II. Trial of Patent Administrative Cases
15. Separate Comparison Principle in Novelty Judgement
In the administrative disputeover patent for invention invalidation of Tong Kening and CNIPA (the appealers) VS Zhejiang Shuangyu Industry Co., Ltd (the appellee) [final ruling No. 53 for IP administrative case in the supreme court (2019)], the supreme court pointed out that the technical solution carried by each reference document is independent, and even if the technical solutions respectively recorded in two reference documents are dedicated to the same existing technical carrier entity, the two reference documents shall not be naturally combined to evaluate the novelty of claims, since in this case the actual object for comparison has become an existing technology in the evaluator’s mind that has never been recorded in any reference document.
16. Relationship between Inventiveness and Sufficient Disclosure of the Description as Required by Law
In the administrative dispute over re-examination of rejection for patent for invention application of CNIPA (the appealer) VS Roger·Ginden·Craig from the Rotterdam Medical Centre of Erasmus University (the appellee) (referred to as the administrative dispute over re-examination of rejection for patent“binding molecules” hereinafter) [final ruling No. 127 for IP administrative case in the supreme court (2019)] , the supreme court pointed out that judgement on inventiveness has difference function and follows different logic in the sense of patent law as compared with other legal requirements such as sufficient disclosure of the description and claims being supported by the description, and the content substantially to be examined for the legal requirementslike sufficient disclosure of the description shall not, by principle, be taken into consideration for judgement of inventiveness, otherwise it might put too much burden on the judgement of inventiveness, also it might restrict the applicant from performing substantial debating for issues such as sufficient disclosure of the description and claims being supported by the description, and furthermore it might cause the legal requirement of sufficient disclosure of the description to be suspended.
17. Determination of the Technical Problem Actually to be solved in an Invention in Judgement of Inventiveness
In the administrative dispute over patent for utility model invalidation of CNIPA and Kashi Bosi Photovoltaic Technology Co., Ltd (the appealers) VS Shandong HOWO Electric Co., Ltd (the appellee) [final ruling No. 32 for IP administrative case in the supreme court (2019)], the supreme court pointed out that when determining the technical problem actually to be solved in an invention in the judgement of inventiveness, the technical problem shall be appropriately extracted according to the actions, functions or effects that can be implemented by the distinguishing technical features in the present technical solution, and shall neither be over generalized nor be simply equivalent to the actions, functions or technical effects that can be implemented by the distinguishing technical features.
18. Determination of Technical Teaching in Judgement of Inventiveness
In the previous administrative dispute over re-examination of rejection for patent “binding molecules”，the supreme court pointed out the technical teaching that can be acquired by a person skilled in the art from the prior art when facing with the technical problem actually to be solved shall be, in principle, specific and explicit technical means, rather than an abstract idea or a general research direction. It may imply the risk of hindsight and may cause under-evaluation of the inventiveness of the invention to determine thetechnical teaching provided by the prior art only according the consistence in research direction and the abstract and common requirements in the art.
19. Consideration of Preservation of Biomaterials in Judgement of Inventiveness
In the administrative dispute over patent for invention invalidation of Dai Jingliang (the appealer) VSCNIPA (the appellee) and Beijing Wantel Biopharmaceutical Co., Ltd (the third party of original trial)[final ruling No. 16 for IP administrative case in the supreme court (2019)] , the supreme court pointed out that the biomaterials sought for protection in the patent application possesses inventiveness over the reference document in the case that the reference document only disclosed the preparing methods of the same or similar means such as screening and mutation, but did not preserve the prepared biomaterials, therefore a person skilled in the art could not obtain the biomaterials sought for protection in the present patent by repeating the preparation method or other methods, and had not motivation to improve the preparation method to obtain the biomaterials.
