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...
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 successfully invalidating such kind of patents.
Case Summary
Upon the entrustment of the client, we filed a request for invalidation declaration of patent No. ZL200980146253.7 owned by a top global consumer goods company, of which the title is “Personal Care Compositions Providing Enhanced Cooling Sensation”. The subject patent is an important patent for mainstream freshener (refrigerant) used in the field of personal care. CNIPA made the decision on invalidation to invalidate all claims of the subject patent on the grounds that the claims are not supported by the specification. The decision has come into effect.
Highlight
In the chemical field, in particular in the field of materials and biomedicine, generally an invention achieving unexpected technical effect is considered to possess inventiveness.
The subject patent claims that “the potentiating action of calcium on coolant activity is surprising and unexpected”, and provides supporting test data and examples.
We conducted in-depth research and analyzed the test data provided in the specification and the description of the technical effect, and established the major argument that “the unexpected technical effect cannot hold, at least not for all technical solutions contained in the scope of protection of the claims”. On this basis, we stated the grounds for invalidation that the specification is not adequately disclosed, the claims are not supported by the specification, the claims are unclear, and the claims lack novelty and inventiveness. Specifically speaking, we elaborated why the claims are not supported by the specification from six perspectives, i.e., the type of refrigerant comprised, the density of Ca2+, the ratio of Ca2+/refrigerant, the sequence of adding the refrigerant and the Ca2+ source, the type of Ca transmission agent (phytates and polycarboxylates), and the technical solution of using G-180 individually. At last, although the patentee amended the claims to shrink the scope of protection, CNIPA made the decision of invalidating all claims of the subject patent.
The key to success of this case is to attack the subject patent from multiple perspectives based on reasonably organized grounds for invalidation centering an effective strategy established through in-depth analysis of the subject patent.
