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

 

In the patent system, the claims are the core documents that define the scope of patent protection. The content of their textual descriptions and their inherent connection with the description directly affect the stability and validity of patent rights. According to the provisions of the "Patent Law of the People's Republic of China," the claims shall be supported by the description, meaning that the technical solutions defined by the claims must be clearly and sufficiently described in the specification to enable a person skilled in the art to understand and implement them. However, during the processes of patent drafting, examination, and invalidation, ambiguities or errors in textual expression may arise due to various reasons, leading to inconsistencies between the claims and the description, which can subsequently trigger disputes.

 

In the (2023) Supreme People’s Court ZhiXingZhong No. 246 Administrative Judgment, the Supreme People’s Court (hereinafter referred to as the SPC) issued a final ruling in an administrative dispute over the invalidation of an invention patent. The focal point of the case was whether the patentee’s amendment to the claims during the invalidation proceeding constituted a "correction of an obvious error" and whether such an amendment should be accepted. This judgment not only overturned the erroneous determinations made by the China National Intellectual Property Administration (CNIPA) and the first-instance court but also reinforced the holistic principle of interpreting patent claims, providing guiding significance for patent examination and judicial practice. Based on the content of the judgment, this article tries to analyze the background, trial process, reasoning, and impact of the case, aiming to serve as a reference for patent law research and practice.

 

I. Summary of the Case Background and its trial History

The present case involves a Chinese invention patent titled "a Motorized Wheel and a Method for Fixing a Stator Casing of Electric Motor to a Fixed Bracket by Interference," with patent number ZL201510314161.2, owned by an Italian company AMER S.P.A. (hereinafter referred to as "Company A"). On March 18, 2021, a technology company in Hangzhou of China (hereinafter referred to as "Company B") filed a request with the CNIPA seeking the invalidation of the entire patent right.

 

The main grounds for invalidation raised by Company B include: lack of clarity in the scope of protection of the claims, lack of support from the description, and lack of inventiveness. Among these, the dispute regarding "lack of support from the description" focused on the distinguishing feature of Claim 1. The original wording of the distinguishing technical feature of this claim is: "said stator casing (15) is inserted in a corresponding complementarily shaped annular portion (18) that extends from said bracket (12) and is fixed thereto by interference". The CNIPA (CNIPA), during the invalidation examination, determined that this wording is inconsistent with the description in Paragraph [0023] of the specification, which states: "the annular portion extends from the bracket in an integrated manner with the bracket, and the stator casing is fixed to the annular portion by an interference fit." Consequently, it is determined that Claim 1 lacks support from the description, and on these grounds, the entire patent right is declared invalid.

 

During the invalidation proceeding, Company A attempted to amend Claim 1 by modifying the original wording from "said annular portion extending from said bracket (12) and being fixed to said bracket by interference" to "said stator casing (15) is inserted into a corresponding complementary-shaped annular portion (18) and fixed to said bracket by interference, said annular portion extending from said bracket (12).”Company A argued that this amendment constituted a correction of an "obvious error" and should be accepted. However, the CNIPA held that the amendments do not comply with the relevant provisions of the Guidelines for Examination and therefore refused to accept it. Consequently, the CNIPA declared the entire patent right invalid on the grounds that all claims (1-9) are not supported by the description.

 

Dissatisfied with the CNIPA’s invalidation decision, Company A filed an administrative lawsuit with the Beijing Intellectual Property Court. The first-instance court held that the original wording of Claim 1 was clear, that Company A’s amendment did not constitute a correction of an "obvious error," and that the technical solution defined in Claim 1 was indeed inconsistent with the description. Accordingly, the court dismissed Company A’s claims.

 

Company A subsequently filed an appeal with the SPC, requesting the reversal of both the first-instance judgment and the invalidation decision, and an order for the CNIPA to issue a new review decision. The SPC accepted the case on May 23, 2023, conducted a hearing on September 7 of the same year, and ultimately rendered a final judgment on June 20, 2024.

