In cases involving patent infringement or granting/validation, how should the court address any defect or error in the claims? There may be various views on this. Especially in cases involving patent infringement, if the claims are defected or erroneous, can the court not affirm the accusation by referring to the "Bai Wanqing Case for Patent Infringement" by the Supreme People's Court (Minshenzi No. 1544 (2012)) on the ground that the claimed scope of protection is obviously unclear? This complicated issue can be in various circumstances, which should not be lumped together. This author intends to discuss whether the court may allow any defect in the claims be corrected in the proceedings, if the defect is obvious? It may lead to a few questions. First, what makes an obvious defect in the claims? Second, under what condition can the correction of any obvious defect in the claims be allowed? Third, why is the correction of the obvious defect allowed during the court proceedings? These questions are analyzed in the following.

Shi Bisheng

I. What Makes an Obvious Defect in the Claims

The reason for using the term "obvious defect" instead of "obvious error" to describe any remediable flaw in the claims is that compared with an "error", it would be easier for people to accept the correction of a "defect". Moreover, Article 26, Paragraph 4 of the Patent Law as amended in 2008 provides that "The claims shall be supported by the specification and shall clearly and concisely define the scope of protection conferred by the patent."

A defected claim can be considered as conforming to the article, except for the degree of clarity. An erroneous one may be considered unclear and not conforming to the article. The "obvious defect" here can be defined using the limitations to the "obvious error" that the Supreme People's Court provided in the "Precision Rotating Compensator Case for Administrative Dispute on Utility Model Invalidation" (Xingtizi No. 13 (2012)). In the case, the dispute was on Claim 1 which states "on the other end of said outer sleeve, is connected with the extension tube, with a gap in between." In the statement, the subject is omitted unnecessarily, which is more of a defect than an error. Despite this, the limitations that the Supreme People's Court set out are a valuable reference. In the case, the Supreme People's Court held that "the so-called "obvious error" means any erroneous technical feature that a person skilled in the art can immediately discover upon reading the claims, on the basis of his or her general technical knowledge, for which such person skilled in the art can immediately identify the single correct answer by using his or her general technical knowledge and by reading the specification and any attached drawings."

Strictly speaking, among the obvious defects or errors in the claims, some can be overcome or corrected and some cannot. It must be noted that not all obvious errors in the claims can be addressed by a person skilled in the art who can "immediately identify the single correct answer." Any claim that contains errors or defects that cannot be overcome by the person skilled in the art should not be protected according to law. For example, in the "Bai Wanqing Case", the "high magnetic conductivity" in Claim 1 is obviously erroneous to the people skilled in the art, but they cannot "identify the single correct answer" after reading the patent files. In other words, the error cannot be corrected by the people skilled in the art. Therefore, the Supreme People's Court did not affirm the accusation of patent infringement. By referring to the statement of the Supreme People's Court in the "Precision Rotating Compensator Case", this author attempts to define a remediable "obvious defect" in the claims during court proceedings as "a defect in the claims that is deemed as very obvious, that can be directly and doubtlessly corrected, and for which the technical plan to be protected can be singly and doubtlessly identified, by people skilled in the art after reading the claims, the specification and any attached drawings."

II. Under What Condition Can the Correction of Any Obvious Defect in the Claims be Allowed

It should be noted that the correction of any obvious defect in the claims during the court proceedings occurs when the claims are interpreted or when the scope of protection conferred by the patent is determined. Article 59 of the Patent Law as amended in 2008 provides that "For the patent of an invention or utility model, the scope of protection shall be determined on the claims. The specification and any drawings may be used to interpret the claims." As the claims are published, the interest of the relevant public who rely on them should be protected. Therefore, the scope of protection conferred by the patent should be identified with the claims strictly in accordance with the law. Substantively speaking, to correct any obvious defect in the claims is to flexibly interpret the claims to some extent. Without due care, it would go against the provision of the Patent Law with respect to the scope of protection conferred by the patent. Therefore, strict limitations must be set out for the correction of obvious defects in claims in court proceedings. The definition of "obvious defect" hereinabove can also apply to how to limit the correction of obvious defects. In broad terms, the remediable obvious defect must satisfy all of the following conditions:

First, the defect can be directly and doubtlessly corrected by people skilled in the art upon reading the claims, the specification and any attached drawings. The understanding of the claims and the identification of the scope of protection conferred by the patent can only be done by a person skilled in the art. The same defect may be viewed differently by different viewers. Whether the defect in the claims can be corrected or not must be decided by a person of ordinary skill in the art. Article 10 of the Guidance of the High People's Court of Beijing on the Trial of Patent Infringement-related Cases provides that "The claims shall be interpreted from the perspective of a person of ordinary skill in the art." In the "Bai Wanqing Case", the Supreme People's Court also emphasized that "The determination on whether the claims comply with Article 26, Paragraph 4 of the Patent Law or whether they contain any obvious error must be done by a person skilled in the art other than the general public."

