Richard Yong WANG  Partner, Attorney-at-law and Patent Attorney

 

The patent claims, as the core text defining the scope of patent protection, require utmost accuracy and clarity in its language. However, in the process of innovation, particularly in emerging technological fields, existing technical terms may fall short of precisely describing the unique technical solutions or concepts of an invention. This often compels applicants or inventors to create new terms to define their inventions. The emergence of these non-general technical terms, or "self-coined terms," to some extent reflects the inventiveness of the creation. Nevertheless, their lack of common usage may raise concerns regarding the clarity of the scope of patent protection and the completeness of essential technical features.

 

According to Article 26.4 of Chinese Patent Law, the claims shall be clearly and concisely defined and supported by the description. At the same time, Rule 20.2 of 2010 version of the Implementing Regulations of the Patent Law (i.e., current Rule 23.2 of the Implementing Regulations) emphasizes that an independent claim shall, as a whole, reflect the technical solution of the invention or utility model and state the essential technical features necessary to solve the technical problem. How to reasonably interpret and examine self-coined terms in claims within this legal framework, ensuring they accurately define the scope of protection without compromising the validity of the patent, has become a significant issue in patent examination and invalidation procedures.

 

The Invalidation Decision No. 568592 issued by the China National Intellectual Property Administration (CNIPA) provides a typical case. This decision, through its interpretation and determination of the self-coined term "clutch user interface" in the claims, offers a valuable practical example for understanding the relevant examination principles. This article will use this decision as a case study, combining relevant legal provisions and interpretive principles, to conduct an in-depth exploration of the examination of self-coined terms and their relationship with the clarity of claims and essential technical features, so as to provide reference for inventors, applicants, and patent attorneys.

 

I. Summary of the Case

 

This case involves a Chinese invention patent titled "Apparatus, Method, and Computer-Readable Storage Medium for Manipulating User Interface Elements" (Patent No.: ZL201280055598.3). In the invalidation request, the petitioner raised multiple grounds for invalidation, one of which was that Claims 1, 9, and 17 of the patent lack the essential technical feature of "inability to select another user interface element after the occurrence of an engagement touch event." The core of this argument lies in the petitioner's contention that the term "clutch user interface" used in the claims is a self-coined technical term with unclear meaning, making it impossible to determine whether it fully recites the essential technical features required to solve the technical problem.

 

The disputed Claim 1 defines that after a target user interface element and a clutch user interface element are displayed on a display screen, when it is determined through judgment that no engaging touch event exists for the clutch user interface element and a selection touch event proximate to the target user interface element has occurred, a target element identifier associated with the target user interface element is stored in a memory, thereby selecting the target user interface element for manipulation. When it is determined through judgment that an engaging touch event proximate to the clutch user interface element has begun to occur, the target element identifier is retrieved from the memory, and the target user interface is associated with an operational function. Thus, while the engaging touch event is occurring, a manipulation function associated with the target user interface element is activated by a processor.

 

Claim 1 includes terms such as "clutch user interface element," "selection touch event," and "engaging touch event," and describes the interactive relationships between these events and the target user interface element, target element identifier, and manipulation function. The petitioner argued that due to the ambiguous meaning of "clutch user interface," the technical features defined by it fail to clearly delineate a complete solution to the technical problem, thereby rendering the claim non-compliant with the Article 20.2 of the Implementing Regulations of the Patent Law.

 

II. Determination and Rationale Regarding Self-Coined Terms in the Invalidation Decision

 

The examination and determination of the self-coined term "clutch user interface" by the collegial panel in this case reflects the standards and methods applied in patent examination practice to address similar issues.

 

1. Identification of Self-Coined Terms and Clarification of Interpretation Principles

 

The collegial panel first acknowledged the petitioner’s request, confirming that "clutch user interface" is a "self-coined term without a commonly accepted meaning in the field." Regarding the interpretation of such self-coined terms, the invalidation decision clarified the following principles:

1) the Claims itself: First, clues should be sought from the contextual descriptions and limitations of the self-coined term within the text of the claims.