 

II. The Supreme Court's Legal Grounds and Reasoning

The Supreme Court's ruling focused solely on procedural preliminary issues, yet it provided a thorough and in-depth analysis of the core dispute in this case—whether the patentee's amendment to Claim 1 constitutes a "correction of an obvious error." The analysis was developed step by step through the following four aspects:

 

1. Correcting the Foundational Misconception Regarding the Determination of "Obvious Error"

The Supreme Court first pointed out the foundational error in the determination of an "obvious error" made by the appealed decision and the first-instance judgment. Both the CNIPA and the first-instance court had erroneously predicated their judgment of whether an "obvious error" existed on whether the amendment could potentially alter the scope of protection of the claims. The Supreme Court deemed this approach incorrect, as it treated the literal wording of the claims as the sole basis for determining the scope of protection, which is contrary to the rules of claim interpretation.

 

Therefore, the Supreme Court invoked Article 4 of the "Provisions of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Patent Grant and Confirmation Administrative Cases (I)" (hereinafter referred to as Judicial Interpretation I), which explicitly states that if there are obvious errors or ambiguities in grammar, wording, numbers, punctuation, etc., in the claims, description, and drawings, but a person skilled in the art can arrive at a unique understanding through reading, the People's Court shall make a determination based on that unique understanding. The legislative purpose of this provision is to ensure that patentees obtain a scope of protection commensurate with their technical innovative contributions, while safeguarding the public's reasonable reliance on patent texts. Based on this, the Supreme Court reasoned that correcting an "obvious error" is essentially about restoring the original intended meaning of the claims by interpreting the patent documents as a whole. Therefore, such a correction should not be regarded as an expansion of the protection scope. This argument laid the foundation for the subsequent reasoning, namely, that determining an "obvious error" cannot be done in isolation by looking solely at the literal wording of the claims but must be comprehensively assessed in conjunction with the entire patent document.

 

2. Whether there is an "obvious error" is judged as a whole from the perspective of a "person skilled in the art."

After correcting the foundational error, the Supreme Court elaborated in detail on how to apply the perspective of a "person skilled in the art" to conduct a holistic assessment of the patent documents in this case to determine whether an "obvious error" existed.

 

The Court emphasized that the interpretation of claims must "return to the technical solution itself," integrating the subject name, claims, description, and drawings to form a comprehensive context, thereby replacing "textual self-consistency" with "technical self-consistency."

 

Firstly, starting with the title of the invention, the Supreme Court pointed out that the title of the patent is "Motorized Wheel and Method for Fixing a Stator Housing of an Electric Motor to a Bracket by Interference." From this title, it is clear to a person skilled in the art that the core technology of the patent lies in the interference fixation of the "stator housing of the electric motor" to the "bracket," with the technical contribution being the elimination of threaded fasteners. If the wording of Claim 1, "the annular portion is fixed to the bracket by interference," were interpreted literally, it would imply that the bracket must interfere with its own extension, which is technically contradictory. This set the tone for the subsequent interpretation of the claims.

 

Secondly, the Supreme Court analyzed the internal consistency of the claims. It concluded that by reading the claims as a whole, one can identify the existence of an obvious error in Claim 1.

• The original wording of Claim 1 states that "the annular portion extends from said bracket (12) and is fixed to said bracket by interference." The Supreme Court pointed out that, from the perspective of a person skilled in the art, if the "annular portion" extends from the "bracket," then the two are an integral part, making it logically impossible for them to require fixation by interference. This inherent contradiction is evident and sufficient to alert a person skilled in the art to the ambiguity or error in the original wording of Claim 1.

• The Supreme Court further analyzed Claims 5 and 6, which directly or indirectly reference Claim 1, noting that both explicitly state that "the interference" refers to "the interference effect achieved between the stator housing (15) and the annular portion (18)."

• Furthermore, Claim 8, as a method claim, has the objective of "fixing the stator housing (15) of the electric motor (11) to the bracket (12) by interference." This claim further clarifies that the method step involves the "stator housing (15)" being engaged and tightened with the "annular portion (18)" to achieve fixation through interference.

