One Case a Day | China: Examination of Divisional Application Amendments Beyond Scope - Supreme Court Gazette Case (2010) Zhi Xing Zi No. 53

Case Introduction

Late at night, it's time to study cases again.

Can the protection scope of a divisional application's claims be broader than that of the parent application's claim 1? How should the scope recorded in the original application be understood? If unfavorable statements were made during the examination process, can they be retracted during the validity confirmation procedure? For mature applicants committed to fully utilizing the patent system to protect their innovations, these three questions must be accurately and clearly grasped to make the best use of the divisional application system while ensuring the divisional application can withstand the test of validity confirmation procedures. The case introduced today not only clarifies that the protection scope can be expanded when filing a divisional application but also clarifies that as long as the derived content is obvious to a person skilled in the art, it can be determined that such content belongs to the scope recorded in the original description and claims. This case is too brilliant to cut; please study it patiently.

Case Information

• Application Number: 00131800.4
• Invention Name: Ink Cartridge
• Parent Application Number: 99800780.3 (PCT/JP99/02579 Chinese National Phase Application)
• Invalidation Decision Number: No. 11291
• First Instance Judgment: (2008) Yi Zhong Xing Chu Zi No. 1030
• Second Instance Judgment: (2009) Gao Xing Zhong Zi No. 327
• Retrial Judgment: (2010) Zhi Xing Zi No. 53

Judgment Summary

The "scope recorded in the original description and claims" referred to in Article 33 of the Patent Law should include the content explicitly expressed in the original description and its drawings and claims in words or graphics, as well as the content that a person skilled in the art can directly and clearly derive by synthesizing the original description and its drawings and claims. As long as the derived content is obvious to a person skilled in the art, it can be determined that such content belongs to the scope recorded in the original description and claims. Compared with the above content, if the amended patent application documents do not introduce new technical content, it can be determined that the amendment to the patent application documents does not exceed the scope recorded in the original description and claims.

There is a certain connection and a clear difference between the restrictions on amending patent application documents and the scope of patent protection. During the examination of an invalidation request, when the patentee of an invention or utility model patent amends its claims, it is restricted by the original patent's protection scope and must not expand the original patent's protection scope. When an invention patent applicant makes an active amendment when filing a request for substantive examination and within three months from the date of receiving the notice from the State Council's patent administrative department that the invention patent application has entered the substantive examination stage, as long as it does not exceed the scope recorded in the original description and claims, when amending the original claims, it can either expand or narrow the scope of protection requested.

The principle of estoppel should be applied in patent grant and validity confirmation procedures, but it is subject to its own applicable conditions and the restrictions of other related principles and legal provisions. In the patent grant procedure, relevant laws have already granted applicants the right to amend patent application documents. As long as such amendments do not exceed the scope recorded in the original description and claims, the principle of estoppel should have no room for application within the scope of such amendments.

Key Claims of the Divisional Application

1.An ink cartridge mounted on a carriage of an inkjet printing apparatus for supplying ink to a print head of the inkjet printing apparatus via a supply needle, the ink cartridge comprising: a plurality of outer walls; an ink supply port for receiving the supply needle, formed on a first one of the plurality of walls; a storage device, supported by the ink cartridge, for storing information about the ink; a circuit board mounted on a second wall intersecting the first wall among the plurality of walls, the circuit board located on a center line of the ink supply port; and a plurality of contact points formed on an exposed surface of the circuit board for connecting the storage device to the inkjet printing apparatus, the contact points forming a plurality of columns.
...

40. An ink cartridge mounted on a carriage of an inkjet printing apparatus for supplying ink to a print head of the inkjet printing apparatus via a supply needle, the ink cartridge comprising:
a plurality of outer walls;
an ink supply port for receiving the supply needle, formed on a first one of the plurality of walls;
a storage device, supported by the ink cartridge, for storing information about the ink;
a plurality of contact points formed on a second wall intersecting the first wall among the plurality of walls for connecting the storage device to the inkjet printing apparatus, the contact points forming a plurality of columns, and one of the contact points (60-2) located at the center of one of the plurality of columns is located on a center line of the ink supply port.

