ACPAA Symposium on Article 33 of Chinese Patent Law

During 25-26 November 2010, an academic symposium organized by All-China Patent Agents Association (ACPAA) on the theme of  "Theory and Practice Regarding Article 33 of the Chinese Patent Law" was held in Beijing. The symposium attracted 238 participants, including examiners from the State Intellectual Property Office of China (SIPO), judges from intermediate people's courts, attorneys from major domestic patent agencies and corporate representatives. Mr. He Hua, Deputy Commissioner of SIPO also attended the symposium. 

In recent years, there has been a difference in opinions surrounding the interpretation of Article 33 of the Chinese Patent Law, an article pertaining to making amendments to patent documents. According to literal wording, Article 33 of the Chinese Patent Law reads: "An applicant may amend his or its 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 the disclosure contained in the initial description and claims, and the amendment to the application for a patent for design may not go beyond the scope of the disclosure as shown in the initial drawings or photographs."
 
The diverse opinions regarding this article mainly relate to how to interpret the requirement that the amendment to the application for invention or utility model "may not go beyond the scope of the disclosure contained in the initial description and claims" and the amendment to the application for a patent for design "may not go beyond the scope of the disclosure as shown in the initial drawings or photographs". In other words, the core issue is: what constitutes "new matter" in making amendment to patent application. 
 
As a current practice, patent examiners during the examination process usually adhere to the Guidelines for Examination as revised in 2006, which limits the allowable scope of amendments to contents that can be "directly and unambiguously determined", or in even stricter sense, contents that can be "solely determined", from the description. This, however, has led to an abrupt increase in rejection of applications by reason of non-compliance to the Article, thus evoking much discussion within the patent agency industry and enterprises concerned.     
 
Against this backdrop, ACPAA has called for its members to participate in papers contribution on relevant topic. A total of 65 papers responded to the call, among them 36 are from SIPO and 29 from patent agencies.  
 
The symposium touched upon topics related to legislative purposes, examination criteria, agency practice, and amendment to application documents under Chinese and foreign patent laws. Discussions concerning the determination of whether the amendment goes beyond the scope of disclosure include: the balance of interest between the general public and the patent applicants, the determination criteria, scope of recitations against scope of disclosure, "solely determined" and "directly, unambiguously determined", the role of "a person skilled in the art" in the determination, and determination criteria adopted by the U.S. and Japan.
 
Our firm will closely monitor the industry discussion about Article 33 of the Chinese Patent Law, and report promptly on the latest development regarding the criteria for determining whether an amendment goes beyond the scope of original disclosure.