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Practical Prosecuting of Standard-related Patent Applications In China

28

NOV

2019

On June 6, 2019, China granted 5G licenses to the country’s three major telecom operators and China Broadcasting Network Corp, giving the go-ahead for full commercial deployment of the next-generation cellular network technology[1].

With the commercialization of 5G in China, China becomes the “must” choice for 5G patenting for those companies that are active in this field. In the circumstances, it is important to obtain strong standard-related patent portfolio in China. To achieve this goal, some practical tips in the prosecution of standard-related patent applications are introduced in this article.

Besides some common characteristics sharing with general type of patent applications, standard-related applications have their own characteristics that should be considered by the applicant during in each stage of the prosecution.

Generally, there are three stages for an application, which are new application stage, voluntary amendment stage, and office action stage. For the new application stage, it is important to draft claims and specification with high quality and proper protection scope, as well as to file the application as early as possible; for the voluntary amendment stage, the claims should be amended according to Claim Chart (a comparison table between the features of the claims and the features in the specification of a target standard), and if necessary, types of claims could be completed; for Office Action stage, submitting a response effective in both aspects of substance and formality to overcome the issues pointed out by the examiner would facilitate the granting. Details for the above suggestions are as follows:

For new application stage

In this stage, drafting strategy and filing time are two important issues for standard related applications.

From the drafting perspective, drafting defects would negatively affect the validation of standard-related patents. An example of a standard essential patent (SEP) (ZL200710141661.6, hereinafter called as Patent ’661) being invalidated because of bad drafting is given as follows.

Patent ’661 relates to Audio codec, and more specifically, relates to a low bit-rate digital audio coding system that significantly reduces the bit-rate of multichannel audio signals. The invention achieves technical effect including efficient transmission or storage while achieving transparent audio signal reproduction. Followings are the independent claim 1 and one of its dependent claim 5.

1. A method for decoding an audio signal, comprising:

(a) obtaining a bitstream including a plurality of frames, each frame including processing information related to the frame and entropy coding quantization indices representing audio data in the frame, the processing information including:

(i) a plurality of codebook indices, each codebook index identifying a codebook,

(ii) codebook application information for specifying an entropy coding quantization index range to which the codebook is to be applied, and

(iii) window information;

(b) decoding the entropy coded quantization indices by applying the codebook identified by the codebook indices to the entropy coded quantization index range specified by the codebook application information;

(c) generating subband samples by inversely quantizing the decoded quantization label;

(d) based on the window information, identifying a sequence of a plurality of different window functions applied in a single audio data frame; and

(e) obtaining time-domain audio data by inversely transforming subband samples and using the plurality of different window functions indicated by window information in the single audio data frame.

5. The method of claim 1, wherein the window information indicates a location of a transient in a frame, and wherein the sequence of a plurality of different window functions is identified in step (d) based on a predetermined rule related to the location of the transient.

This patent has successfully become the standard essential patent of China's "Multi-channel Digital Audio Codec Technical Specification". This means that TV manufacturers must inevitably use this solution to manufacture their TVs to be sold in the Chinese market. Thus, this patent is an important and valuable SEP.

The innovative technical features of this invention are actually about new transient location positioning and window function application scheme, as well as three particular parameters included in the window function.

Unfortunately, to pursue an improper broad scope, the claims and specification were not drafted around these key technical features.

In particular, regarding the claims, the above key technical features were not defined in independent claim 1. Then for dependent claims, such as claim 5, although the above key features were mentioned, but they were also broadly defined and did not reflect specific technical manners. These defects made the patent right unstable.

Then, regarding the specification, compared with prior arts, the content to be protected was not highlighted, either. The worst situation for Patent ‘661 is the existence of a prior art document, which is an application previously filed by the same applicant with Patent ‘661 and has disclosed very similar technology about audio codec. That is, this prior art disclosed the generalized technical solution defined in the present invention. As a result, the novelty or inventiveness of Patent ‘661 is seriously challenged by a previous application of the same applicant.

Due to the above drafting drawbacks of claims and specification, Patent ‘661could not to be distinguished from the prior art, thus resulting a negative invalidation decision in which the present invention was deemed as lacking of inventiveness and gotten invalidated. From this example, it could be clearly seen that the drafting quality affects the validation of SEP cases.

Thus, considering of the lesson of this invalidated SEP, as well as other special characters of SEP, drafting suggestions are given as follows:

For specification:

1. Drafting an appropriate protection scope corresponding to a contribution. The solution proposed in the contribution might not be perfectly the same as the later released standard. Thus, when drafting the specification around the time of submitting the contribution, the most advisable strategy is to draft a generalized technical problem and multiple specific technical problems; and a detailed embodiment specific to the contribution as well as several embodiments around the contribution with appropriate amendments. This strategy would improve the SEP’s possibility to cover the future released standard.

2. From the view of the establishment of infringement, writing multiple embodiments comprising sufficient performing sides. For example, for a technical solution focusing on terminal side, besides the embodiments for the terminal side, it is recommended to write corresponding embodiments from the base station side, or at least writing some words like " The operation of the base station can be referred to the above-described operation with respect to the terminal, and thus a detailed description thereof will be omitted.”

