——Comments on the Decision No.4545 of the Patent Re-examination Board of SIPO

TRONG>I. Case introduction and raise of the issue

On January 31st 2002, Aopu Electrics (shenzhen) Ltd.( hereafter referred to as  the applicant) requested the Patent Re-examination Board to declare  a  utility model patent(No.98224908.X) entitled Multifunction Warmer in Bathroom invalid on the ground that the description is  not clear which leads to the fact that the utility model patent is not in conformity with the provisions of Article 26,paragraph 3 ,of the Chinese Patent Law. According to the applicant, the term "electromotor with two axletrees" in the description is unclear, which makes the description unclear. The collegiate decides after examination that the said unpreciseness of the description does not necessarily make a person skilled in the field fail to understand the invention or carry it out, so the  draft of the description in this case is in conformity with Article 26 of the Chinese Patent Law.

Clarity is relative with regard to unclarity. For the same fact, the conclusion may be different for different readers, and for the different assessment criterion adopted. How should we define the person entitled to make the assessment  and the criterion for assessment when assessing whether  a description is clear  or not.

II. Analysis

In the present case, electromotor with two axletrees is not a standard technical term, two questions have to be solved when taking it into consideration. The 1st one is what is its technical meaning; the 2nd is whether the technical solution with this technical meaning can be carried out.

To understand it in a literal way, "electromotor with two axletrees" should relate to an electromotor with two output axletrees. Generally, there is only  one  output axletree for an electromotor rotor. Then what does   the term "two output axletrees" mean  and how these two output axletrees work ?

With regard to the clarity of description, paragragh 2.1.1 of the 2nd chapter of the 2nd part of the SIPO Guide to Examination provides: the description should use technical terms of the technical field to which the invention or utility model belongs. The terms in the description should express precisely the technical content of the invention or utility model, they should not be vague or ambiguous, as to make a person skilled in the art fail to understand the invention clearly and correctly.

Since the term "electromotor with two axletrees" is not a standard technical term, if we understand the meaning of the description only according to the literally interpretation of the term, the description may be vague. It is natural that the applicant based its request for invalidation on this reason.

Article 26 ,paragraph 3,of the Chinese Patent Law prescribes that the description shall set forth the invention or utility model in a manner sufficiently clear and complete so as to enable a person ski11ed in the re1evant field of techno1ogy to carry it out.

According to  Article 26 ,paragraph 3, "The description shall disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art".

Thus, the person entitled to make the assessment of whether the description is clear or not should be "one skilled in the technical field to which the invention or utility model belong", and the criterion for making the assessment should be whether the technical solution  can be carried out.

According to the drawings of the description，the "electromotor with two axletrees" as mentioned in the patent are axletrees which are coaxial and which drill through respectively the two ends of the electromotor, and on the two end of the axletrees, there are working parts installed , one with a axial flow fan blade and the other with a centrifugal wheel.

Although certain content of the description is not clear due to the introduction of the  term  "electromotor with two axletrees" ,a person skilled in the relevant field can still understand the actual structure of the electromotor with two axletrees  by reading the whole description and the drawings, and this does not necessarily affect the carrying out of the invention. Thus, the collegiate comes to the  conclusion that the insufficient preciseness of the description does lead to make a person skilled in the relevant  field understand the technical solution  or carry it out , on the contrary, since the description set forth the technical solution in a manner sufficiently clear and complete , the provision  of Article 26,paragraph 3, of the Chinese Patent Law is complied with.

With regard to whether a patent description is clear or not, the provisions in the Guidelines to Examination of the SIPO are quite simple. However, there are more comprehensive ones in the Guidelines to Examination of the EPO and the Guidelines to Preliminary Examination of the PCT. The following quoted from the Guidelines to Preliminary Examination of the PCT( the same in substance with the Guidelines to Examination of the EPO), may be of some help to understand the problem.

1. "The description shall disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art", so as to enable (1) a person skilled in the art to carry out the invention and (2)  the reader to  understand the contribution the inventor has made in the relevant technical field.
With regard to the term  "reader", the Guidelines to Preliminary Examination of the PCT defines as follows: reader is a person possessing common background knowledge and technical level of the relevant technical field.( see 4.1-4.5, Part II of Guidelines to Preliminary Examination of the PCT)

Contents in   item (2) noted above are not provided for in the Guidelines to Examination of the SIPO. As the descriptions are not only for use by the examiners in their examination of the patent applications, they are also  important documentation for the public, it is not without practical significance for the Guidelines to Preliminary Examination of the PCT and the Guidelines to Examination of the EPO to include in them these provisions.

2. "The description should be clear and specific, avoiding the unnecessary use of technical jargon. Acknowledged technical terms  may be used. Technical terms that are not commonly used or coined-specially may also be used, on condition that they are appropriately defined  and  there is  no  acknowledged and identical concept  having the same meaning.. (see 4.14, Part II of the Guidelines to Preliminary Examination of the PCT)

Taking this case as an example, if at the time when the term "electromotor with two axletrees" was introduced, the applicant defined or interpreted its meaning in the description by saying, for example, " 'the electromotor with two axletrees' referred to  in  this patent is a kind of electromotor whose two axletrees drilling through respectively the two ends of the electromotor and on the two ends of the axletrees are installed with working parts",  then the confusion and misunderstand due to the term "electromotor with two axletrees" could be eliminate to some extent, making the description further clearer.

III．Conclusion

As analized above, clarity as stipulated  in Article 26 paragraph 3 of the Chinese Patent Law has its specific criterion. If certain terms, sentences of the description or part of the description are not clear, they do not always lead to the fact that the description is  not clear. The key issue is whether a person skilled in the art  is negatively affected to carry out the invention.

In the examination of the request for invalidation, request for invalidation of a patent right on the ground of non-compliance with the provisions of Article 26,paragraph 3, occur quite often. if, when drafting,  the applicant could take a normal "reader" and not an examiner as the one who is to read and understand his description, and avoid using unclear expressions to the best of  his ability, and  if, when  assessing  the clarity of the description, the public adopts the criterion of seeing whether the invention could be carried out, such request for invalidation will decrease. This will mean the raise of  our drafting skill of patent applications  as well as the improvement of our level  of   patent prosecution.