The cross-references and interpretations among these claims collectively establish a clear technical logic: the interference fixation occurs between the stator housing and the annular portion, rather than between the annular portion and the bracket. This directly contradicts the original wording of Claim 1, further demonstrating the existence of an obvious error in the original text.

 

Lastly, corroboration is drawn from the description and drawings. The Supreme Court pointed out that by examining the description and drawings, it can also be unequivocally concluded that the wording of Claim 1 contains an error or ambiguity.

• Background Art: The description explicitly states that the improvement of this patent lies in reducing components and simplifying assembly by fixing the stator housing to the bracket without the need for threaded fasteners. This reiterates that the technical problem addressed by the invention is the fixation between the stator housing and the bracket, rather than the fixation between the annular portion and the bracket.

• Specific Embodiments: Paragraph [0023] of the description explicitly states: "The annular portion extends from the bracket (12) in an integrated manner with the bracket, and the stator housing is fixed to the annular portion (18) by interference fit." This description directly contradicts the original wording in Claim 1 that "the annular portion is fixed to the bracket by interference," thereby providing the correct technical solution. Furthermore, other paragraphs in the description, such as [0025]-[0028], [0042], and [0043], repeatedly describe the technical feature of the stator housing being fixed by interference in the annular portion of the bracket.

• Drawings: Figures 4 and 5 visually demonstrate that the annular portion (18) is an integral part of the bracket (12), clearly showing their unitary construction which thus requires no fixation by interference.

 

3. Can a unique, correct understanding be reached?

Based on the above analysis, the Supreme Court concluded that a person skilled in the art, upon reading the entire patent document, would clearly recognize the existence of an error or ambiguity in Claim 1 and could unambiguously arrive at the correct technical solution: "the stator housing (15) is inserted into the corresponding annular portion (18) of complementary shape and fixed to the bracket by interference, wherein the annular portion (18) extends from the bracket (12)," rather than "the annular portion is fixed to the bracket by interference."

 

4. Conclusion

Based on the above analysis and reasoning, the Supreme Court pointed out that Company A's amendment to Claim 1 constituted a correction of an "obvious error" and should therefore be accepted. Such a "correction" merely represents a linguistic restoration of the intrinsic technical solution that has existed from the outset and does not introduce new facts or expand the scope of protection. Consequently, the patentee's correction of this obvious error does not violate the provisions of the Implementing Regulations. The appealed decision and the first-instance judgment erroneously treated "whether the amendment might alter the scope of protection" as a prerequisite for determination, thereby overlooking the holistic interpretation rule stipulated in Judicial Interpretation I.

 

The Supreme Court's final ruling: Set aside the first-instance judgment and the invalidation decision of the CNIPA, and order the CNIPA to reevaluate whether the patent is supported by the description, among other issues, after accepting the amendments to the claims submitted by Company A.

 

III. The significant meaning and implications brought by this judgment

The ruling by the Supreme Court not only corrects the specific errors in this case but also establishes a new standard for judicial review, which will have a profound impact on China's patent examination system and practices.

 

1. A Revision of the Criteria for Determining "Obvious Errors"

For a long time, China's patent administrative judiciary has adhered to "textualism"—taking the issued text as the supreme authority and restricting patentees' ability to make amendments on the grounds of "obvious errors." As a result, the CNIPA has maintained a relatively strict standard for determining "obvious error corrections" during invalidation proceedings, tending to interpret the provisions of the Patent Examination Guidelines mechanistically. Specifically, only corrections related to obvious errors in wording, punctuation, grammar, etc., that do not alter the scope of protection are accepted. While this stringent review standard, to some extent, ensures the efficiency and stability of the examination process, it may also lead to patentees losing their patent rights due to non-substantive errors such as translation mistakes or clerical errors. This clearly contradicts the original intent of the patent system to protect innovation.