2) the Specification: the meaning of the term should be objectively determined by considering the technical problem to be solved and the technical effects achieved by the technical solution involving the self-coined term, as described in the specification. The specification serves as the basis for interpreting the claims and holds the ultimate authority to interpret the meaning of self-coined terms.

3) the Patent Prosecution History: although the patent prosecution history is not part of the granted patent documents, it records the communication between the applicant and the examiner, as well as the process of amending and interpreting the claims. It plays a significant role in interpreting the claims and may be referenced when necessary.

 

These principles aim to ensure that the interpretation of self-coined terms is objective and comprehensive, reflecting the true intent of the inventor and the substantive contribution of the technical solution.

 

2. Specific Interpretation and Functional Definition of "Clutch User Interface"

 

The collegial panel applied the aforementioned interpretation principles to conduct a detailed semantic analysis of the term "clutch user interface element":

 

• Revelation from the Claim Text: claim 1 describes specific interactions between the "clutch user interface element" and the "target user interface element." For example, when no engagement touch event occurs proximate to the clutch user interface element, a selection touch event occurs proximate to the target user interface element. Subsequently, during the occurrence of an engagement touch event, the manipulation function associated with the target user interface element is activated by the processor. This description defines the "clutch user interface element" as playing a specific control or activation role in user operations.

 

• Technical Problem and Effects Described in the Specification: in combination with paragraphs 42 and 52 of the specification, the collegial panel clarified the core function of the "clutch user interface": "The clutch UI element can serve as an activation switch for manipulable functions and/or as a toggle switch between available manipulable functions." More importantly, the technical effect documented in the specification lies in "isolating the manipulation function from the target UI element, thereby preventing unintended manipulation of non-target user interface elements." This directly reveals the isolation role and the technical function of the "clutch user interface" in preventing erroneous operations.

 

• Clarifying Role of the Prosecution History: the invalidation decision specifically noted that during the substantive examination process, the patentee had responded to the examiner's opinions and explicitly elaborated on the function of the "clutch user interface element": "The clutch user interface element can serve as an activation switch for manipulable functions and/or as a toggle switch between available manipulable functions. By storing the target element identifier in the memory, if a user touches a user interface element while engaging the clutch user interface element, that user interface element can be executed with its associated operation. However, if the user subsequently selects another user interface element without disengaging from the clutch user interface element, that other user interface element will remain unchanged and unmanipulated, because the engagement of the clutch user interface element isolates the manipulation function from that other user interface element, thereby preventing unintended manipulation when constructing or otherwise designing graphical displays using a multi-touch display device." The collegial panel concluded that it was precisely based on this explanation provided by the patentee that the patent was granted. The interpretation in the prosecution history, as a clear representation of the patentee's understanding of the claim meaning during the grant process, carries strong binding force for the subsequent interpretation of the claims.

 

3. Determination of Relationship between Essential Technical Features and the self-coined term

 

Based on the above interpretation of the "clutch user interface," the collegial panel concluded that a person skilled in the art could clearly understand the "clutch user interface element" as an activation switch for the manipulable functions of the target user interface element. Its role is to isolate the target user interface element, thereby preventing unintended manipulation of non-target user interface elements. Accordingly, Claims 1, 9, and 17 already recite all the essential technical features required to solve the technical problem, which is in comply with the Rule 20.2 of the Implementing Regulations. The petitioner’s argument that the claims lack essential technical features was therefore deemed unfounded.

 

This determination demonstrates that even if a claim includes self-coined terms, as long as the meaning of such terms can be clearly and objectively determined through the patent documents (claims, specification, drawings) and the prosecution history, and the technical features defined by this meaning constitute the essential elements required to solve the technical problem, the claim should not be considered lacking essential technical features.

 

III. Discussion on the Examination Rules for Self-Coined Terms in Patent Claims

 

The examination process of self-coined terms in this case reveals the complex interplay between such terms and the clarity of the scope of protection in patent claims, as well as their relationship with essential technical features.

