An increasing number of Chinese counterpart patent applications are being filed from US patent applications. This is in part due to the large size and rapid growth of the Chinese economy, making it essential for international corporations to protect their intellectual property in China. However, the growth of Chinese counterpart patent applications is also due to the recognition of the importance of enforcing intellectual property rights in China where many infringing products are manufactured.
In the past, an original US patent application was often drafted with little thought towards later nationalization in China. As a result, if the Chinese counterpart application required amendments to be allowed, the applicant was often unable to have those required amendments accepted by the examiner in China.
The Chinese State Intellectual Property Office (SIPO) is quite strict in applying the requirement that all amendments to claims be described in the original specification. Often the examiner will require that amendments mirror the language of the specification. This requirement often makes it difficult to change the scope of claims in the Chinese application when the original US application was drafted with a number of implicit levels of embodiments, but without explicitly describing those levels.
For example, it may be necessary to add a limitation to a claim to distinguish the claim from another invention. Although the limitation may be clearly disclosed in the specification, the examiner may not permit it to be added as part of an amendment because the limitation is not described in the context of the rest of the claim language. Thus an amendment that would be readily permitted in a US application may be denied in its Chinese counterpart.
A US patent application that will later be nationalized as a Chinese counterpart should be organized with explicitly described levels of embodiments. Each level should have at least one drawing and a description of the embodiment that includes the limitations that could likely be claimed with that embodiment. It is not enough to describe those limitations with other embodiments.
The language of the patent application should also recognize the difficulties of translating a technical description into Chinese. Patent applications typically describe bleeding-edge innovations that challenge even experts in the field. Translators often have not been trained in the technology they are translating, and struggle to understand and communicate its nuances.
A US application that will be translated into Chinese should employ simple, unambiguous sentences. Complex sentences with multiple clauses must be avoided. One should write more like Hemmingway. The labels for each element should also be selected to translate clearly and unambiguously into Chinese.
Finally, someone that understands the invention should review the translation. Simple misunderstandings can be disastrous. By carefully structuring, drafting, and reviewing an original US application and its Chinese counterpart, an inventor has a much better chance of securing useful protection in China.
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