Zhaohong LIU, Patent Attorney

 

A patent application is a set of documents filed by a patent applicant in relation to an invention-creation with the China National Intellectual Property Administration (CNIPA) in accordance with the law to be examined in the patent examination and grant process. The quality of a drafted application will affect the stability of the patent right, and impact the scope of patent protection. Therefore, the quality of patent application documents is crucial to the acquisition or grant and protection of the patent rights.

Generally speaking, drafting patent application documents mainly includes the following steps: understanding inventions-creations, working out technical solutions, developing claims, writing descriptions, and improving the overall structure of the application documents. In this article, several important aspects of a well-drafted patent application will be explored.

1.  Importance of Search

In the domestic patent agency industry now, attention is often paid to communication with inventors on technical matters, and not to the work of search. This author believes that the search work plays a pivotal role in the entire patent drafting process. As the patent application documentation contains a wealth of technical information, preliminary search work based on the accessible database before drafting will help reasonably draw on the wisdom of the predecessors and effectively improve the quality of the drafted application documents. In particular, search has the following important functions:

(1) Conducting due diligence in search of obvious novelty to prevent unnecessary losses to the applicant.

(2) Drawing a reasonable dividing line relative to the prior art to prevent "superfluously designated scope".

(3) Learning the "legal terminology and syntax" of the claims, taking the essence, and improving the drafting skills.

(4) Enriching the information of the application documents, using standard technical terms, duly working out the attached drawings, and improving the quality of the application documents.

II. Independent Claim Shall Present and Present Only Essential Technical Features Meant to Solve Target Technical Problem

When drafting an independent claim, it is necessary to clearly outline the complete technical solution under the basic concept of the invention in as concise and rigorous language as possible. The independent claim shall present the essential technical features meant to solve the target technical problem, but shall avoid introducing unnecessary technical features used for the purpose. Lack of essential technical features will render the application documents contrary to the provisions of Rule 20, paragraph two, of the Implementing Regulations of the Patent Law, and presence of non-essential technical features will reduce the scope of protection claimed. Therefore, after the independent claim is drafted, it is necessary to determine whether each feature is an essential technical feature meant to solve the technical problem one by one. If so, keep it; if not, delete it. Then, final determination is made on whether the combination of all the reserved features as a whole really solve the technical problem the present invention is intended to. Following is a specific case study illustrating how to ensure that the independent claim only presents the essential technical features meant to solve the technical problem.

Case

An electronic device, the preliminarily drafted independent claim 1 is:

An electronic device comprising a display screen, a power supply unit and a microprocessor, wherein the microprocessor is used to process audio and video information to be played, characterized in that the electronic device further includes a switch unit, said switch unit is connected between the display screen and the power supply unit, the microprocessor is used to disconnect the switch unit when detecting that the information to be played is audio information, so as to disconnect the power supply of the display screen; the microprocessor also includes an adjustment unit that automatically adjusts the volume of audio playback according to pre-stored user habit information.

The description states that in the electronic device of the prior art, such as a mobile phone, the power of the display and the speaker is relatively large when both are working, thus causing the problem of relatively short life of the battery. The present application is meant to solve this problem by saving the power consumed by the display screen to prolong the battery usage time, so as to deliver an electronic device with a long battery usage time.

Analysis

As is made known from the content described in the specific embodiment of the description, saving power consumed by the display screen is realized by selectively turning off the power supply of the display screen by judging the type of information to be played by the microprocessor.

Let’s specifically analyze the features of the preceding claim:

Feature 1: An electronic device, comprising a display screen, a power supply unit and a microprocessor, wherein the microprocessor is used for processing audio and video information to be played. Feature 1 is the feature of the preamble, which defines the main components of the electronic device and also defines the function of the microprocessor. This application achieves the purpose by saving the power consumption of the display screen. The power supply unit is used to supply power to the display screen. The function of the microprocessor "processing audio and video information to be played" is related to the timing of disconnecting the power supply of the display screen later. Therefore, Feature 1 is an essential technical feature closely related to the technical solution of the present invention, and is thus reserved.

Feature 2: The electronic device further includes a switch unit, said switch unit is connected between the display screen and the power supply unit, and the microprocessor is configured to disconnect the switch unit to disconnect the power supply of the display screen. Among them, the switch unit and the position of the switch unit are related to the power supply of the display screen, and disconnecting the power supply of the display screen when the video information does not need to be played can definitely save the power consumption of the display screen. Therefore, Feature 2 is also an essential technical feature, and is reserved too.

Feature 3: The microprocessor further includes an adjustment unit that automatically adjusts the volume of audio playback according to pre-stored user habit information. Although automatically adjusting the volume of playing music according to the user's habit information can provide better sound effects and meet the needs of users, it is not an essential technical feature for saving power consumption. It is a non-essential technical feature and should not be put in the independent claim, so Feature 3 should be deleted in the original independent claim.

Accordingly, the amended or shortened independent claim goes as follows:

An electronic device, comprising a display screen, a power supply unit and a microprocessor, wherein the microprocessor is used to process audio and video information to be played, characterized in that the electronic device further includes a switch unit, which is connected between the display screen and the power supply unit, and the microprocessor is configured to disconnect the switch unit when detecting that the information to be played is audio information, so as to disconnect the power supply of the display screen.