 

The Supreme Court's ruling has shifted this rigid mindset, reinforcing the holistic principle of patent claim interpretation—that is, the interpretation of claims should not be confined to the literal text but should instead consider the specification, drawings, and the purpose of the invention. This holistic principle, derived from the TRIPS Agreement and international patent practices, helps prevent patent invalidation due to drafting imperfections and enhances the stability of patent rights. The ruling explicitly states that the core of determining an "obvious error" lies in the "unique understanding of a person skilled in the art." As long as such a person can definitively and uniquely identify the error and deduce the correct original intent from the entirety of the patent documents—including the claims, specification, drawings, and the title of the invention—such a correction qualifies as an "obvious error correction" and should be accepted. Consequently, this ruling establishes, for the first time at the technical solution level, the principle "obvious error + unique understanding = permissible correction," achieving a transition from formal stability to technical authenticity. This standard is more flexible, reasonable, and better aligned with the interpretative rules of patent documents.

 

2. Promoting the Unification of Patent Examination and Judicial Review Standards

This ruling reflects the Supreme Court's role in exercising judicial supervision and correction over the CNIPA's examination decisions in administrative cases concerning patent grant and validation. The ruling has refined the criteria for determining "obvious errors," establishing a new examination standard for the CNIPA. In the future, during invalidation proceedings and at the patent examination stage, examiners at the CNIPA may need to adopt a more comprehensive approach, one that aligns more closely with judicial review standards, when assessing whether amendments submitted by patentees qualify as "obvious errors." They can no longer uniformly reject such amendments solely on the grounds of altering the scope of protection. This will encourage patent examination practices to move toward the more fair and reasonable standards of judicial review, thereby facilitating the harmonization of patent examination and judicial review standards and reducing administrative litigation arising from inconsistencies in review standards.

 

3. Providing More Reasonable Avenues of Relief for Patent Holders

In the past, if clerical or translation errors existed in patent documents and were deemed to alter the scope of protection, patent holders often faced the risk of having their patent rights declared entirely invalid. This ruling by the Supreme Court offers a new avenue of relief for such patent holders. As long as they can demonstrate that, despite the errors in the patent documents, a person skilled in the art can uniquely deduce the correct intent from the documents, they may potentially salvage their patent rights through "obvious error corrections." This not only safeguards the legitimate rights and interests of patent holders but also prevents situations where substantive innovative achievements are left unprotected due to procedural flaws.

 

4. Elevating the Requirements for Patent Document Drafting Quality

Although the ruling provides patent holders with more opportunities for relief, this does not mean that the requirements for the quality of patent document drafting can be relaxed. On the contrary, the ruling emphasizes the holistic nature and internal consistency of patent documents. To ensure that errors can be recognized as "obvious errors" when they occur, patent applicants must exercise greater rigor during drafting. The logical relationships and technical solutions between the claims, the specification, and the drawings must be consistent and clear. If the patent document itself contains multiple contradictions, or if a person skilled in the art cannot derive a single correct understanding from the document, then even if errors exist, it will be difficult to classify them as "obvious errors," making corrections unattainable. Therefore, this ruling also indirectly encourages patent attorneys to enhance the quality of their work, ensuring that patent documents comprehensively, accurately, and consistently disclose the technical solutions.

 

IV. Conclusion

The Supreme People’s Court (SPC) ZhiXingZhong No. 246 Judgment, through its in-depth interpretation and application of the "obvious error correction" rule, has not only justly resolved the dispute in this case but also exerted a profound impact on the examination and adjudication standards for patent invalidation administrative disputes in China. It has broken away from the long-standing rigid interpretation of "obvious errors," reshaped the judicial standards for correcting "obvious errors" in patent validation procedures, and established a reasoning framework of "holistic interpretation—unique understanding—no expansion of the scope of protection" that serves as a reference for China's patent administrative judiciary. By establishing the "unique understanding of a person skilled in the art" as the core criterion for judgment, this ruling represents a return of judicial practice to the spirit of patent law—that the protection of innovation should not be bound by formalities but should instead seek substance. In the future, as the spirit of this ruling is thoroughly implemented, we have reason to believe that China's patent examination and judicial review will become more just and reasonable, providing stronger institutional guarantees for the construction of an innovative nation.

 

 

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.