For claims:

1. Drafting claims with a proper protection scope, rather than a too broad protection scope.

2. Drafting complete types of claims. For Tele-Communication standard, in view of the establishment of infringement and for the purpose of maximizing possible royalties, complete types of claims including single party should be drafted, which includes: apparatus and method claims of terminal side, apparatus and method claims of base station side, and, if possible, core network device and method claims.

3. Drafting component claim as well as whole product claim comprising the component. While it is important to draft an independent claim for minimum salable unit such as a chip, it is beneficial to draft another independent claim for the whole product in which the minimum salable unit is defined as a component. From the view of royalty base, a whole product claim gives the patentee a better choice for calculating royalty based on the sales volume of the product rather than the component.

Coming to the filing time, it is preferred that the filing date of the application should be at least ONE day earlier than the submitting time of the contribution by considering the time zone difference.

In an invalidation procedure relating to a SEP patent handled by the authors of this article, the publication date of a prior art document, which is a contribution submitted by a company to a standard meeting organization, was debated quite a lot during the oral hearing of the invalidation procedure for whether the contribution could be deemed as a qualified prior art document.

This patent relates to a method for transmitting channel state information, as well as the base station and user equipment thereof. The application was filed on April 06, 2010 in China, on Beijing Time. The contribution was sent via email at the same day. However, since the email was recorded in New York Time, it was recorded as sent on 11:50 PM, April 05, 2010, that is, one day before the application.

Thus, if transferring the sending time of the contribution to a same time zone as the filing time, that is, Beijing time, the contribution was sent on a same day as the filing time. The contribution could not be deemed as a qualified prior art. However, if not transferred, the sending time of the contribution is one day before the filing time. Thus, the contribution constitutes a qualified prior art document against the target patent.

There is no explicit legal provision in the Patent Law of China as to whether publication time should be transferred into a same time zone. Therefore, during the oral hearing, the publication date of this contribution was debated quite a lot.

Although in the invalidation decision, the contribution was not used as a prior art because there was no evidence for the receipt of the contributor by a server, it should be noted that the debating could have been avoided if this application was filed one day earlier than the sending date of the contribution.

In summary, to avoid the risk of contribution being used as a prior art, it is advisable to file the application at least ONE day earlier than the time of submitting the contribution by considering the time zone difference. Or, put it in another way, submitting the contribution 24 hours later than the filing time.

For the voluntary amendments stage

In this stage, the claims could be amended according to Claim Chart, and, if necessary, additional independent and dependent claims could be completed.

For a standard related application, it is quite common that the claims are drafted before the standard is released. Therefore, by the time of voluntary amendment, it is beneficial to amend the claims according to an available Claim Chart to cover the standard.

During the prosecution, it is allowable for the applicant to make amendments at two stages, one is at the voluntary amendment stage, and another is at the office action stage. The Chinese Patent Law allows the applicant to make voluntary amendments at the voluntary amendment stage, i.e., when requesting for substantive examination, or within 3 months from the receipt of a notification from the CNIPA notifying the entry of the application into the substantive stage. When an office action is issued, the applicant can still make amendments to the application document, but usually limited for the purpose of overcoming the issues or rejections made by the examiner in the office action.

Under the Chinese Patent Law, making amendments to the claims at the voluntary amendment stage is much better than making amendments at the office action stage. At the voluntary amendment stage, the only limitation is that the amendments shall not go beyond the recording of the original claims and specification. Therefore, at the voluntary amendment stage, it is allowable to add new independent and dependent claims, or even substitute the current claims set with a new claims as long as such new claims do not go beyond the recording of the original claims and specification. However, when responding to an office action, as mentioned in the above, the amendments are usually limited for the purpose of overcoming the issues or rejections made by the examiner in the office action. Sometimes the examiner may accept a newly added dependent claim if the applicant clearly states the support for the new claim in the observation. However, whether or not to accept the new claim is at the examiner’s discretion.

So it is important to make good use of the voluntary amendment to make claim amendments. Therefore, if the claim chart is available when making voluntary amendments, we suggest amending claims according to the claim chart.

Furthermore, when filing a divisional application, it is also allowable to file a new set of claims other than those in the parent application as long as the new claims do not go beyond the recording of the original claims and specification of the parent application. Thus, if the claim chart is not available when submitting voluntary amendments, the applicant may consider to file a divisional application after the standard is released.

From the perspective of completing the types of claims, the two stages of making voluntary amendments and filing divisional application are all good opportunities.

In summary, for a Tele-Communication SEP related application, it is advisable to have single party claims, such as terminal apparatus/method, base station apparatus/method, and core network device/method. If this application includes component, it is advisable to have a product claim including the claimed component in order to reduced royalty calculation base. If lacking of the above types of claims, it is advisable to complete them when making voluntary amendments or by filing a division application.

