[co-author: Wendy Zhang]

According to the Guidelines for Patent Examination, a process claim shall usually be defined in terms of technical features such as technological process, operational conditions, steps, and procedures. However, the Guidelines do not specify how to define the sequence of execution of the steps or the procedure of a process claim. Therefore, at the stages of patent prosecution and enforcement, disputes frequently arise due to various interpretations of the sequence of execution of the steps in a process claim.

In the case that the process claim clearly specifies a sequence of execution of the technical steps, it should be considered that the scope of protection of the process claim is limited to the specified sequence of execution, as provided in Article 59 of the Chinese Patent Law “the scope of protection of the patent right for invention or utility model shall be determined by the terms of the claims. The description and the appended drawings may be used to interpret the content of the claims”. However, in the case that the process claim merely lists a plurality of steps included in the process, without specifying a sequence of execution, a doubt arises: whether or not should the sequence of listing the steps be considered to imply the sequence of execution of the technical steps?

To answer this question, Interpretation of the Supreme People’s Court on Issues Concerning the Application of Law in the Trial of Disputes over Infringement of Patent Rights (II) provides Article 11 “where the sequence of technical steps is not specified in a process claim but a person of ordinary skill in the art can directly and clearly learn that such technical steps shall be exploited according to specific sequence upon reading the claims, description, and drawings, the people’s court shall decide that such sequence of steps is a limitation to the protection scope of the patent.”

According to the Interpretation, it can be concluded that: where the process claim does not specify a sequence of technical steps while the specification describes in detail that the solving of the technical problem and the achieving of the corresponding technical effect depend on a specific sequence, it should be determined that the description in the specification causes the sequence of steps defined in the process claim form a limitation to the protection scope of the patent. In other words, whether the sequence of steps defined in the process claim limits the scope of the patent depends on whether the steps must be performed in a specific order, and whether altering the sequence results in substantive differences in the technical function or technical effect. If altering the sequence does not affect the obtained technical function or technical effect, the sequence of steps will not limit the protection scope of the patent.

A precedent case, Civil Judgment of Second Instance No. 720 GMZ (2018), illustrates the appropriate application of the above judicial interpretation.

In the precedent case, claim 1 of the subject patent claims an electronic flash memory external storage method, without specifying the sequence of execution of the technical steps.

The claim includes:

• Feature 1 which is a step relating to a storage medium firmware,

• Feature 2 which is a step relating to the internal data organization mode of the storage medium,

• Feature 3 which is a step of establishing information exchange channels,

• Feature 4 which is a step relating to the method for supplying a working power, and

• Feature 5 which is a step relating to the standard for information exchange between the host machine and the storage device.

Based on the steps described by the features, these steps limit the subject matter of claim 1 from basically different technical aspects. Upon reading the claims, description, and drawings, those skilled in the art will not get the idea that the above steps must be implemented in a specific sequence. Further, considering the technical functions or technical effects of executing the steps, the execution of each step is not corresponding to a unique order. No substantive difference will be made in terms of technical function or technical effect due to adjusting the sequence of execution of the steps. Therefore, the sequence of the steps in claim 1 is not a limitation to the scope of protection.

As shown above, if a process claim does not specify the sequence of execution of technical steps, the description of the steps in the specification and the drawings will be very important for determining the protection scope of the process claim. IP practitioners cannot give too much consideration to the drafting manner of the process claim and the related description of the embodiments in order to properly reflect the technical solution to be claimed without narrowing down the scope of protection due to limitations imposed by the sequence of execution of the steps.