Finally, to look at the independent claim as whole, the power supply of the display screen is controlled by a switch unit connected to the display screen and the power supply unit, and the display screen can be disconnected by disconnecting the switch unit when the microprocessor detects that the information to be played is audio information, so that the power supply can save the power consumption of the display screen, and prolong the service life of the battery. It can be seen that the above revised independent claim describes the essential technical features meant to solve the technical problem.

III. Essentials of Drafting Dependent Claims

One of the important tasks of the dependent claims is to use a reasonable median concept to relate the broad generic concepts covered in the independent claims to specific embodiments. To reasonably arrange the protection scope defined by the dependent claims, two aspects need to be considered: one is the generalization of the technical features, which is carried out step by step from the upper level to the concrete; and two is the citation relationship of the dependent claims going gradually from the upper to the lower levels.

Specifically, taking into account the substantive examination procedure for patent applications and the possible follow-up procedure for patent invalidation, for larger room for amendment, the scope of protection underlined in dependent claims at all levels should be narrowed down step by step, with the technical features unfolding gradually and sequentially from the upper to the lower and from the general to the special. At the same time, the claims are set at multiple levels, with the lower-level claims referring to the upper-level ones and the same-level claims also possibly setting up multiple parallel ones. Finally, it is only in the lowest-level dependent claim that specific additional technical features are related.

IV. Sufficient Disclosure of Description

Article 26, paragraph three, of the Patent Law stipulates that the description shall describe the invention or utility model in such clear and complete terms as to enable those skilled in the art to carry it out. This is often referred to as "sufficient disclosure of the description".

"Insufficient disclosure of the description" is an issue requiring our special attention in the drafting process. For example, under all these circumstances where the technical content of the invention is ambiguously described in the description, the technical means for solving the technical problem and achieving the technical effect is not provided, the technical means given in the description is unclear or cannot solve the technical problem, the way of citation causes insufficient disclosure, and the drawings showing the key technical content of the invention are unclear and incomplete in the description, the defect of "insufficient disclosure of the description" will arise.

As we all know, in the patent practice in China, the examiners are very strict with "amendments exceeding scope". Once an application is pointed out as flawed with "insufficient disclosure of the description", it is often the case that amendment made to rectify the flaw will lead to "amendments exceeding the scope", and is not allowed. For this reason, "insufficient disclosure of the description" should be avoided as much as possible in the drafting process, as illustrated in the following example of "insufficient disclosure of the description".

Case 1

The invention claimed is a cigarette lighter using alternating current. Rather than converting alternating current into direct current, it directly drives the cigarette lighter with the alternating current. The manual only says that the cigarette lighter can use alternating current, but does not mention the specific structure of the cigarette lighter.

Analysis

The cigarette lighters in the prior art are all driven by a DC power supply. As for the improvement made with the present invention, it is pointed out that the present cigarette lighter can be driven by AC power to light cigarettes. Since the description only gives a concept of the cigarette lighter using alternating current to drive ignition, and does not show its specific structure as the improvement of the cigarette lighter, it is impossible for those skilled in the art to know how the cigarette lighter of the present invention drives the cigarette lighter with alternating current from the content presented in the description. For this matter, the description of this application fails to clearly and completely describe the present invention; hence, those skilled in the art cannot carry out the invention according to the description.

Case 2

The invention claimed is a mechanical forging equipment, in which a component made of special steel is assembled in order to solve the technical problem raised in the description. Although a detailed description of the structure of the mechanical equipment is given in this description, the composition of the special steel which is critical to the realization of the present invention is not disclosed.

Analysis

In this case, the applicant did not disclose the key technical feature of the present invention "the composition of special steel" for the purpose of protecting his "technical secrets", so only vague technical means were given in the description, which makes it impossible for those skilled in the art to carry out the technical solution of the present invention according to the contents described in the description; hence the disclosure of the description is insufficient.

In addition, the author believes that the background technology is also an important factor in determining whether the invention is sufficiently disclosed in some cases. An invention is always made on the basis of certain prior arts, and it is usually impossible for the applicant to describe all the prior arts involved in the description in much detail. Therefore, when the applicant's understanding of the relevant prior art is much better than those ordinarily skilled in the art, the description and citation of the relevant prior art may be omitted, which would result in "insufficient disclosure". The applicant may avoid this problem by making full use of the background technology, for example, adding the background documents that are closely related to the technical solution of the invention and that would affect the disclosure of the content of the invention to the part on background technology.

To conclude, the author has discussed how to draft patent application documents from four aspects: the importance of search, the independent claims required to present, and present only, the essential technical features meant to solve target technical problems, the essentials of drafting dependent claims, and the sufficient disclosure of the description, hopefully, for the benefit of our readers.

 

References:

• Guidelines for Patent Examination (2010)
• Chao LI (Ed.), Patent Attorneys’  Practice: Electronics Volume
• The All-China Patent Attorneys Association (Ed.),  Proceedings of the 2013 Symposium on Patent Examination and Patent Attorney’s Practice: High Quality Patent Application Documents