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The Supreme Court held that “as long as the content inferred directly and unambiguously from the original disclosure is obvious to the person skilled in the art, such content belongs to the original disclosure of the filing document under Article 33 of the Chinese Patent Law.”
Article 33 rejection, “amendment going beyond the original disclosure,” has been bothering our overseas applicants for since 2009 when the SIPO began to interpret and implement Article 33 requirements unusually strict.
ESSENCE OF SUPREME COURT DECISION
In (2010) ZhiXingZi No. 53, the Supreme Court interpreted Article 33 and pointed out the correct application of Article 33. The Supreme Court sustained the arguments Beijing East IP Ltd. made before the Patent Re-examination Board, holding that, “as long as the content inferred directly and unambiguously from the original disclosure is obvious to the person skilled in the art, such content belongs to the original disclosure of the filing document.”
BENEFITS TO CLIENT
Re-generalization is an usual approach our clients would adopt when amending claims while responding to office action. Especially for our overseas clients who have global patent portfolios to manage; coordinating the strategies before the USPTO, EPO, JPO, and SIPO for patent family is crucial.
Since 2009, before this decision came out, our overseas clients have been going through the “dark era of Article 33” as more and more cases were rejected under Article 33 in which re-generalization was categorically rejected. At the same time the SIPO seemed ignoring calls from applicants and patent agency associations to review the unusually strict examination.
In this decision, the Supreme Court expressly hold that proper re-generalization of the original disclosure of the filing document when amending claims should not be rejected categorically.
Beijing East IP Ltd. is proud to be a part of this case and pave the foundation for this final success.