The regulation on clarity of claims in Chinese Patent Law has many differences from the patent regulations of other countries, and examination on clarity of claims can be very strict in Chinese patent practice, leading to various clarity objections. Many foreign applicants may be confused by some of the clarity objections issued by the Chinese Patent Office if they are not familiar with clarity regulations in China. This article aims to provide a brief introduction on clarity regulations in Chinese Patent Law and strategies for responding to clarity objections in Chinese patent practice.
Explanation on articles and regulations on clarity in Chinese Patent Law
As set forth in Article 26.4 of the Chinese Patent Law, the claims shall be supported by the description and shall define the extent of patent protection sought for in a clear and concise manner. As for the clarity of the claims, the Chinese Guideline for Patent Examination (2010) explains it in the following parts.
1. Firstly, the category of each claim shall be clear. The title of the subject matter of a claim shall indicate clearly whether the claim is a product claim or a process claim. It is not permissible to use a vague title for the subject matter, such as "A technique ...", or to include both product and method in the title of the subject matter of a claim, such as "A product ... and a process for making the same".
What is notable here is that the Chinese Guideline defines that a use claim belongs to the category of a process claim. However, a claim in the form of "using compound X as an insecticide" or "the use of compound X as an insecticide" is a use claim, and belongs to a process claim, while a claim in the form of "an insecticide made of compound X" or "an insecticide containing compound X" is not a use claim but a product claim. A very common form of use claims in patents of other countries is "A product for use....". However, according to the explanation above, this kind of claim will only be taken as a product claim, and the use feature therein will not have a limiting effect in Chinese patent practice. If the applicant would like to claim for a use with claims of this format, they may be amended into use claims such as "Use of a product in...." or amended into Swiss-type use claims in case the use is deemed as a treatment or diagnosis method, which is unpatentable in Chinese patent practice.
2. Secondly, the extent of protection as defined by each claim shall be clear. The extent of protection of a claim shall be construed according to the meaning of the words used in the claim. Generally, the words used in a claim shall be understood as having the meaning that they normally have in the relevant art.
The regulations on clarity of terms and expressions in claims in Chinese patent practice are rather strict. In particular, the Guideline sets forth the following conditions:
i) Indefinite meaning: any term whose meaning is indefinite, such as "thick", "thin", "strong", "weak", "high temperature", "high pressure", "very broad scope", etc. shall not be used in a claim, unless the term has a well recognized definite meaning in the particular art, such as "high frequency" in relation to an amplifier.
ii) Defining different extents of protection: such expressions as "for example", "such as", "had better ...", "particularly", "if necessary", and the like (more commonly, "preferably", "superficially", etc.) shall not be used in a claim, since they will define different extents of protection in a single claim, making the extent of protection thereof unclear.
iii) Coexisting of a generic and a specific term: where in a claim there exists a generic term being followed by a specific term, the examiner shall invite the applicant to amend the claim.
iv) Uncertain terms: generally, such terms as "about", "approximately", "etc.", "or the like", and the like shall not be used in a claim, since they are likely to make the protection extent of the claim unclear.
v) Use of parentheses: except for being used with reference signs, chemical formulae, or mathematical formulae, use of parentheses in a claim, such as "(concrete) moulded brick", shall be avoided as far as possible so as to prevent the claim from being unclear.
3. Finally, the claims as a whole shall be clear as well. This means that the reference relations between the claims shall be clear, and all referred features in dependent claims shall have their basis of reference.
Strategies for responding to clarity objections in Chinese patent practice
Among all the clarity objections in Chinese patent practice, the ones according to part 2 above can be the most common and confusing. Thus, this part will focus on strategies for responding to objections according to each condition as mentioned in part 2 above.
i) Indefinite meaning: as mentioned in the Chinese Guideline, where the term has no well-recognized meaning, it should, if possible, be replaced by a more precise wording selected from the description. For example, for the word "thick", if there is a precise definition of "thick" in the description, such as a specific range of thickness, the claim may be amended to replace the word "thick" with the specific range of thickness.
ii) Defining different extents of protection: when there is an expression that defines different extents of protection in a claim, such as "preferably", such expression and its following features need to be deleted in order to overcome the clarity objection. The deleted features can be defined in a newly added dependent claim.
iii) Coexisting of a generic and a specific term: where in a claim there exists a generic term being followed by a specific term, such as "polymer" and "polyethylene", one of the terms needs to be deleted in order to overcome the clarity objection. Generally, the specific term is deleted from the claim and defined in a new dependent claim.
iv) Uncertain terms: as mentioned in the Chinese Guideline, where in a claim there exists such a term, the examiner shall make a judgment as to whether use of such term makes the claim unclear according to the specific situation, and if not, the use of such term is permitted. For example, according to Chinese patent practice, in the Chemistry field, the word "about" is sometimes allowed due to inevitable errors and impurities. In the case where the examiner insists that such word makes the claim unclear, it needs to be deleted.
v) Use of parentheses: as mentioned in the Chinese Guideline, bracketed expressions with a generally accepted meaning are allowable, for example "(meth)acrylate", "containing A of 10%-40% (weight)". In the case where the parentheses are deemed as unclear by the examiner, the parentheses need to be deleted. The bracketed terms may be kept in the claims.
Hereinbefore the regulations on clarity in Chinese Patent Law are explained and strategies for responding to clarity objections in Chinese patent practice are briefly introduced. In practice, the conditions of clarity objections can be more complex, though the basic clarity regulations and fundamentals for responding to the objections are the same. Sometimes it can be helpful to have a telephone interview with the examiner to discuss the specific clarity objection and the examiner's opinion on it.
Originally published 25 May, 2020
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
