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During the current examination of a divisional application, the reasons for objecting to the application provided in the office action are usually related to the claims in the divisional application having exceeded the scope contained in the initial description and claims. In this circumstance, it is necessary to have an understanding of the principles and rules for the examination of divisional applications and of the reasons why an amendment goes beyond the initial scope.
1．Principles for Current Examination of Divisional Applications Going beyond the Initial Scope
As a general principle, Article 43 of the Detailed Implementing Rules of the Patent Law requires that a divisional application can not exceed the scope of disclosure in the initial application.
Detailed Implementing Rules of the Patent Law (2002): Article 43
Divisional applications filed in accordance with Article 42 hereof may retain the original date of application. If they have right of priority, the date of the right of priority may be retained. However, the scope of the disclosure in the parent application may not be exceeded.
Chapter 6, Part II of the Guidelines for Examination further explains that the “scope of disclosure” in Article 43 of the Rules should be understood as the “scope of disclosure” in Article 33 of the Patent Law.
Guidelines for Examination (2006): Part II, Chapter 6, 3.2 Requirements to Be Met by a Divisional Application
（2）The divisional application shall not go beyond the scope of disclosure of the original application. Otherwise, it shall be rejected on the ground that it does not comply with Article 43.1 the Implementing Rules or Article 33 of the Patent Law.
Patent Law (2000): Article 33
An applicant may amend his or its application for a patent, but the amendment to the application for a patent for an 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 a design may not go beyond the scope of the disclosure as shown in the initial drawings or photographs.
Therefore, as to whether the contents of a divisional application have exceeded the initial scope, the examination principle from Article 33 of the Patent Law shall be applied. In other words, any "new elements" in the divisional application shall be deemed as an amendment to the initial application documents (the description and the claims). It is this amendment that should be examined to see whether it is beyond the scope of disclosure in the initial description and claims.
Chapter 8, Part II of the Guidelines for Examination explains an amendment beyond the scope of the initial documents as follows:
Guidelines for Examination (2006): Part II, Chapter 8, 5.2.3 Disallowable Amendments
As a principle, any amendment to the description (and the drawings) and the claims which is not in conformity with the provisions of Article 33 is not allowable.
Specifically, if, after the addition, change and/or deletion of part of the contents of the application, the information as seen by a person skilled in the art is different from described in the initial application and such information cannot be directly or unambiguously derived from those described in the initial application, such amendment shall not be allowable.
With respect to disallowable amendments, this Chapter 8 of the Guidelines specifically lists the following circumstances:
(1)The technical features of the claims are changed. Such amendment goes beyond the scope of the contents described in the initial claims and description.
(2)New contents are introduced by changing indefinite contents into definite and specific contents.
(3)Several separate features of the initial application are combined as a new feature while the interrelations of these separate features are not disclosed in the initial application.
(4)Certain features described in the description is changed to
(5)Make the changed technical contents different from those described in the initial application. Such amendment goes beyond the scope described in the initial description and claims.
2．Case Study
The initial application involved a method for producing chemical W, which mainly included three basic production steps that were disclosed in existing technologies, namely: (a) dissolution; (b) deoxidization; and (c) crystallization. The initial description described the three steps in detail, and claimed protection for a technical solution which detailed specific sub-steps and features of the parameters within step (b), deoxidization. If the features of the specific parameters in step (b) are collectively referred to as Feature X, then the technical solution in the claims is A+B+C+X, where A+B+C constitutes the preface and X constitutes the features of the technical solution.
The Examination Department of the Patent Office issued a notice on granting the patent right after an examination of the initial application. Later, the applicant filed a divisional application based on the initial application; the claims of the divisional application requested protection for the technical solution which detailed features of the specific parameters in step (c), crystallization (these features are collectively referred to as Feature Y). Therefore, the technical solution for which protection was sought was A+B+C+Y, where similarly, A+B+C constituted the preface and Y constituted the features of the technical solution.
After an examination, the Patent Office rejected the divisional application on the ground that the technical solution in the divisional application had exceeded the scope of disclosure in the initial application and therefore did not conform to Article 43 of the Detailed Implementing Rules of the Patent Law.
It should be noticed that the examiner was taking the technical solution as a whole as the subject matter to be examined; in other words, the examiner was focusing on whether the whole technical solution was disclosed in the initial description and claims, instead of only focusing on whether a certain technical feature in the technical solution was disclosed in the initial documents.
First, it can be affirmed through a review of the initial description that technical solution in Claim 1 of the divisional application is not independently and consecutively disclosed in the initial description and claims.