20. Relationship between the Scientific Value of a Research Result and Inventiveness Judgement
In the administrative dispute over re-examination of rejection for patent for invention application of Institute of crop science, Chinese Academy of Agricultural Sciences (the appealer) VS CNIPA (the appellee) [final ruling No. 129 for IP administrative case in the supreme court (2019)], the supreme court pointed out that acquisition of a search result may go through hard working and thus constitutes a meaningful research result or has other values, but this cannot naturally make the search result possess inventiveness in the sense of patent law.
21. Determination of Prior Art Disclosed in the Form of a Real Object
In the administrative dispute over patent for invention invalidation of Beijing Baidu Netcom Science Technology Co., Ltd. and Beijing Sogou Technology Development Co., Ltd (the appealers) VS CNIPA (the appellee) [final ruling No. 1 for IP administrative case in the supreme court (2019)], the supreme court pointed out that where the party concerned claims for the prior art by a real object, he shall clarify the claimed prior art and the corresponding relationship between the prior art and the real object, and meanwhile prove by evidence or sufficiently describe that the public may obtain the technical solution intuitively from the real object.
22. Requirements on Specific Ways for Amending Claims in Declaration Procedure of Patent Invalidity
In the administrative dispute over patent for invention invalidation of Alfa Laval (the appealer) VS CNIPA (the appellee) and SWEP International (the third party of the original trial) (referred to as the administrative dispute over patent invalidation of “stainless steel brazing” hereinafter) [final ruling No. 19 for IP administrative case in the supreme court (2019)], the supreme court pointed out that the limitations on specific ways of amending claims in the declaration procedure of invalidation shall be aimed at achieving the legislative intent of two legal standards ofamendments: amendments made to claims shall not go beyond the scope as recorded in the original description and claims, and the protection scope of the original patent shall not be extended; meanwhile, the efficiency of administrative examination behaviour shall be taken into consideration, the contributions made by the patentee shall be protected fairly, and it is not appropriate to restrict the specific way of amendments too strictly, otherwise the limitations on amendments might be purely taken as the punishment on the patentee for improper drafting of claims.
23. Comparison Basis for Whether Amendments to Claims have Expanded the Original Protection Scope
In the above the administrative dispute over patent invalidation of “stainless steel brazing”, the supreme court pointed out that in the declaration procedure of patent invalidation, where the amendment made to the claims is made by adding all or part of additional technical features of a dependent claim to an independent claim which the dependent claim cites, judgement on whether the amended independent claim expands the protection scope of the original patent shall be made based on the protection scope of independent claims of the original patent as the amendment object, rather than the protection scope of the original claim to which the additional technical features belong.
24. Conditions and Procedures for CNIPA to Make a Decision of Rejection of Re-examination based on New Reasons or Evidences
In the administrative dispute over rejection of re-examination of patent for invention of National Health Research Institutes (the appealer) VS CNIPA (the appellee) [final ruling No. 5 for IP administrative case in the supreme court (2019)], the supreme court pointed out that generally speaking, where the claims, reference documents and legal reasons on which the decision of re-examination is made have changed with respect to those for decision of rejection, it shall be considered that new reasons or evidences are introduced, and the CNIPA shall, by principle, notify the applicant in a “notification of re-examination” before making a decision of re-examination to allow the applicant to make observation and amendments, rather than making a decision of re-examination of maintaining the original decision of rejection by directly changing reasons, only with exception of extremely particular cases.
25.Comprehensive Examination Principle in Declaration Procedure of Invalidation
In the administrative dispute over patent for invention invalidation of Tong Kening and CNIPA (the appealers) VS Ningbo Yude metal products Co., Ltd (the appellee), and Nantong Mingxing Technology Development Co., Ltd and InstituteofSoftwareat the Chinese Academy of Sciences (the third parties in the original trial) [final ruling No. 124 for IP administrative case in the supreme court (2019)], the supreme court pointed out that in the declaration procedure o invalidation, CNIPA shall not maintain invalidation of all patent rights without comprehensive examination of all the reasons of the applicant for applying declaration of invalidation.
Link to the Part I: http://www.chinaiptoday.com/post.html?id=832