Views of the Parties

The collegial panel believed: The description and claims of the parent application did not have the literal record of "storage device," but only had the literal record of "semiconductor storage device." "Storage device" is a device for storing information data. In addition to semiconductor storage devices, it also includes various other types such as magnetic bubble storage devices and ferroelectric storage devices. The original description and claims of this patent are directed to semiconductor storage devices and do not involve other types of storage devices, nor can it be directly and unambiguously derived that the ink cartridge is equipped with other types of storage devices. Therefore, a person skilled in the art cannot directly and unambiguously determine "storage device" from the "semiconductor storage device" recorded in the original description and claims. The two parts of the original description, "This is because the printing apparatus must be brought to the manufacturer, and the storage device recording the control data must be replaced" and "wherein a semiconductor storage device and an electrode connected to the storage device are provided on one ink cartridge," are both recorded in the background art section. Moreover, "This is because the printing apparatus must be brought to the manufacturer, and the storage device recording the control data must be replaced" is directed to the prior art printing apparatus. The "storage device" in "wherein a semiconductor storage device and an electrode connected to the storage device are provided on one ink cartridge" should be an abbreviation for "semiconductor storage device" and does not refer to another technical feature. This patent is an improvement made for ink cartridges equipped with semiconductor storage devices, directed to "semiconductor storage devices," not "storage devices" or other storage devices besides "semiconductor storage devices."

The first-instance court believed: The "storage device" modified in the claims of this patent is a clear term. It is well known to a person skilled in the art that "storage device" is not limited to "semiconductor storage device." The patent applicant's amendment of "semiconductor storage device" to "storage device" during the substantive examination stage expanded the protection scope to all types of storage devices. Accordingly, Decision No. 11291's determination that Claims 1, 8, 12, 29, and 40 of this patent do not comply with the provisions of Article 33 of the Patent Law is not improper.

The second-instance court believed: The understanding of technical terms and features should be from the perspective of a person skilled in the art, considering the specific context in which the technical term or feature is used. In this case, the "storage device" in Claims 1 and 40 and the "memory device" in Claims 8, 12, and 29 of this patent were all modified during the substantive examination stage. The original disclosure text of this patent has relevant claims recording the content of "semiconductor storage device" and "storage device." The original description of this patent has already stated that the technical problem solved by this patent lies in "the printing apparatus must be brought to the manufacturer, and the storage device recording the control data must be replaced." Moreover, the background art also records "wherein a semiconductor storage device and an electrode connected to the storage device are provided on one ink cartridge." In addition, other parts of the original description all use "semiconductor storage device." A person skilled in the art can unambiguously determine by reading the original claims and description that the applicant of this patent uses "storage device" in the sense of "semiconductor storage device" in the description. Furthermore, whether before or after the amendment, the technical solution of "storage device" is actually used in the sense of "semiconductor storage device" and does not form a new technical solution. A person skilled in the art would not understand it as a new technical solution. The patentee of this patent made a clear limitation on "storage device" in the opinion statement responding to the notice during the substantive examination stage. That is, regarding "storage device," the opinion statement records: "The applicant explains that 'storage device' refers to the 'semiconductor storage device 61' shown in Figure 7(b)." Moreover, the second-to-last paragraph on page 1 of the original description records "wherein a semiconductor storage device and an electrode connected to the storage device are provided on one ink cartridge," indicating that "storage device" is an abbreviation for "semiconductor storage device."

The subject for judging whether an amendment exceeds the scope is a person skilled in the art, who should be an ordinary technician with professional knowledge background and able to understand the technical content in the field. Although "storage device" has its general meaning, including not only semiconductor storage devices but also various different types such as magnetic bubble storage devices and ferroelectric storage devices, in the specific field of printer ink cartridges to which this patent belongs, under the premise that the background art has already clearly indicated that it refers to "semiconductor storage device," a person skilled in the art would not understand it as the superordinate concept "storage device." The understanding of "storage device" in the first-instance judgment and Decision No. 11291 is incorrect and should be corrected. Seiko Epson's appeal claim that the amendment of "storage device" complies with the provisions of Article 33 of the Patent Law has factual and legal basis and should be supported. The Patent Reexamination Board should re-make a review decision on this matter.

