Recently, our firm won the first instance of an administrative litigation case for invalidation of an invention patent, in which it is ruled that the invention patent should be comp...
Introduction In the chemical field, it is difficult to seek invalidation of a patent claiming to have achieved unexpected technical effect. This case provides a strategy for success...
Hank SHEN
Chinese Patent Attorney
Mechanical Engineering Department
Linda Liu & Partners
In China, any organization or person may file a request for invalidation with the SIPO with regard to a granted patent. As the judgment of the request for invalidation will affect whether the patent right is executable and whether there is an act of infringement, during the invalidation procedures, the party filing the request and the patentee are always fiercely against each other. In the following passages, 3 tips concluded from the practical experience of Linda Liu & Partners will be introduced for coping with the invalidation procedures.
1. Using PPT presentation in oral proceedings
In invalidation cases, I would prepare a PPT presentation of the major opinions and show the presentation to the collegial panel during the oral proceedings. In fact, including the cases where I participated, almost every invalidation case of Linda Liu & Partners uses a PPT presentation in the oral proceedings. On the contrary, it is very rare in China that a PPT presentation is used in the oral proceedings. In the validation cases where I participated, none of the opposing parties used PPT presentation.
In oral proceedings without PPT presentation, the exchange of ideas and arguments between the collegial panel of the Reexamination Board and the patentee or the requester happens mainly in a verbal manner, which relies on the collegial panel’s thorough understanding of the case and quick learning of the arguments of the patentee and those of the invalidation requester.
When a PPT presentation is used, the collegial panel can easily understand the argument of the presenter, because information transmitted by visual communication is more intuitive than verbal information. In the presentation, the attention of the collegial panel on the contents of the PPT is very important. We may try our best to help the collegial panel focus on the PPT, and explain the contents of the PPT when the collegial panel reads the PPT.
After the oral proceedings, I would provide the electronic edition or paper material of the PPT presentation for the collegial panel actively or under the requirement of the collegial panel. Generally, the collegial panel would gladly receive the material.
2. Display of material object, model or animation in oral proceedings
In oral proceedings, for a case with complex structure or principle, the collegial panel would be glad to have the associated material object, model or animation provided by the invalidation requester or the patentee.
The technical solution of the material object, model or animation is not limited to the technical solution corresponding to the claims. It could be a technical solution of a piece of evidence, for example, a patent document, or a technical solution mentioned as a background art in the involved patent.
Several pieces of the material object can be provided if it is convenient. In one of the cases I experienced, we provided a material object for each member of the collegial panel. It helped each member of the collegial panel to have a direct understanding of the associated technical solution.
In addition, for a material object that is difficult to disassemble or assemble, there may be provided one in the disassembled state and a further one in the assembled state. This avoids wasting time during the oral proceedings due to assembly and disassembly of the material object, and helps the collegial panel to conduct a comparison between the above two states. I was once in a case involving a product A that is difficult to disassemble and assemble. In that case, we provide the product in the following states: assembled product A (for displaying an operating state and explaining the effect of the product), a completely disassembled product A (for illustrating the configuration of each part thereof), and a partly assembled product A in a state that is between the assembled state and the disassembled state (for explaining the mechanical principles of the partial structure).
During the invalidation procedures, it may be difficult to provide a material object of the associated technical solution under some conditions. Thus, a model or a piece of animation is required to illustrate the technical solution. There are no strict requirements for the preparation of the model or animation, as long as it can clarify the technical solution.
For example, I once prepared a device model corresponding to a complex piece of evidence with a package box of staples and a plastic bag. I showed the assembly and disassembly and the use of the device model before the collegial panel. Subsequently, the collegial panel had a full understanding of the technical solution of the piece of evidence.
In addition, a simple piece of animation can be produced based on the animation function of PPT. As for complex animation, we may ask a technician specialized in modeling for help.
3. Anticipated question set and rehearsal of oral proceedings
Before the oral proceedings start, we will prepare a set of anticipated questions including possible arguments of the opposing party and our retort against such arguments. With regard to the difficult questions in the set, we would like to exchange opinions with the client to determine an appropriate retort. Our client would actively collaborate in a technical perspective.
Furthermore, we will conduct a rehearsal with the attorney to attend the oral proceedings, some other attorneys, and sometimes even our client. In the rehearsal, the attorney to attend the oral proceedings makes a statement with reference to the PPT and the material object, etc.; the other attorneys or the client are free to interrupt to disagree. To some extent, the other attorneys stand for the opposing party who are very strict and raise sharp questions. Thus, the attorney to attend the oral proceedings can improve the set of anticipated questions according to the rehearsal.
Although the above tips are for the invalidation stage, they are also suitable for the stage of administrate procedures after the invalidation procedures. As the judge usually lacks a technical background, he/she will rely on the technical explanation of the involved parties. Therefore, as compared with the Reexamination Board with a technical background, the judge welcomes in particular the above items 1 and 2. The judge prefers that the involved parties describe the technical solutions in a way easy for understanding. There was once a judge who called before the court hearing to ask the involved parties for a material object or animation.
The foregoing briefly describes 3 tips concluded from our experience for invalidation procedures. If you want to know more about the oral proceedings or any other aspect of the invalidation procedures, please feel free to contact us. We welcome further exchange of opinions.