 

1. Self-Coined Terms and the Clarity Requirement for the Scope of Patent Claims

 

Article 26.4 of the Patent Law stipulates that the claims shall be clear. Here, "clarity" refers to the requirement that the scope of protection defined by the claims must be clear. This necessitates that the meaning of each technical term, the significance and function of each technical feature, and the relationships between technical features must all be clear. Clarity is fundamental to patent grant and validity, as it defines the boundaries of patent protection, thereby influencing the public’s understanding of the patent’s enforceability and the freedom to implement technologies. The presence of self-coined terms inherently challenges the clarity of claims. An inadequately explained self-coined term may render the claims incomprehensible to a person skilled in the art, leading to a determination of lack of clarity.

 

However, the examination approach in this case demonstrates that self-coined terms do not necessarily result in ambiguity. The key lies in whether their meaning can be clearly defined through the patent documents and their prosecution history. If the meaning of a self-coined term can be understood by a person skilled in the art based on the description and drawings, in combination with the prior art and the patentee’s own explanations, then the technical solution defined by such a term may be considered clear. In other words, the clarity requirement does not exclude self-coined terms but rather demands that their meanings must be determinable.

 

2. Self-Coined Terms and the Definition of Essential Technical Features

 

Rule 20.2 of the Implementing Regulations emphasizes that an independent claim shall state the essential technical features necessary to solve the technical problem. Essential technical features are indispensable components of the invention's technical solution, required to achieve the inventive purpose and produce the intended technical effects.

 

The relationship between self-coined terms and essential technical features lies in the following: if a self-coined term refers to a technical concept that is vague or ambiguous, making it impossible for a person skilled in the art to determine the specific structure, function, or method based on it, then the self-coined term may fail to effectively define the technical solution. This could result in the claim lacking the essential technical features required to solve the technical problem. For example, if a self-coined term is merely descriptive or functional without providing a specific structure or method for achieving the function, and a person skilled in the art cannot infer a concrete implementation from it, the term may be deemed insufficient to meet the requirement for essential technical features.

 

In this case, although the term "clutch user interface" is self-coined, the collegial panel, through in-depth analysis of its role in the claims, specification, and prosecution history, clarified its function of "isolating non-target UI elements" and its role as an "activation switch." This clear definition of its function and role transformed the "clutch user interface" from an abstract concept into one that points to a specific technical solution and effect, thereby recognizing it as reciting essential technical features. This demonstrates that a self-coined term is considered to recite essential technical features only when it can clearly define the key elements of the technical solution and when these elements are indispensable for solving the technical problem.

 

3. Application of Claim Interpretation Principles to Self-Coined Terms

 

The interpretation of self-coined terms is, in essence, part of the interpretation of patent claims. Its core principle remains centered on the claims themselves, with the specification and drawings serving as the basis for interpretation.

 

• Priority of Intrinsic Evidence: the claims, specification, and drawings constitute the most critical "intrinsic evidence" for interpreting patent claims. The specification, which provides a detailed description of the invention, is the sole reliable source for understanding the technical solution defined in the claims. The meaning of a self-coined term must first and foremost be sought from the specification. If the specification offers a clear definition or detailed description of the self-coined term, that interpretation shall prevail.

 

• Reference to Technical Problems and Effects: the technical problem to be solved by the invention and the technical effects it can produce are key perspectives for understanding the claims. When the meaning of a self-coined term is unclear, reverse reasoning may be applied to determine whether the technical solution defined by the term can solve the claimed technical problem and achieve the intended technical effects. In this case, the isolation function of the "clutch user interface" was clarified through reverse reasoning based on the technical effect of "preventing unintended manipulation of non-target user interface elements."

 

• Supplementary Role of Prosecution History: the patent prosecution history, including documents such as the applicant’s submitted observations, amendments, and modified claims, records the applicant’s explanations and limitations regarding the scope and meaning of the claims during the grant process. These interpretations play a significant referential and constraining role in understanding the claims. In this case, the patentee’s explanation of the function of the "clutch user interface" during the substantive examination phase became a key basis for the collegial panel’s determination of its essential technical features. This demonstrates that clear explanations of self-coined terms in the prosecution history can effectively clarify potential ambiguities in the original claims and specification.