Retrial Views

(I) Whether the second-instance judgment's interpretation of the meaning of "storage device" used in the original disclosure description of this patent is correct

The second-instance judgment determined that the original disclosure description of this patent uses "storage device" in the sense of "semiconductor storage device," and "storage device" is an abbreviation for "semiconductor storage device." According to the facts ascertained by this court, there are three parts in the original disclosure text of this patent involving "storage device": first, in Claim 2 of the claims, "said plurality of contact points are connected to said external storage device at different times during the mounting and dismounting of said ink cartridge"; second, in lines 23-24 of page 1 of the description, "the printing apparatus must be brought to the manufacturer, and the storage device recording the control data must be replaced"; third, in lines 26-27 of page 1 of the description, "wherein a semiconductor storage device and an electrode connected to the storage device are provided on one ink cartridge." In addition, in the opinion statement submitted by Seiko Epson in response to the first examination opinion notice from the State Intellectual Property Office, item 2.2 records: "Claim 23 relates to Figures 6 and 7. The applicant explains that 'storage device' refers to the 'semiconductor storage device 61' shown in Figure 7(b)." Regarding the interpretation of the meaning of "storage device" used in the original disclosure description of this patent, this court analyzes and evaluates as follows:

First, regarding the literal meaning of the first and third occurrences of the term "storage device" in the original disclosure description of this patent. First, regarding the first occurrence of "storage device." Claim 2 does not have an independent term "storage device" but uses the term "said external storage device." Combined with the expression "accessing said semiconductor storage device via said contact points from said external control device" mentioned in Claim 1, it is obvious that "said external storage device" in Claim 2 is a substitute for "said semiconductor storage device" mentioned in Claim 1. Next, regarding the third occurrence of "storage device." According to the facts ascertained by this court, the Chinese translation of lines 26-27 on page 1 of the description, "wherein a semiconductor storage device and an electrode connected to the storage device are provided on one ink cartridge," is inaccurate. It should be translated as "wherein a semiconductor storage device and an electrode connected to it are provided on one ink cartridge." Therefore, the so-called term "storage device" here is actually caused by mistranslation and does not exist in the original international application documents of this patent.

Second, regarding the literal meaning of the second occurrence of the term "storage device" in the original disclosure description of this patent. First, regarding the literal meaning of "storage device." For a person skilled in the art, "storage device" is a device for storing information data. It is a superordinate concept including magnetic core memory, semiconductor memory, photoelectric memory, magnetic film, magnetic bubble and other magnetic surface memories, and optical disc memory. This meaning is clear and definite. Next, regarding the context of "storage device" here. Lines 23-24 on page 1 of the description, "the printing apparatus must be brought to the manufacturer, and the storage device recording the control data must be replaced," is the first time an independently used term "storage device" appears in the description. Before using this term, the description introduces the prior art, pointing out that "when both the ink characteristics and the driving method of the print head are improved, the print quality of the printing apparatus can be improved." However, when applying this technical achievement, "considering cost, labor, and other factors, it is practically impossible to apply this achievement to printing apparatuses that have already been shipped from the manufacturer," and it does not involve the type of storage device. After the first use of the independent term "storage device," the description then proposes, by way of example, that Japanese Patent No. 2594912 adopts a semiconductor storage device. It can be seen that the context of the description here does not explicitly or implicitly exclude other types of storage devices, nor does it give a special limitation to "storage device" different from the usual understanding. Finally, the influence of the content of the description's section on the purpose of the invention on the meaning of "storage device." The description's introduction to the purpose of the invention is relatively simple. Although the section on the purpose of the invention explicitly mentions issues such as data loss of semiconductor storage devices, in the context where the description does not explicitly or implicitly exclude other types of storage devices and does not give a special limitation to "storage device" different from the usual understanding, this alone is not sufficient to determine that "storage device" here refers to "semiconductor storage device." Therefore, for a person skilled in the art, the term "storage device" here should be understood as a general reference in its usual meaning rather than specifically referring to a semiconductor storage device.