Second, the remediable defect should be very obvious to and can be directly and doubtlessly corrected by, people skilled in the art. Among the various defects in the claims, some are very obvious to the people skilled in the art, but cannot be immediately corrected. For example, in the Bai Wanqing Case, Claim 1 of "high magnetic conductivity" is an obvious defected technical feature, but cannot be corrected directly or doubtlessly. There are also defects which are both very obvious and can be directly corrected. For another example, in the Precision Rotating Compensator Case, the subject "inner tube" is missing in Claim 1 "on the other end of said outer sleeve, is connected with the extension tube, with a gap in between." The Supreme People's Court held that the missing subject "inner tube" makes no difference and can be doubtlessly identified by people skilled in the art.

Third, the correction of the defect can only cause the people skilled in the art to singly and undoubtedly identify the scope of protection conferred by the patent. As stated, a remediable defect, though tolerable, must be strictly limited; otherwise it would damage the role of the claims in defining the scope of protection. In this respect, the tendency of the judicial policy is very obvious in the related legal norms. Article 4 of the Interpretations of the Supreme People's Court on A Few Issues in the Application of Law in the Trial of Patent Infringement-related Cases (II) (Draft 13 to Solicit Comments) provides that "If a person of ordinary skill in the art can reach a single understanding after reading the claims, the specification and any drawings, the people's court should reach a decision on the basis of that single understanding." Article 14 of the Guidance of the High People's Court of Beijing on the Trial of Patent Infringement-related Cases provides that "If a person skilled in the art can reach a specific, definite and single interpretation on the scope of protection conferred by the patent after reading the claims, the specification and any drawings, then such interpretation shall be used to clarify or correct any erroneous statement in the claims."

This is because the protection of the interest of the relevant public who rely on the claims should build on the normal understanding of the published claims by people skilled in the art. Any other understanding that does not build on the knowledge or capacity of the people skilled in the art can only be said to be erroneous. The interest from relying on such other understanding cannot be protected by the Patent Law. If the people skilled in the art can still reach a doubtless or single understanding of the technical plan to be protected on the basis of defected claims, then the interest from relying on such understanding would not be affected by the correction of such obvious defect.

III. Why is the Correction of the Obvious Defect Allowed During the Court Proceedings

To allow the correction of obvious defects in the claims during the court proceedings, the primary reason is that it is the people skilled in the art who interpret the claims and determine the scope of protection conferred by the patent, with the specification and any drawings to be used to explain the claims. The people skilled in the art, who are not machines, can understand the patent application or the patent in a comprehensive way. Because of this understanding, they are not going to be confined by the text of the claims. They would also use the specification and any drawings in determining the scope of protection conferred by the patent. As the Supreme People's Court stated in the Bai Wanqing Case, "In reproducing the technical plan of the invention or utility model, the people skilled in the art will not accept any error dogmatically. Instead they will certainly go to correct any obvious error and on that basis, understand the technical plan of the invention or creation."

To allow the correction o f obvious defects in the claims during the court proceedings, the second reason is that the validity of the patent should be adhered to during the patent-related proceedings. In China, a patent can only be invalidated in the statutory procedure, through an invalidation request submitted to the Patent Reexamination Commission. Generally the court is not allowed to invalidate the patent in its proceedings. As a principle, even if it contains a defect, the patent should still be presumed as valid and on that basis, its scope of protection is understood and interpreted. For the valid patent principle, Article 6 of the Guidance of the High People's Court of Beijing on the Trial of Patent Infringement-related Cases provides that "The patent that a proprietor claims shall be protected until it is declared invalid. No decision shall be reached on the ground that the patent does not comply with the granting conditions under the Patent Law and therefore should be invalid."

To allow the correction of obvious defects in the claims during the court proceedings, the third reason is that an invention or creation should be accorded the protection appropriate for its technical contribution, according to the percentage rule, pursuant to the policy for the judicial protection of intellectual property rights. At the National IP Adjudication Workshop, Tao Kaiyuan, Vice President of the Supreme People's Court stated that "The scope and strength of the protection should be determined reasonably according to the degree of innovation of the patent, copyright or any other scientific or technological achievement, so that the scope and strength of the protection accorded is appropriate for the degree of innovation and contribution of these intellectual property rights." In the Bai Wanqing Case, the Supreme People's Court also stated that "In the examination of the invalidation request, if any obvious error in the claims is not corrected and understood, but the court declares the patent invalid immediately for the existence of the error that violates Article 26, Paragraph 4 of the Patent Law, then it would cause Article 26, Paragraph 4 of the Patent Law to turn to be a penalty on the improper writing of the claims. It would also cause the gain of the patentee to be inconsistent with its contribution to society. This is against the legislative purpose of Article 26, Paragraph 4 of the Patent Law."

IV. Summary

As analyzed, in principle, despite any defect in the claims, the scope of protection conferred by the patent should be determined on the technical plan defined by the claims, pursuant to the valid patent rule. For any obvious defect in the claims, if the people skilled in the art, after reading the claims, consider that the defect is so obvious that it can be corrected directly and doubtlessly and that the technical plan to be protected can be identified singly and doubtlessly, then the scope of protection conferred by the patent should be determined as if such defect were remedied.

(Thanks to Judge Li Jian and Judge Jiao Yan for their inspirational ideas and help when they conversed with me about these issues.)

(Translated by Ren Qingtao)