Balance between patent protection and disclosure

The patent system is one wherein technical disclosure is traded for protection. The two fundamental objectives of the Patent Law, namely, the protection of the personal interests of the patentee and promotion of the public interest in scientific and technological progress, hinge on the balance of patent protection and disclosure. The fourth paragraph of Article 26 of the Patent Law provides that “the claims shall be based on the description”. The claims mainly define the scope sought to be protected by the patent, whereas the description embodies more the patentee’s technical contribution, which is disclosed to the public. It is, therefore, a key mechanism devised to balance protection and disclosure in the Patent Law.

On the basis of the Patent Law, the Patent Examination Guidelines specify that the technical solution for which the claims request protection is a solution a person skilled in the art can obtain directly or generalize from the content disclosed in the description. Also, the scope of the claims may not exceed the content recorded in the description.

In addition to the provisions of the Patent Law and the Patent Examination Guidelines, the Supreme Court has rendered judgments and rulings in respect of the support of the claims by the description in several typical cases. This is of guiding significance in the application of the fourth paragraph of Article 26 of the Patent Law in practice.

Johnson Li is a senior partner at Wanhuida Peksung IP Group