Added Subject-Matter in Chinese and European Patent Law

Abstract

Regarding the “scope of disclosure” in Sec. 33 of the Chinese Patent Act, there are constantly different views on the extent to which the term is included in practice among the examining division, patent attorneys and judicial branch. In 2011, the Supreme People’s Court of China issued its first decision (the Epson case) with the allowability of amendments, stating that the “scope of disclosure” could include content that is obvious to an ordinarily skilled person in the art. In 2013, the Supreme Court issued a second decision regarding the same Epson case upon the request of Epson Corporation, in which it removed the “obvious” expression in the previous decision and underscored the importance that the contents of an application should be seen as a whole. Afterwards, the Supreme Court reinterpreted the meaning of “scope of disclosure” in another decision (the Shimano case), indicating the “scope of disclosure” should be understood as the overall information presented by the original application. Focusing on added subject-matter, this article discusses the key term “scope of disclosure” in the Chinese Patent Act and compares the practice between the SIPO and the EPO on the basis of the Epson and Shimano cases.