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Amendments by Means of Disclaimer Must Also Comply With the Requirements for Sufficient Disclosure and Enablement and the Requirements for Clarity and Supportiveness
According to Article 43 of the Patent Act, “Except for correction of translation errors, any amendment shall not extend beyond the scope of content disclosed in the description, claim(s), or drawing(s) as filed.” The permitted amendments exemplified in the Patent Examination Guidelines include “disclaimer”, that is, if adding positive features to the claim would not define more clearly and concisely the subject-matter that is still protectable, negative limitation can be used to “disclaim” the part which overlaps with the prior art. In this connection, although the revised claims include the technical features that were not disclosed in the specification at the time of application (i.e., the excluded prior art), such amendment can be exceptionally regarded as not introducing new matter. The technical features introduced by means of disclaimer should also meet the requirements for sufficient disclosure and enablement as well as the requirements for clarity and supportiveness provided in Article 26 of the Patent Act. The Supreme Administrative Court has confirmed such requirements in the 2018-Pan-Zi No. 95 Judgment made on February 8th, 2018.
In this case, the appellant is the patentee of the ROC invention patent No. I341203, pertaining to an invention "Rabbit Skin Containing Biologically Active Substance and Uses thereof" (hereinafter referred to as the "Patent in Suit"). During the prosecution of the Patent in Suit, in order to exclude the technical overlapping with the prior art EP0645142, the limitation “the active substances contained in the rabbit skin do not contain silicon” was added to Claim 1. Afterwards, a cancellation petitioner filed a cancellation action against the Patent in Suit, claiming that the limitation violated the provisions of Paragraphs 2 and 3 of Article 26 of the Patent Act. The cancellation petitioner's reason is that the specification of the Patent in Suit fails to disclose how to remove the silicon that naturally exists in rabbit hair and rabbit skin so as to arrive at the feature "the active substances contained in the rabbit skin do not contain silicon," so it is impossible for persons of ordinary skill in the art to carry out the technical feature “the active substances contained in the rabbit skin do not contain silicon.” And accordingly, such feature is not supported by the specification. The cancellation petitioner's claim is recognized by the Intellectual Property Office and the Intellectual Property Court.
In this regard, the patentee claimed that the amendment by means of disclaimer should be exceptionally regarded as not having introduced new matter, and thus it is unnecessary for the amended claims to comply with the provisions of Paragraph 3, Article 26 of the Patent Act. Accordingly, the Intellectual Property Court’s judgment considering that the Patent in Suit violates Paragraph 3, Article 26 of the Patent Act obviously imposes the restriction that is not provided by laws, and thus such judgment violates laws. After the trial of the Supreme Administrative Court, the Court held: while Article 49 of the Patent Act stipulates the requirements and time for making supplement and amendment of a patent document, Paragraph 3, Article 26 of the Patent Act is about the requirement that claims should comply with; the two Articles concern different aspects of patentability. The Court further clarified that the overall disclosure of the claims after supplement or amendment should also comply with the clarity requirement, allowing persons of ordinary skill in the art to clearly understand its meaning on the basis of general knowledge at the time of application, and should be supported by the specification and drawings, such that the amended claims comply with the provisions of Paragraph 3, Article 26 of the Patent Act. The Supreme Administrative Court expressly stated in the judgment that the appellant’s claim, which stated that the provision of Paragraph 3, Article 26 of the Patent Act does not apply to the claim amendment by means of disclaimer, is not admissible.
The “disclaimer” provisions in ROC’s Patent Examination Guidelines are relatively loose compared to other countries such as Europe, the United States, Japan and Mainland China. The applicable conditions are “used to exclude technical content that overlaps with prior art” and “positive features would not define more clearly and concisely the subject-matter still protectable." Under such conditions, most of the cases concerning amendments by means of disclaimer can be considered to comply with the provisions and admissible. However, it should be noted that the technical features introduced in this way must also comply with the requirements for sufficient disclosure and enablement and the requirements for clarity and supportiveness stipulated in Article 26 of the Patent Act.