Second, the distinguishing technical feature Y does not independently form a complete technical solution; rather, it is a specific feature within the detailed way of implementation section of the initial description. Specifically, said detailed way of implementation describes a complete solution for producing the compound W, including the three steps (dissolution, deoxidization and crystallization), which, when taken together, define the scope of the way of implementation (i.e., the scope of disclosure in the initial description deemed by the examiner); or in other words, the technical solution is composed of technical features from all three steps put together. However, the technical solution for producing the compound W (with respect to the foresaid detailed way of implementation in the initial description) in Claim 1 of the divisional application only adopts the specific features in step (c), crystallization, while omitting the specific features in step (a) and step (b) (or no distinguishing feature can be formed if restricted to the technical background only). It is obvious that the scope of the technical solution formed by only one distinguishing feature (i.e., the scope defined by Claim 1 of the divisional application) is wider than the scope of the technical solution formed by the combination of the initial three distinguishing features (i.e., the scope defined by the detailed way of implementation section in the initial description);the scope of the former exceeds that of the latter.
Based on the aforesaid reasons, the examiner held the opinion that the technical solution defined by the claims of the divisional application was not disclosed in the initial description and claims and that the scope defined by the divisional application also exceeded the scope defined by the detailed way of implementation section in the initial description, and therefore the divisional application did not conform to Article 43.1 of the Implementing Rules of the Patent Law.
3．Present Status of the Examination of Divisional Applications
Presently, with respect to amendments beyond the initial scope, the PRC Patent Office is following the principle prescribed in Article 33 of the Patent Law when deciding whether a divisional application has exceeded the scope of the initial application.
The following two circumstances will generally be considered as exceeding the initial scope of disclosure:
(1)Since the contents disclosed in the initial description are usually very specific, once such specific contents are summarized (or a part of the technical contents is deleted) and therefore a new technical solution is formed (claims of the divisional application), if the summarized contents are not independently and completely disclosed in the initial description, the new technical solution will usually be rejected on the ground that it has exceeded the initial scope of disclosure.
(2)Even though a certain technical feature of the divisional application is completely disclosed in the initial description, the overall technical solution claimed by the divisional application as a whole is not completely disclosed in the initial description but is rather only one part of a detailed way of implementation in the initial description (and moreover said detailed way of implementation includes other technical features); in this circumstance, a technical solution composed by said technical feature only will also be rejected for the same reason as mentioned in point (1) above.
As a result, in practice, if a claim in a divisional application is not for a technical solution from a claim deleted from the initial application (i.e., such technical solution has never been disclosed in the initial application by means of a claim), but instead is for a technical solution that has not been disclosed in the initial description, then such a divisional application can hardly be granted a patent right.
In addition, it is worth mentioning that whether a claim “can be supported by the description” and whether a claim “has exceeded the initial scope of disclosure” are two different concepts. A summary of the specific technical contents of the description can be supported by the description, but may still exceed the initial scope of disclosure due to its wider scope. An amendment to the application documents should not aim to be “supported by the description” but should instead strive to not “exceed the initial scope of disclosure”.
4．Suggestions in Response to Divisional Applications
Amendments to the application documents (including the description and the claims) and to the contents of the divisional application on the basis of the initial application should both conform to the initial description and claims. With respect to a new claim filed in a divisional application, the key in deciding whether it has exceeded the initial scope usually lies in whether it is completely disclosed in the initial description or claims.
Take the above case study for example. If the applicant hopes to file a divisional application with respect to a certain technical feature in the initial description and meet the requirement that the divisional application does not exceed the scope of the initial description and claims, he will have to take the technical solution to which said technical feature belongs as a whole; in other words, he will have to take the detailed way of implementation contained in the initial description as a complete technical solution (claim). However, the scope of protection of such a claim will be very limited and therefore becomes practically meaningless.
In order to avoid the above circumstance, the writer would like to focus your attention on the following issues when you first draft the application documents:
(1)For a technical solution containing several technical features, if some features are not essential for achieving the solution, it would be better if you consider different combinations of these inessential features. The technical solutions formed by these combinations will define different scopes and it is better if they are disclosed in the claims or description by means of a claim.
(2)For a technical solution containing several technical features, if all of the technical features form a complete technical solution (i.e., all of them are essential for achieving the solution), it is advisable to consider the following independent technical solution (or way of implementation): take one of the features as the key point (distinguishing feature) and describe it in detail while giving a general description of the rest of the features (on the existing technology level). The technical solutions formed in this way will define different scopes and it is better if they are disclosed in the claims or description by means of a claim.
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