The Supreme People’s Court (SPC), China’s top court, recently released the top 10 intellectual property cases and 50 Typical intellectual property cases of 2023. Encompassing patents, trademarks, copyrights, new plant varieties, anti-unfair competition, and anti-monopoly, these cases span a wide spectrum of intellectual property categories. They delve into crucial realms and sectors of the modern era, including core technological innovation, renowned domestic and international brands, the digital economy, and the seed industry.

These cases can provide readers with a comprehensive overview of the Chinese intellectual property landscape. In the upcoming weeks, China IP will publish the English version of the top 10 intellectual property cases of 2023.

Case III: Case Invloving Administrative Dispute over Invalidation of "Face Recognition" Invention Patent

Case Brief:

Beijing Zhong XX Technology Co., Ltd. was the patentee of an invention patent with patent number 200480036270.2, entitled "A Method for Obtaining a Facial Image and a Face Recognition Method and System."

Ping XX Computer Trading (Shanghai) Co., Ltd. filed a request for invalidation of the patent. During the examination period for the invalidation, Beijing Zhong XX Technology Co., Ltd. submitted an amended version of the patent claims.

The China National Intellectual Property Administration (CNIPA) did not accept some of the amended claims and only examined the accepted claims, determining that the patent lacked inventiveness and declaring it invalid.

Beijing Zhong XX Technology Co., Ltd. , dissatisfied with CNIPA’s decision, filed a lawsuit at the Beijing Intellectual Property Court, which however, didn’t uphold the lawsuit.

Beijing Zhong XX Technology Co., Ltd. appealed, arguing that all the amended claims should be accepted.

In the second instance, the Supreme People’s Court held that in administrative procedures for the determination of patent rights, the extent of modification of claims must not exceed the "scope of disclosure" as stipulated in Article 33 of the Patent Law and the "scope of protection" as stipulated in paragraph 1 of Article 69 of the Detailed Rules for the Implementation of the Patent Law.

The review of whether a claim modification constitutes "further limited" should consider whether the modified claim contains all the technical features of the original claim, whether it adds technical features compared to the original claim, and whether these added features are recorded in other claims of the original application.

Generally, claim modifications in administrative procedures should respond to the grounds for invalidation and may not be accepted if they reconstitute the claim without addressing these grounds. 

In this case, Claims 4 and 7, which are essentially the original claims and therefore naturally serve as the basis for examination. The technical solutions in Claims 4 and 7 quoted in amended Claims 8 to 10 should also be accepted. However, amended Claims 11 and 12 did not respond to the grounds for invalidation, and CNIPA's decision not to accept them was appropriate.

Thus, the first-instance judgment and CNPIA’s original decision were revoked, and CNIPA was instructed to make a new decision.

Typical Significance:

This case clarifies the requirements for the extent, manner, and purpose of claim modifications in administrative procedures for patent invalidation. It provides significant reference for understanding the legal standards for "further limited" modifications in these procedures.