For the Office Action stage

For a SEP related application, usually there are two dominated issues among all others, one is novelty/inventiveness issue, and another is amendments going beyond the scope of the original disclosure issue.

For the novelty/inventiveness issue, the following practices are suggested:

  • If the Claim Chart is available when receiving the Office Action, finding out the right embodiment in the specification which corresponds to the claim chart.
  • By referring to the claim chart, analyzing whether it is possible to add additional dependent claims or additional features to reflect the exact features which correspond to the standard and the right embodiment.
  • At last, preparing a suitable response by reciting the same languages in the claims or specification for traversing the examiner’s rejections/objections.

In brief, the practices to overcome the issue of lacking of novelty and inventiveness include: when making amendments to claims, referring to the Claim Chart, to better cover the standards and reflect proper embodiments; when preparing observation, always trying to recite the same languages in the claims or specification when traversing the examiner’s rejections or objections.

The issue of amendments going beyond the original disclosure is another commonly seen issue since it is quite often that a standard related application is amended according to a standard after the standard is released. Therefore, it is a very tough issue in practice.

The followings are the related articles and provisions regarding this issue.

Article 33 of the Patent law of China provides that the amendment to the application for a patent for invention or utility model shall not go beyond the scope of disclosure contained in the initial description and claims.

In the Examination Guideline, it explained which kinds of amendments could be deemed as not going beyond the scope of initial disclosure. That is the amendments should be determined directly and unambiguously according to the contents described in the initial description and claims, and the drawings of the description.

In practice, Chinese examiners are usually very strict for A33 issue, especially, in Office Action stage.

Generally speaking, re-generalization of a claim is not allowed when responding to an office action. And some examiners are even stricter by requiring the amendments being literally same as or corresponding to the initial disclosure.

In our experiences, to facilitate the acceptance of amendments, there are three practical ways to overcome the A33 issue.

First, reciting the same languages in the claims or specification (not to recite Claim Chart) when traversing the examiner’s rejections/objections would be helpful to persuade the examiner.

In details, when the claim chart is available, the supporting contents in the specification should also be clarified. Then, making observation by using a table comparing the disclosure with the amended features, to clearly show to the examiner that the amendments could be determined directly and unambiguously from the contents.

From our practices, the observation including the comparison table by reciting the same languages in the initial disclosure has a higher possibility to be accepted.

Second, it is always helpful to make a phone call with the examiner to discuss about the A33 issue, before the submission of an observation. The phone call allows the applicant’s more detailed explanations about the technology and how the claims are substantially supported by the disclosure of the specification.

If, according to the communication with examiner, amendments are very likely to be rejected by the examiner, it is better to make some “compromised” amendments rather than insisting on the amendments exactly the same with the standard.

The “compromised” amendments could facilitate the granting, and the patent with “compromised” amendments still has the opportunity to be constructed as a SEP patent during patent formulation and infringement procedure.

Conclusion

To achieve a practical prosecuting of standard-related patents/applications in China, the applicant should draft high quality claims and specification, amend claims according to claim chart after corresponding version of standard is released during the stages of voluntary amendments, submit effective response or making compromised amendment to facilitate the granting during the Office Action stage. Also, filing of a divisional application is also a good way to increase the number of standard related patents.


[1] https://www.reuters.com/article/us-china-telecom-5g/china-issues-5g-licenses-in-timely-boost-for-huawei-idUSKCN1T707T

Authors :

Jing Zhang

Patent Attorney | Attorney at Law

Ms ZHANG joined Liu-Shen in 2010. She obtained her PhD degree from Shanghai Jiao Tong University on 2007. She got her qualification as a patent attorney in 2009 and an attorney at law in 2015. She specializes in patent protection, and has extensive experience in a variety of areas, including computer science, digital image processing, digital video processing and telecommunication.

Before joining this firm, Ms ZHANG worked as a software engineer at Telecommunication Research Institution of Samsung Electronics Co., Ltd in Korean for 2 years.

Ms ZHANG provides legal services in patent application/inquiry, patent re-examination and invalidation, patent administrative and legal proceedings, and other matters related to intellectual property rights.

Yongjuan Yue

Patent Attorney

Ms. YUE joined Liu-Shen in 2016. She obtained her PhD degree from Institute of AutomationChinese Academy of Sciences on 2006. She got her qualification as a patent attorney in 2017. Before joining this firm, Ms. YUE worked as a tutor-level examiner at CNIPA for 11 years, including 8 years of working experience in patent reexamination, and 6 years of working experience as a panel.

Ms. YUE specializes in patent protection, and has extensive experience in a variety of areas, including computer science, digital image processing, digital video processing and telecommunication, and provides legal services in patent application/inquiry, patent re-examination and invalidation, patent administrative and legal proceedings, and other matters related to intellectual property rights.

About the Firm

Liu Shen & Associates
Address 10/F, Building 1, 10 Caihefang Road, Haidian District, Beijing 100080, China.
Tel 86-10-6268 1616
Fax 86-10-6268 1818
Email mail@liu-shen.com
Link www.liu-shen.com

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