 

• Perspective of the "Person Skilled in the Art": the interpretation of all claims must be conducted from the standpoint of the "person skilled in the art." This hypothetical person possesses ordinary technical knowledge in the relevant field, is capable of understanding the specification and drawings, and can utilize basic reference works and common general knowledge. Even for self-coined terms, as long as their meaning can be understood by the person skilled in the art based on the aforementioned interpretation principles, they will not be deemed unclear or lacking essential technical features.

 

4. Relationship between Clarity and Essential Technical Features

 

Clarity (Article 26.4 of the Patent Law) pertains to whether the description in the claims is unambiguous and easily comprehensible, while essential technical features (Rule 20.2 of the Implementing Regulations) concern whether the claims fully and adequately recite the key elements of the invention's technical solution. These two requirements are distinct yet closely interrelated. An unclear self-coined term may render the technical features it defines ambiguous, making it impossible to determine whether they constitute essential technical features. In some cases, such a term may even be deemed to have failed to recite the necessary technical features required to solve the technical problem. Conversely, if the meaning of a self-coined term can be clearly understood through the interpretation principles mentioned above, and the technical content it represents is indispensable for solving the invention's technical problem, then it simultaneously satisfies both the clarity and essential technical features requirements. This case serves as proof: by interpreting the self-coined term to achieve "clarity," the claims were consequently deemed to recite "essential technical features."

 

IV. Insights

 

As seen from the above analysis, when drafting application documents, inventors should strive to use technical terms and concepts that are widely known or adopted in the field, avoiding self-coined or scarcely used terms and concepts. If it becomes necessary to create and use new terminology to accurately convey innovative ideas, the self-coined terms must be clearly and thoroughly defined or described in the specification. This includes their structure, function, relationship with other technical features, the specific technical problems they address, and the effects they achieve. Attempts to circumvent prior art through ambiguous expressions or to claim an excessively broad and unrestricted scope of protection should be avoided. Additionally, consistency in the use of self-coined terms across the claims and the specification must be ensured to prevent ambiguity or contradictions. When responding to examination opinions, arguments and explanations regarding the meaning of self-coined terms and their relationship with essential technical features should be provided, supported by specific examples or experimental data. The explanations recorded in the examination file will also serve as critical evidence in future disputes. However, it is important to note that any explanations or arguments made during the response to examination opinions must strictly align with the content disclosed in the specification regarding the self-coined terms. They should not exceed the scope of what was originally disclosed in the application documents, as doing so may lead to issues of insufficient disclosure in the specification.

 

The use of "self-coined terms" in patent claims reflects the tension between technological innovation and legal documentation. In this case, the examination of the self-coined term "clutch user interface" successfully clarified its meaning and function through a comprehensive interpretation of the claims, the specification, and the examination history. Ultimately, it was determined that the claims recorded the essential technical features required to solve the technical problem. This demonstrates that in Chinese patent examination practice, self-coined terms are not outright rejected. Instead, a pragmatic and flexible approach is adopted. As long as the meaning of a self-coined term can be clearly and objectively determined through the patent text and examination history, and the technical content it defines is indispensable for achieving the invention’s purpose and solving the technical problem, it should be deemed to satisfy the patent law’s requirements for clarity and essential technical features.

 

Author:

Mr. Richard Yong Wang

 

Mr. Wang received his bachelor's degree in 1991 from the department of computer science of East China Normal University and his master's degree from the Institute of Computing Technology of the Chinese Academy of Sciences in 1994. In 2005, he received degree of master of laws from Renmin University of China. Mr. Wang joined Panawell in January 2007.

 

In the past years, Mr. Wang has handled thousands of patent applications for both domestic and foreign clients, and he has extensive experiences in application drafting, responding to office actions, patent reexamination and invalidation proceeding, patent administrative litigation, infringement litigation, software registration and integrated circuit layout design registration. As a very experienced patent attorney and attorney-at-law, Mr. Wang also participated in many patent litigation cases on behalf of a number of multinational companies as leading attorney. Mr. Wang's practices include computer hardware, computer software, communication technology, semiconductor devices and manufacturing process, automatic control, household electrical appliances, and etc.