Third, regarding how to understand Seiko Epson's explanation of "storage device" in the opinion statement. Seiko Epson pointed out in the opinion statement responding to the first examination opinion notice from the State Intellectual Property Office: "Claim 23 relates to Figures 6 and 7. The applicant explains that 'storage device' refers to the 'semiconductor storage device 61' shown in Figure 7(b)." First, regarding the role of the opinion statement. Generally, the applicant's statements in the examination file can serve as a reference for understanding the meaning of the description and claims. The reference value depends on the specific content of the statement and its relationship with the description and claims. Second, the characteristics of Seiko Epson's explanation of "storage device" in the opinion statement. Judging from the content of this explanation, Seiko Epson, combined with the drawings, explains the superordinate concept "storage device" as the subordinate concept "semiconductor storage device." When explaining a superordinate concept as a subordinate concept contained within that superordinate concept, there may be two understandings: first, this explanation is merely an example, indicating that the subordinate concept belongs to the superordinate concept; second, this explanation is a specific reference, meaning the superordinate concept is equivalent to the subordinate concept. Therefore, the exact meaning of Seiko Epson's explanation of "storage device" in the opinion statement still needs to be comprehensively judged based on the reason for the explanation, the amendment process, the original disclosure description of this patent, etc. Third, the reason for Seiko Epson's explanation of "storage device" in the opinion statement. In the opinion statement, Seiko Epson amended original Claim 23 to new Claim 1. Original Claim 23 did not have the feature "storage device"; it was introduced into new Claim 1 during this amendment. Seiko Epson needed to explain this to illustrate its origin. From this perspective, it is unlikely that Seiko Epson made a specific definition of the term "storage device" through the opinion statement. Fourth, Seiko Epson's amendment process for the term "storage device." In the original disclosure documents of this patent, except for one occurrence of an independently used term "storage device" in the description, the claims and other parts of the description consistently use the term semiconductor storage device. Among them, the term "semiconductor storage device" is used more than ten times in the claims of the original disclosure documents. In the amended new claims, it is correspondingly amended to "storage device" and used as many as eight times. Obviously, this intentional amendment indicates that Seiko Epson itself believes that "storage device" and "semiconductor storage device" have different meanings. Fifth, the use of the term "storage device" in the original disclosure description of this patent. As mentioned earlier, the original disclosure description of this patent contains the usage of "storage device" as a general superordinate concept. It is insufficiently persuasive to understand "storage device" as specifically referring to a semiconductor storage device based solely on Seiko Epson's explanation in the opinion statement. Therefore, Seiko Epson's explanation of "storage device" in the opinion statement should be understood as a superordinate concept containing semiconductor storage devices rather than specifically referring to a semiconductor storage device.

In summary, the first occurrence of "storage device" mentioned in the original disclosure description of this patent is a substitute for "said semiconductor storage device." The second occurrence of "storage device" is a superordinate concept containing semiconductor storage devices. The third occurrence of "storage device" is actually caused by mistranslation. Seiko Epson's explanation of "storage device" in the opinion statement is not specifically referring to a semiconductor storage device. The second-instance judgment determined that the original disclosure description of this patent uses "storage device" in the sense of "semiconductor storage device," and "storage device" is an abbreviation for "semiconductor storage device." This determination of facts is improper, and this court corrects it. The applicant for retrial's claim that the second-instance judgment's determination of the meaning of "storage device" is erroneous is established.

(II) Whether the amendment regarding "storage device" in Claims 1 and 40 of this patent violates the provisions of Article 33 of the Patent Law

Article 33 of the Patent Law stipulates: "An applicant may amend his or its patent application documents, but the amendment to the application for a patent for invention or utility model may not go beyond the scope of disclosure contained in the initial description and claims, and the amendment to the application for a patent for design may not go beyond the scope of the initial disclosure as shown in the drawings or photographs." To judge whether the amendment regarding "storage device" in Claims 1 and 40 of this patent violates the provisions of Article 33 of the Patent Law, it is necessary to correctly understand the meaning of Article 33 of the Patent Law.

