requirements for the drafting of the description in relation to inventions where hardware is changed have been added since the Amendment (section 5.1, chapter 9, part II of the Examination Guidelines). The examination of inventions in telecommunication or computer fields is often made with reference to this part of the Guidelines. Therefore, if the applicants want to have the substantial apparatus protected, each part of the apparatus and the interconnection or function relationship among them should be described with reference to the block drawings to satisfy the requirements of section 5.1, chapter 9, part II of the Examination Guidelines.
Positive potential
It can be seen that because of the existence of the interpretation, "technical features defined by function in a claim shall be construed as embracing all the modes in which the function can be performed", and the lack of special criteria in judging novelty and inventiveness of claims including function features as in US practice, Chinese examiners are cautious in the examination of function features. Therefore, it is difficult to have the claims including function features granted patent right in prosecution procedure.
So what happens after the patent right is granted? What problems will applicants meet when they use claims including function features against infringement? What standards will the court hold in the interpretation of function features? Last year in the final decision on the infringement litigation of the a utility patent named "deoderizing and sweat absorbing shoe patent", the Beijing High Court explained the interpretation of function features and concluded: "the construction of a function defined feature should be constrained by the specific mode of performing the function as stated in the description of the patent, and it should not be construed as covering all modes in which the function is performed." In this case, the Beijing High Court held that the feature "one-way breathable layer" in the claims should be construed as covering only the embodiment of "a cloth having holes in a funnel shape". Therefore, the patent right of the utility model was not infringed.
This interpretation issued by the People's High Court was widely discussed by various people in intellectual property, since it is not consistent with the interpretation held by the examiners in the prosecution procedure, which seems unfair for the applicants/patentees. Regarding the Third Amendment to the Chinese Patent Law, we hope the discussion will have positive effects on further amendments of the implementing regulations and Examination Guidelines. Then we can hope for more complete and reasonable provisions on function features in Chinese practice.
Li Yafei |
|
Li Yafei received her Telecommunications Engineering degree from Beijing University of Posts and Telecommunications in 1991. Afterwards, she worked for the Research Institute of Data Telecommunications under the Ministry of Posts and Telecommunications as a computer and telecommunications engineer and was engaged in a large R&D project in this field. Li joined CPA in 1995 and qualified as a patent attorney in 1996. She received further training in European and UK patent law with law firms in Germany and the UK in 2001 and a US law firm in 2006. She participated in the research project for the Third Amendment to the Chinese Patent Law in 2005. Li is skilled in drafting patent application documents in telecommunications, computer software and hardware, computer network and computer utilization. She has experience in preparing responses to office actions in substantive examination proceedings, handling patent reexamination and invalidation cases, and dealing with relevant administrative litigation involving patents. She has also provided patent infringement analysis and handled patent infringement cases. She excels at dealing with complicated patent cases in the field of telecommunications. Li is a member of the Chinese Group of AIPPI and a member of All-China Patent Agents Association. |
