According to Rule 20.2 of the Implementation Regulations of the Chinese Patent Law, the independent claim shall outline the technical solution of an invention or utility model and state the essential technical features necessary for the solution of its technical problem. But the Guidelines for Patent Examination does not specify what the essential technical features are or the least specificity of disclosure. Moreover, the above rule is in a co-competition relation with the articles relating to clarity and support by the descirption. Therefore, the application of the above rule in practice is disputive.

Recently, we won the second instance in an administrative lawsuit over the declaration of invalidation of a patent. In the written judgment, the court elaborated the legislative intent of the articles relating to essential features and stated that: the intent of regulating that an independent claim must include essential technical features is to regulate the drafting manner of claims; in a case where it can be determined by those skilled in the art from the reasonable construction of the claims that the claims include all of the essential technical features for solving the technical problem, rejecting the grant of a patent merely because the independent claim does not include further specified technical features would result in underestimation of the inventiveness due to the strict requirements for the drafting of the patent document, which goes against to the legislative intent of the Patent Law to encourage invention creation. Further, the court expressed the opinion that, if the technical solution determined according to the claims cannot be implemented by the public to solve the technical problem, or the scope of protection of the claims does not match the technological contribution made by the patent, other articles of the patent law may be applied. The above opinions of the court provide guidance for future prosecution and trial.

As to the present case, the patentee of the subject patent entrusted us with an infringement lawsuit against the alleged infringing company; the alleged infringing company then filed a request for invalidation declaration against the subject patent.

Upon the entrustment of the patentee, we analyzed the grounds for invalidation set forth in the request for invalidation declaration, including lacking essential technical features, going beyond the scope, being unclear, and lacking inventiveness. Based on thorough discussion with the client, we proposed to amend the claims in order to sustain the validity of the claims as well as avoiding adverse influence on the judgment of the infringement case.

Based on the amended claims submitted by the patentee, the CNIPA sustained the validity of the claims.

The petitioner then made an appeal against the Decision on the Examination Decision on Request for Invalidation. In the first instance, a major dispute was over lacking essential technical features and inventiveness. The court of first instance determined that the independent claim of the subject patent lacked the essential technical features, and made the judgment to cancel the sued Decision.

The patentee and the CNIPA were not satisfied with the judgment of the first instance and both appealed to the court. In the second instance, we elaborated that the subject patent did not lack essential technical features from multiple perspectives.

Eventually, Supreme People’s Court Intellectual Property Court supported our claims and stated the following opinions with regard to the determination of lacking essential technical features:

(1) In the determination of whether or not an independent claim lacks essential technical features, in principle the determination must be based on the technical problem to be solved by the invention as described in the specification; the technical means that is necessary for solving the technical problem to be solved by the invention is the essential technical feature.

(2) In the determination of whether or not an independent claim lacks essential technical features, the object of invention and other disclosure of the specification should also be taken into consideration; and the conclusion should be drawn based on reasonable construction of the claims. The independent claim can be determined to lack essential technical features only when those skilled in the art does not consider the technical solution according to the independent claim cannot solve the technical problem to be solved by the invention even based on reasonable construction of the independent claim with reference to the claims, the specification and the figures.