First, regarding the legislative purpose of Article 33 of the Patent Law. To correctly understand the meaning of Article 33 of the Patent Law, it needs to be combined with the legislative purpose of this article. Article 33 of the Patent Law includes two meanings: first, it allows applicants to amend patent application documents; second, it imposes restrictions on the amendment of patent application documents. The main reasons for allowing applicants to amend patent application documents are: first, the limitations of the applicant's expression and cognitive abilities. When an applicant transforms their abstract technical concept into language and text, embodied as a specific technical solution, due to the limitations of language expression, there are often places where words fail to convey meaning or words do not exhaust meaning. At the same time, when drafting patent application documents, due to cognitive limitations regarding the prior art and the invention-creation, the applicant may misunderstand the invention-creation. During the patent application process, as the understanding of the prior art and invention-creation improves, especially after the examiner issues an examination opinion notice, the applicant often needs to correct the claims and description based on the new understanding of the invention-creation and prior art. Second, the requirement to improve the quality of patent application documents. Patent application documents are an important carrier for transmitting patent information to the public. To facilitate the public's understanding and use of invention-creations and promote the application and dissemination of invention-creation achievements, it is objectively necessary to improve the accuracy of patent application documents through amendments. While allowing applicants to amend patent application documents, Article 33 of the Patent Law also imposes restrictions on the amendment of patent application documents, that is, the amendment to the application for a patent for invention or utility model may not go beyond the scope of disclosure contained in the initial description and claims. The reasons for this restriction are: first, by restricting amendments to the scope recorded in the original description and claims, applicants are encouraged to fully disclose their inventions during the application stage, ensuring the smooth progress of the grant procedure. Second, it prevents applicants from subsequently supplementing invention content not completed at the time of application into the patent application documents, thereby improperly obtaining the benefit of first-to-file for that part of the invention content, ensuring the realization of the first-to-file principle. Third, it protects the public's reliance on patent information and avoids causing unnecessary harm to third parties who rely on the original application documents and act accordingly. It can be seen that the legislative purpose of Article 33 of the Patent Law is to achieve a balance between the interests of patent applicants and the interests of the public. On the one hand, it gives applicants the opportunity to amend and correct patent application documents, ensuring that truly creative invention-creations can obtain grants and protection as much as possible. On the other hand, it prevents applicants from obtaining improper benefits for invention content not disclosed at the filing date, harming the public's reliance on the original patent application documents. The understanding of the meaning of Article 33 of the Patent Law must conform to this legislative purpose.

Second, regarding the understanding of "the amendment may not go beyond the scope of disclosure contained in the initial description and claims." Based on the aforementioned legislative purpose, for "the scope of disclosure contained in the initial description and claims," it should be determined from the perspective of a person skilled in the art based on the technical content disclosed in the original description and claims. All technical content disclosed in the original description and claims should be understood as belonging to the scope recorded in the original description and claims. It is necessary to prevent an overly broad interpretation of the recorded scope, even covering technical content not disclosed by the applicant in the original description and claims, and also to prevent an overly narrow interpretation of the recorded scope, ignoring technical content already disclosed by the applicant in the original description and claims. From this perspective, the scope recorded in the original description and claims should include the following content: first, the content explicitly expressed in the original description and its drawings and claims in words or graphics; second, the content that a person skilled in the art can directly and clearly derive by synthesizing the original description and its drawings and claims. As long as the derived content is obvious to a person skilled in the art, it can be determined that such content belongs to the scope recorded in the original description and claims. Compared with the above content, if the amended patent application documents do not introduce new technical content, it can be determined that the amendment to the patent application documents does not exceed the scope recorded in the original description and claims. It can be seen that when judging whether an amendment to patent application documents exceeds the scope recorded in the original description and claims, not only should the content expressed in words or graphics in the original description and its drawings and claims be considered, but also the content that is obvious to a person skilled in the art after synthesizing the above content should be considered. In this process, one should not merely focus on the former and easily conclude by literally comparing the text before and after the amendment; nor should one mechanically understand the latter, interpreting the content that a person skilled in the art can directly and clearly derive as the only content determined by mathematical logic.

