I. Legal Basis

As prescribed by Article 33 of the Chinese Patent Law, an applicant may amend his or its patent application documents, with the provision that the amendments to the application documents for invention and utility model may not go beyond the initial disclosure of the original description and claims, and the amendments to the application documents for design may not go beyond the initial disclosure of the original drawings or photographs.

The original description and claims within the meaning of Article 33 of the Chinese Patent Law refer to the description and claims submitted on the filing date; in the case of a divisional application, they refer to the description and claims of the parent application as originally filed; in the case of the Chinese national phase of an international application, they refer to the description and claims of the originally filed international application.

II. Criterion for Judgment

After the filing of a patent application and during the substantive examination procedure, the applicant has several opportunities to amend the application documents on his or its own initiative or in order to bring the application in compliance with the provisions of the Chinese Patent Law and its implementing regulations. Regardless of whether the amendments are made voluntarily or with the view of addressing the defects identified in an office action, they must not go beyond the initial disclosure of the original description and claims.

For the definition of the “initial disclosure of the original description and claims”, Guidelines For Examination (2023 Edition), Part II, Chapter 8, Section 5.2.1.1 provides as follows:

"The scope of disclosure of the original description and claims includes the content literally recorded in the original description and claims, and the content that can be directly and unambiguously derived from the literal content of the original description and claims as well as the drawings accompanying the description."

According to Part II, Chapter 8, Section 5.2.3 of Guidelines For Examination (2023 Edition), "If the application is amended by adding, altering and/or deleting a part thereof, resulting in subject matter that are different in the view of a skilled person from those recorded in the original application, and this subject matter cannot be directly and unambiguously derived from the information recorded in the original application, such an amendment is not permitted."

During the substantive examination procedure, these provisions will be followed by the patent administration department under the State Council typically with quite stringent and rigid criteria, excluding as far as possible amendments beyond what can be "directly and unambiguously derived" by a person skilled in the art. In other words, the subject matter that can be directly and unambiguously derived should be unequivocal for a person skilled in the art and does not include technical content hypothetically or presumptively inferred or deduced from the original description and claims. Such a criterion can be termed as the "directly and unambiguously derived" standard.

III. Consequences of Violation of Art. 33

1) The patent application may be rejected. If the examiner is of the opinion during the prosecution that the original disclosure of the application is extended by amendments and if this deficiency fails to be remedied in the response, the application will be rejected.

2) The granted patent may be declared invalid, resulting in loss of patent rights. As prescribed by Rule 69 of the Implementing Regulations of the Chinese Patent Law, a patent may be invalidated on the ground that Article 33 of the Patent Law fails to be complied with. For example, Chinese Patent ZL00131800.4 was declared entirely invalid in the Reexamination Board's Decision No. 11291 due to the amendments going beyond the initial disclosure, and the Supreme People's Court ultimately refused the patentee's request for a rehearing.

3) The robustness and value of the patent may be compromised. Amendments going beyond the initial disclosure render the boundaries of the patent rights unclear, potentially leading to legal disputes, reducing the credibility and the value of the patent in the market, and being detrimental to the exploitation and utilization of the patent.

IV. Suggestions

Since the Chinese examiners tend to be stringent regarding the amendments, for the purpose of the successful prosecution of a patent application, it is crucial to make sure that no new subject matter is thereby introduced. The following are several specific suggestions.

1) Carefully prepare the description and claims: at the initial stage of drafting the description and claims, list all possible embodiments as much as possible, ensuring that all technical features and modes of implementation are fully described and supported by technical effects.

2) Adhere to the wording existing in the original application documents: when amending the claims, employ the wording and expressions used in the original application, so as to make sure it is immediately apparent that the amendments can find appropriate support from the initial disclosure.

3) Avoid unjustified generalization: refrain from broadening the initial scope of the claims through generalized language. Amendments should be specific, straightforward, and directly derivable from the original specification.

4) Consider the examiner's opinions: when responding to an office action, carefully consider the examiner's comments and follow his/her suggestions if they are found to be indeed reasonable under Chinese practice.

5) Take the drawings into consideration: make sure that the drawings are consistent with the amended textual description. Information from the drawings can be relied on when making amendments, provided that no new matter is introduced.

(By: Yingying Tan)