China Supreme People's Court defines the scope of amendment to a patent application

Abstract

Recently, the Supreme People's Court of the People's Republic of China (SPC) clarified the rules on amendments to claims of a patent application and the role of prosecution history in interpreting claims during the invalidation proceedings. In its decision in EPSON v PRAB, SPC affirmed in part the Beijing Higher People's Court's (BHPC) decision upholding the validity of the Seiko Epson Corporation's (EPSON) invention patent (Patent no. 00131800.4) for ‘Ink Cartridge’ (’800 Patent) and reversing the Beijing Intermediate People's Court's (BIPC) and the Patent Re-examination and Appeal Board's (PRAB’) decisions. The SPC's decision is significant in ruling standards to determine the disclosure scope of the initial description and claims. In addition, the SPC clarifies that prosecution history can be used to interpret the meaning of terms in the description and claims during prosecution.