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PIC Holds a Workshop on Patent Application Drafting

Create Time:2021-11-24

On November 16, Quality Brands Protection Committee of China Association of Enterprises with Foreign Investment (QBPC) Patent and Innovation Committee (PIC) conducted the second roundtable exchange meeting on the Patent Application Drafting in Beijing. QBPC Chair Michael Ding, PIC Chair Alvin Deng, Vice Chair Simon Xia, Dazhi Wang, Frank Liu and nearly 60 QBPC members attended the event online and offline.

Alvin Deng

In the opening remarks, Alvin mentioned that this meeting was the second in the series of the Technical IP Management for In-House IP professionals, which paid more attention to the practical problems encountered by the company right holders in dealing with patent documents. Patent documents included claims, specifications, drawings and abstracts. Dispite of their different roles, the documents were inseparable from each other and would face different problems in different stages of patent authorization, invalidity and litigation. The workshop was to share and discuss typical and thorny issues in patent writing with internal and external patent lawyers.

Li Hua

The first speaker was Harrison Li, an IP Counsel from ABB. Based on the relevant operation and management in ABB, Harrison focused on invention disclosure harvest and patent application, and mainly compared the value of internal IP lawyers with external lawyers. About invention disclosure, Li said that both the importance of intellectual property rights of the R&D project and the control of key nodes of the project should be considered. The product and project core team should organize a brainstorm to inspire the R&D team to explore alternative solutions, and then fully explore invention disclosure of R&D results based on the application of product management information and technical solutions in the company's products and the scalability of similar products. He also introduced the company's internal review mechanism on whether a technical disclosure was patentable or not, and the extended review mechanism for the first application. In terms of how to prepare documents for the first patent application, he made a comparison between two common ways in multinational enterprises: the writing by internal lawyers and the writing by patent law firms entrusted under the supervision of internal lawyers, then discussed his experience and the practice of ABB. He also shared his knowledge of enterprise management by patent family after the first application of patents. Finally, he talked about the management of the patent pool of the enterprise, and how business department and IP department of the company could deal with the patents and applications that need revision while controlling the budget.


Sunny Lin


The second speaker was Sunny Lin from Danfoss Intellectual property Department. After introducing the three business departments of Danfoss, she said that the company attacheed great importance to the quality of patent writing and innovation in intellectual property protection. Then she talked about the claims in specification writing, and mentioned that the writing quality of patent application documents would directly affect the three main stages of patent application, namely authorization, right confirmation and right safeguarding. A good patent application document would maximize the protection of the interests of the right holder, maximize the maintenance of patent rights and make the scope of patent protection more clarified. Through specific cases, she combed the main points of patent specification writing: first, ensure the correctness of the technical scheme, to do "know how, and know why"; Second, during writing of background technology, accurate understanding and positioning of technical issues are required after grasping the nature of the invention, and harmful description and reference should be avoided to support independent claims; Third, the specific implementation must be clear with accurate wording, careful use of terms, and broad definition which could support the claims; In the drawings and the explanatory part of the appended drawings, the specific implementation mode corresponding to all technical features in the claim shall be shown to maintain the claim and possibly add new claims in the later period. At the end of the speech, Lin asked the participants for solutions on some issues, such as how to grasp the correctness of the technical solution, how to ensure the types and technical details of the implementation, and how to overcome self-conflict in the series of cases of the same project.


Xiong Yanfeng

Xiong Yanfeng, Patent Attorney, Assistant General Manager of China Patent Agent (H.K.) Ltd. shared the rules of patent infringement determination, basic principles of patent writing and matters for attention from the perspective of invalid litigation. In the first part, Mr. Xiong introduced the method of infringement judgment, and reminded the guests that the right interpretation was the core of the patent. Only by knowing the way of the right interpretation could we ensure real value of the right. The specification was the inventor's own dictionary, and the title interpretation should follow the basic principle of "literal reference + description", and emphasized that the title interpretation of the specification was not part of the title, but should be able to realize the invention purpose recorded in the specification. Then, he sorted out several typical rules of interpretation of rights in infringement judgment, namely functional limitation, environmental characteristics, applications and applicable fields, and the sequence of methods. About the basic principles of patent writing, Xiong believed that patent writing was a customized artwork rather than a template commodity, and hoped that the right holder would look at his work from the perspective of infringement. The patentee should pay attention to the level of writing, adopt authorized language (modifying invention and authorization) combined with commercial value (defensive and profitable) in order to achieve targeted writing. The characteristics of competitors' products and forms of infringement shall be taken into consideration as well. The last part of the speech was about the matters of attention when writing various parts of the patent document, including title, summary, technical field and background technology, invention subject, appended drawings and illustration of appended drawings and examples of implementation.

The last speaker was Li Tao from Intellectual property department of Siemens. Li took a patent technology of Siemens as an example to show the attendees several highlights of writing: the independent claim embodied the essence of the invention idea and had a large and reasonable protection scope; the claims were fully supported by the specification embodiments; although the specification did not reveal the specific parameters of the circuit model, the technical personnel in this field could build the model according to the information disclosed in the specification to prove that the embodiment could be implemented, so it could effectively counter the infringement party's query when invalidating the patent; the ambiguous terms in the claim shall be fully explained in the specification. Through the case, she summarized the important matters in writing patent technology documents: first, for cases with complex technologies and large differences in different embodiments, it was necessary to fully communicate with the inventor when drafting, understand the core idea of the invention, and summarize specific embodiments in order to maximize the protection scope of independent claims; second, when the IP consultant  proofread the translated patent text in Chinese, he could ask the R&D engineer for assistance in the translation of some professional terms; third, the protection scope and comprehensiveness of the claims needed attention to in the stage of replying to the review opinions. If the defects could be overcome through modification, try to find ways to modify instead of deleting directly in order to avoid potential risks.


During the workshop, the participants put forward their own thoughts on the topic, and the speakers responded one by one. The exchange meeting was successfully concluded.