In the patent legal system, the drafting and examination of the description of a patent are important parts for ensuring that an invention/creation is appropriately protected, in which "fully disclosed" and "supported by the description" are two core concepts commonly mentioned. However, since there is a certain correlation between the two concepts, the two concepts may be confused in actual proxy work.
In view of this, in this article, the two concepts, i.e. "fully disclosed" and "supported by the description", are explained from several aspects: legal basis of the two concepts, the correlation and difference therebetween, and common response methods for examination opinions regarding "fully disclosed" and "supported by the description".
Correlation and difference between "fully disclosed" and "supported by the description"
The Patent Law is aimed at encouraging innovation and disclosure of new technologies by granting a patentee with exclusive right in a certain period of time. As an exchange for obtaining the exclusive right, the patentee must "fully disclose" the invention/creation thereof when applying for a patent, allowing for others to use these technologies after the expiration of patent protection, thereby promoting the technological development of the whole society. The concept "supported by the description" is intended to ensure that the scope of protection of a patent right matches the actual contribution of an invention/creation, so as to prevent the patentee from obtaining protection which goes beyond the actual contribution of the invention/creation thereof, thereby balancing the exclusive right of the patentee with the right of the public to acquire and use the technology.
The concepts "fully disclosed" and "supported by the description" are both related to the description of a patent, and both require that the illustration to an invention in the description shall be detailed enough, such that a person skilled in the art could understand and implement the invention.
The concept of the description being "fully disclosed" is the basis for examining whether claims are "supported by the description", and only on the basis of the description being fully disclosed, it is meaningful to examine whether the claims are supported by the description.
The concept "fully disclosed" focuses on whether the illustration to an invention in the description of a patent is detailed and clear enough, so as to implement the technical solution of the invention, which is a specific requirement for the description of a patent. The purpose of this requirement is to ensure the replicablity of the technical solution of the invention, that is, any person skilled in the art could implement the invention independently according to information disclosed in the invention, without the need for additional information or experiments. If the description fails to be fully disclosed, the invention cannot be implemented, thereby affecting the validity of the patent.
The concept "supported by the description" focuses on the correlation between the claims and the content of the description of the patent, and requires that each technical feature in the claims of the patent can find the basis in the description. The purpose of this requirement is to ensure that the scope of protection obtained by the patentee matches the actual contribution of the invention, preventing the patentee from obtaining protection beyond the actual contribution thereof.
If the claims are not supported by the description, then the scope of protection of the claims might not match the contribution of the patentee, which destroys the fairness of the patent system and might also render the scope of protection of the claims invalid.
Common response methods for examination opinions regarding "fully disclosed" and "supported by the description"
For examination opinions regarding "fully disclosed" or examination opinions regarding "supported by the description", first, it is necessary to verify whether the examination opinions are reasonable. If the examination opinions are unreasonable, argument can be made from the technical problem to be solved by the patent, the technical means adopted in the patent and the technical effect obtained by the patent.
Secondly, if the examination opinions regarding "fully disclosed" are reasonable, the protection of the content not fully disclosed in the description can be excluded from the claims by deleting the technical solutions, corresponding to the content not fully disclosed in the description, from the claims, such that the claims merely protect technical solutions which have been fully disclosed in the description. For example, the description discloses technical solution A and technical solution B, and two groups of claims corresponding to the technical solution A and technical solution B are protected in the claims. If it is pointed out in the examination opinions that the technical solution A disclosed in the description does not satisfy the requirement of "fully disclosed" are reasonable, then the examination opinions on "fully disclosed" can be responded by deleting, from the claim, the group of claims corresponding to the technical solution A.
If the examination opinions regarding "supported by the description" are reasonable, then the scope of the claims can be modified to be within the scope fully disclosed in the description according to the content disclosed in the description.
For example, the description merely provides an embodiment of "dedusting from gas by using high-frequency electric energy"; however, the claims set forth "a method of affecting substances by using high-frequency electric energy". With regard to the opinions that the claims are not "supported by the description" as pointed out in the examination opinions, the claimed "method of affecting substances by using high-frequency electric energy" in the claims can be modified to "method for dedusting from gas by using high-frequency electric energy", to respond to the examination opinions on "supported by the description".
The two concepts "fully disclosed" and "supported by the description" supplement each other. A description fully disclosing technical solutions shall support all technical solutions in the claims, and a claim supported by the description shall also be described on the basis of the technical solutions fully disclosed in the description.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.