On the Writing Skills of Patent Application Documents in China National Intellectual Property Administration Public Welfare Lecture

　　In practice, a large number of inventions are protected by submitting patent applications and obtaining authorization. Therefore, the writing quality of patent application documents often affects whether the patentee can successfully defend his rights and resist competitors. In this paper, the author discusses the writing skills of patent application documents from the perspective of writing patent application documents.

　　First, we should consider the appropriate scope of protection. The so-called "appropriate" scope of protection refers to obtaining as large a scope of protection as possible on the premise of complying with China’s patent law and its implementation rules.

　　The author thinks that a patent application document can "predict" the comparison documents that may be retrieved, which is based on the full retrieval of domestic and foreign patent documents in the early stage of writing the patent application document, so as to determine the appropriate level of existing technology, construct an appropriate scope of protection, and make the patent more stable.

　　In practice, the author found that many existing patent application documents only describe the technical scheme itself. The author believes that the process of writing patent application documents is a process of secondary creation, which requires the joint participation of inventors and patent agents to discuss various implementation methods to solve the technical problems involved in invention-creation, and determine the claims after summarizing and abstracting the technical characteristics of the implementation methods (upper generalization or functional limitation). And the upper generalization also needs as many examples as possible so that the claims can be supported by the specification. When judging the infringement, the functional features are interpreted as the specific embodiment disclosed in the specification and its equivalent embodiment, and the application of the equivalence rule is easy to have objections. Therefore, it is helpful to obtain a more appropriate scope of protection by excavating as many embodiments as possible in the writing stage of patent application documents.

　　Second, when writing patent application documents, we should also consider it from the perspective of being conducive to infringement judgment. For example, based on principle of universal coverage, when writing the patent application file at first, only the most necessary technical feature set that can solve the technical problems of the invention needs to be written into the independent claim, and unnecessary technical features will only limit the narrowing of the protection scope. In practice, the name of the invention, the characteristics of the use environment, the technical characteristics of the product defined by the preparation method, and the step sequence of the method claim may limit the scope of patent protection, so it should be carefully considered when using it. If there are possibly ambiguous terms in the claim and they are not explained in the specification, it may cause obstacles to the interpretation of the subsequent claims.

　　Third, the commercial prospects of patented products or methods should be considered. In the writing stage of patent application documents, patent agents may find that technical solutions can be applied to fields with more commercial prospects during the communication with inventors. For example, a technical scheme can be used in PC, but after understanding the existing technology, it is found that its application prospect in mobile terminal is very considerable, but it needs to be adjusted accordingly when applied in mobile terminal, so different technical schemes are produced, and the application strategy needs to be adjusted in time.

　　Fourth, we should consider whether patents can be easily evaded by competitors. The patent agent can work with the applicant to develop possible improved technical solutions and possible deteriorated technical solutions. The improved technical solutions can be used as a "retreat" in the patent examination stage and may prevent competitors from submitting improved solutions to patent applications. According to the Guide to Determining Patent Infringement issued by Beijing Higher People’s Court, the deteriorated technical scheme does not constitute equivalent infringement, so the deteriorated technical scheme should also be considered when writing patent application documents.

　　Fifth, it should be considered that it is conducive to obtaining evidence and safeguarding rights. If the applicant is engaged in the production of products, from the perspective of tort compensation, it may be more beneficial for the right holder to write patent application documents mainly against product manufacturers. This is because it is generally easier for sellers, importers and users of infringing products to prove the legal source of infringing products. In this case, it is advantageous to write the product and the claim of the preparation method of the product.

　　In the fields of communication, network and computer, the applicant may face multiple infringing objects, and which infringing objects he hopes to resist is an important factor in determining his claim. Different claims can be designed for different infringing objects.

　　Generally speaking, it is more beneficial to obtain evidence if you can know the technical characteristics of the product without disassembling it or using it by consumers. If you need reverse engineering to determine whether a product is infringing, you need to consider the difficulty of reverse engineering. For example, for related patents in the chemical field, the technical features that can be measured by ordinary measuring instruments or technologies are more conducive to obtaining evidence. For patents related to semiconductor and chip fields, if reverse engineering is easy to realize, components and their connection modes can be described. If reverse engineering is difficult to realize or the cost is high, it is necessary to consider whether it is necessary to change the writing method.

　　Sixth, we should consider the layout strategy. When writing patent application documents, we should also pay attention to the role of dependent claims, that is, in addition to independent claims, other novel and creative technical features can be arranged in dependent claims to prevent competitors from evading design.

　　At the same time, different levels of protection scope should be considered, and some patent application documents may be incompatible with certain technical features. At this time, independent claims with different protection scope can be considered to avoid giving up some protection scope due to modification. In addition, in some cases, the protection scope of the method claim can be different from that of the product claim, for example, the protection scope of the method claim can be greater than that of the product claim to achieve different levels of protection.

　　Chinese applicants need to consider the relevant laws and regulations of different countries when writing patent application documents if they want to arrange patents abroad. When submitting an international patent application through the Patent Cooperation Treaty (PCT), due to the relatively limited space for modification, it is especially necessary to strictly check the priority documents.

　　For example, when filing an American patent application, we should avoid too much self-admission and discussion about the existing technology. Because the U.S. Patent and Trademark Office has a strict review of Antecedent Basis, patent Enablement and Written Description, it should be extra cautious when writing priority documents. (Li Xingdi only represents the author’s personal views)