Third, specific judgment on whether the amendment of "storage device" in this case violates the provisions of Article 33 of the Patent Law. The original description and claims referred to in Article 33 of the Patent Law refer to the description and claims submitted on the filing date; for divisional applications, they refer to the description and claims of the original application submitted on the filing date; for international applications, they refer to the description, claims, and drawings of the originally submitted international application. Since this patent is a divisional application of Invention Patent Application No. 99800780.3, and Invention Patent Application No. 99800780.3 is an international application (PCT/JP99/02579) entering the Chinese national phase, when judging whether the amendment of "storage device" in this case violates the provisions of Article 33 of the Patent Law, the content recorded in International Application PCT/JP99/02579 should be used as the standard. According to the records of International Application PCT/JP99/02579 and its Chinese translation (the publication description of Invention Patent Application No. 99800780.3), improving both ink characteristics and the driving method of the print head can improve the print quality of the printing apparatus. However, this achievement is difficult to apply to printing apparatuses shipped from the manufacturer because the printing apparatus must be brought to the manufacturer, and the storage device recording the control data must be replaced. For this reason, the prior art proposed a technical solution of setting a semiconductor storage device and an electrode connected to it on the ink cartridge, while setting a set of electrodes on the main body of the printing apparatus, reading the data stored in the semiconductor storage device, and controlling the recording operation according to these data. Due to technical problems such as poor contact and data loss in this printing apparatus, this patent application proposes installing a circuit board on the side wall of the ink cartridge, setting contact points on the outside of the circuit board, which can be connected to an external control device, thereby achieving the technical effect of the external control device accessing the semiconductor storage device through the contact points. For a person skilled in the art, by synthesizing the original patent application publication description, claims, and drawings, it is easy to associate that other storage devices can be used to replace the semiconductor storage device and derive that this technical solution can also be applied to ink cartridges using non-semiconductor storage devices. Seiko Epson actively amended "semiconductor storage device" in the original claims to "storage device" when filing the divisional application. After the amendment, compared with the content that a person skilled in the art can directly and clearly derive by synthesizing the original patent application publication description, claims, and drawings, the new independent Claims 1 and 40 do not introduce new technical content. Therefore, the amendment regarding "storage device" in independent Claims 1 and 40 of this patent does not exceed the scope recorded in the original patent application documents and complies with the provisions of Article 33 of the Patent Law.

(III) The relationship between restrictions on amending patent application documents and the scope of patent protection

The applicant for retrial believes that the amendment of this patent should be invalidated because it expanded the protection scope. This involves the relationship between restrictions on amending patent application documents and the scope of patent protection.

Article 51 of the Implementing Regulations of the Patent Law stipulates that when an applicant for a patent for invention files a request for substantive examination and within three months from the date of receiving the notice from the patent administrative department of the State Council that the invention patent application has entered the substantive examination stage, the applicant may actively propose amendments to the invention patent application. An applicant for a patent for utility model or design may, within two months from the filing date, actively propose amendments to the utility model or design patent application. When an applicant amends the patent application documents after receiving the examination opinion notice from the patent administrative department of the State Council, the amendment shall be made in accordance with the requirements of the notice. Article 60 of the Implementing Regulations of the Patent Law stipulates that when a requester files a request for reexamination or responds to the reexamination notice from the Patent Reexamination Board, the patent application documents may be amended; however, the amendment shall be limited to eliminating the defects pointed out in the rejection decision or reexamination notice. Article 68 of the Implementing Regulations of the Patent Law stipulates that during the examination of an invalidation request, the patentee of an invention or utility model patent may amend its claims, but shall not expand the protection scope of the original patent. The patentee of an invention or utility model patent may not amend the patent description and drawings, and the patentee of a design patent may not amend the pictures, photographs, and brief description. Article 56, Paragraph 1 of the Patent Law stipulates that the scope of protection of the patent right for an invention or utility model shall be determined by the terms of the claims. The description and appended drawings may be used to interpret the claims. According to the above provisions, combined with the provisions of Article 33 of the Patent Law, it can be seen that there is a certain connection and a clear difference between the restrictions on amending patent application documents and the scope of patent protection. The main difference is that the amendment of patent application documents is bounded by the scope recorded in the original description and claims. The broader the recorded scope and the more technical content disclosed, the larger the allowable amendment scope. The scope of protection of the patent right for an invention or utility model is determined by the terms of the claims. The description and appended drawings may be used to interpret the claims. The more technical features recorded in the claims, the smaller the protection scope. At the same time, when a patent applicant makes an active amendment in accordance with the provisions of Article 51 of the Implementing Regulations of the Patent Law, as long as it does not exceed the scope recorded in the original description and claims, when amending the original claims, it can either expand or narrow the scope of protection requested. The connection between the restrictions on amending patent application documents and the scope of patent protection is that, according to the provisions of Article 68 of the Implementing Regulations of the Patent Law, during the examination of an invalidation request, when the patentee of an invention or utility model patent amends its claims, it is restricted by the protection scope of the original patent and must not expand the protection scope of the original patent. In this case, Seiko Epson's amendment of "semiconductor storage device" in the original claims occurred at the time of filing the divisional application, not during the examination of the invalidation request. The legality of the corresponding amendment is not related to the scope of protection requested by the original patent application documents. The applicant for retrial's claim that the amendment of this patent should be invalidated because it expanded the protection scope cannot be established and is not supported.

