In the invalidation procedure, there have always been disputes over whether amendments should be allowed after grant to correct a mistranslation in PCT applications, and whether such mistranslation would cause a patent to be declared invalid as being challenged of go-beyond-scope amendment. It seems inequitable to deny a patent of its technical contribution due to a mistranslation. On the other hand, permitting unconditional corrections after grant undermines the principle of public notice, harming the trust and the interests of the public. The expanding use of AI translation in PCT filing is leading to an increase in disputes arising from translation errors. For such disputes, guidance can be found in the second-instance judgment in an administrative lawsuit we recently won to invalidate the subject patent. This judgment draws attention to the accuracy of the translation of PCT applications, as a mistranslation could put the validity of a granted patent at risk.
Claim 1 of the subject patent reads: “A tablet, comprising sevelamer carbonate and sodium chloride, wherein the sodium chloride comprises 0.05％ to 2％ of a combined weight of sevelamer carbonate and sodium chloride.” However, according to the disclosure of the original PCT filing, it can be determined that monovalent anion (chloride ions in the sodium chloride) comprises a range of 0.05％ to 2％ or 0.05 to 1% of a combined weight of sevelamer carbonate and sodium chloride.
The CNIPA did not consider this inconsistency of disclosure to introduce the go-beyond-scope defect. Whereas both the court of first instance and the court of second instance agreed with us that the granted claim exceeded the scope of the original filing, failing Article 33 of the Patent Law, and hence quashed the contested Examination Decision on Request for Invalidation made by the CNIPA while ordering the CNIPA to re-make an examination decision.
During the trial, we persuasively argued that the claims of the subject patent exceeded the allowable scope. The patentee sought to justify the claims by elaborating on the disclosure of the specification and construing the scope of protection of the claims. The patentee also reviewed the prosecution history to explain the origin of the go-beyond-scope defect, citing the special provisions of the Guidelines for Patent Examination regarding amendments to numerical ranges. Additionally, the patentee invoked interpretations for the Patent Law and its Implementing Regulations concerning errors in PCT translation and the principle for balancing between public interests with those of the patentee. We rebutted each of these assertions of the patentee.
The courts supported our arguments. In the administrative judgment of second instance, the Supreme People’s Court found that the contested Decision was correct to decline the amended documents submitted by the patentee in the invalidation procedure. Moreover, regarding whether the granted claims complied with Article 33 of the Patent Law, the court ruled that:
“In the case of an international application, the “description and claims as filed” under Article 33 refers to the specification, the claims, and the drawings of the original filing for the international application. Granted claims 1 and 2 have deviated from the contents of the original description and claims and involves amendments thereto. On the other hand, an amendment to a numerical range in a claim is allowed only if the following conditions are met: (1) the two end values of the amended numerical range are explicitly disclosed in the original description, and/or claims, and (2) the amended numerical range is within the original numerical range. As to the subject patent, the end values of the proportion of sodium chloride defined in claims 1 and 2 are not found in the original filing. Thus, the amendments incorporated into granted claims 1 and 2 exceeded the scope of the original disclosure of the international application, in violation to Article 33 of the Patent Law. Likewise, dependent claims 3 to 14 have the same defect.”
Furthermore, the judgment of second instance set forth that: “The subject patent has been granted and announced to the public, and should therefore keep in line with the relevant provisions of the Patent Law. Despite the court’s finding that the contested Decision was reasonable in accepting the amendments contained in the granted claims—based on the patentee's technical contribution and the acknowledged error in the Chinese translation—the applicant must still bear the consequences for having overlooked the mistranslation throughout the national phase, even at the time of making amendments after publication.”
The court ultimately affirmed the original judgment and dismissed the appeal.
Claim 1 of the subject patent reads: “A tablet, comprising sevelamer carbonate and sodium chloride, wherein the sodium chloride comprises 0.05％ to 2％ of a combined weight of sevelamer carbonate and sodium chloride.” However, according to the disclosure of the original PCT filing, it can be determined that monovalent anion (chloride ions in the sodium chloride) comprises a range of 0.05％ to 2％ or 0.05 to 1% of a combined weight of sevelamer carbonate and sodium chloride.
The CNIPA did not consider this inconsistency of disclosure to introduce the go-beyond-scope defect. Whereas both the court of first instance and the court of second instance agreed with us that the granted claim exceeded the scope of the original filing, failing Article 33 of the Patent Law, and hence quashed the contested Examination Decision on Request for Invalidation made by the CNIPA while ordering the CNIPA to re-make an examination decision.
During the trial, we persuasively argued that the claims of the subject patent exceeded the allowable scope. The patentee sought to justify the claims by elaborating on the disclosure of the specification and construing the scope of protection of the claims. The patentee also reviewed the prosecution history to explain the origin of the go-beyond-scope defect, citing the special provisions of the Guidelines for Patent Examination regarding amendments to numerical ranges. Additionally, the patentee invoked interpretations for the Patent Law and its Implementing Regulations concerning errors in PCT translation and the principle for balancing between public interests with those of the patentee. We rebutted each of these assertions of the patentee.
The courts supported our arguments. In the administrative judgment of second instance, the Supreme People’s Court found that the contested Decision was correct to decline the amended documents submitted by the patentee in the invalidation procedure. Moreover, regarding whether the granted claims complied with Article 33 of the Patent Law, the court ruled that:
“In the case of an international application, the “description and claims as filed” under Article 33 refers to the specification, the claims, and the drawings of the original filing for the international application. Granted claims 1 and 2 have deviated from the contents of the original description and claims and involves amendments thereto. On the other hand, an amendment to a numerical range in a claim is allowed only if the following conditions are met: (1) the two end values of the amended numerical range are explicitly disclosed in the original description, and/or claims, and (2) the amended numerical range is within the original numerical range. As to the subject patent, the end values of the proportion of sodium chloride defined in claims 1 and 2 are not found in the original filing. Thus, the amendments incorporated into granted claims 1 and 2 exceeded the scope of the original disclosure of the international application, in violation to Article 33 of the Patent Law. Likewise, dependent claims 3 to 14 have the same defect.”
Furthermore, the judgment of second instance set forth that: “The subject patent has been granted and announced to the public, and should therefore keep in line with the relevant provisions of the Patent Law. Despite the court’s finding that the contested Decision was reasonable in accepting the amendments contained in the granted claims—based on the patentee's technical contribution and the acknowledged error in the Chinese translation—the applicant must still bear the consequences for having overlooked the mistranslation throughout the national phase, even at the time of making amendments after publication.”
The court ultimately affirmed the original judgment and dismissed the appeal.