(IV) The relationship between restrictions on amending patent application documents and the principle of estoppel

In patent grant and validity confirmation procedures, patent applicants need to follow the principle of good faith, keep promises, be honest and not deceptive, and must not go back on their word, harming third parties' reliance on their actions. As the embodiment and requirement of the principle of good faith, the principle of estoppel should be applied in patent grant and validity confirmation procedures. However, the application of the principle of estoppel in patent grant and validity confirmation procedures is not unconditional; it is subject to its own applicable conditions and the restrictions of other related principles or legal provisions. The application of the principle of estoppel should take the actor's going back on their word harming third parties' reliance and expectations on their actions as a necessary condition. At the same time, clear legal provisions and other equally important principles also restrict the application of the principle of estoppel. The application of the principle of estoppel in patent grant and validity confirmation procedures must comprehensively consider the above factors.

According to the provisions of Article 33 of the Patent Law and Article 68 of the Implementing Regulations of the Patent Law, in the patent grant procedure, applicants may amend their patent application documents, but the amendment to the application for a patent for invention or utility model may not go beyond the scope of disclosure contained in the initial description and claims; in the patent validity confirmation procedure, the patentee may amend its claims, but shall not expand the protection scope of the original patent. Therefore, in the patent grant procedure, relevant laws have already granted applicants the right to amend patent application documents, as long as such amendments do not exceed the scope recorded in the original description and claims. For the public, based on the provisions of Article 33 of the Patent Law, they should anticipate that applicants may amend patent application documents. The content they rely on should be the scope recorded in the original description and claims, that is, the content explicitly expressed in the original description and its drawings and claims in words or graphics and the content that a person skilled in the art can directly and clearly derive by synthesizing the original description and its drawings and claims, rather than relying solely on the protection scope recorded in the original claims. Therefore, if the applicant's amendment to the patent application documents complies with the provisions of Article 33 of the Patent Law, the principle of estoppel should have no room for application within the scope of such amendments.

In this case, since a person skilled in the art can derive by synthesizing the original patent application publication description and its drawings and claims that the technical solution of this patent application can also be applied to ink cartridges using non-semiconductor storage devices, Seiko Epson actively amended "semiconductor storage device" in the original claims to "storage device" when filing the divisional application, which did not exceed the scope recorded in the original description and claims. This amendment is foreseeable for the public. The public will not suffer damage to their reliance interests due to this amendment. Therefore, there is no issue of applying the principle of estoppel to Seiko Epson's amendment regarding "storage device" in this case.

The Patent Reexamination Board stated that Seiko Epson actually believed during the patent application process that "semiconductor storage device" and "storage device" have different meanings, while in the invalidation procedure, it claimed that the two have the same meaning. The amendment process reflects the existence of estoppel, and it should be considered that amending "semiconductor storage device" to "storage device" constitutes estoppel and should be prohibited. This claim confuses the relationship between Article 33 of the Patent Law and the principle of estoppel. As repeatedly mentioned earlier, according to the provisions of Article 33 of the Patent Law, whether an amendment to patent application documents exceeds the scope should be bounded by the scope recorded in the original description and claims. Within this scope, there is no room for applying the principle of estoppel. The Patent Reexamination Board's above claim actually uses the applicant's explanation in the invalidation procedure after the amendment is completed as the standard to judge whether the amendment to patent application documents exceeds the scope. In essence, it replaces Article 33 of the Patent Law with the principle of estoppel. This court does not support this.