Insufficient Disclosure of Descriptions—-Our Firm Won the First Instance of an Administrative Litigation for Invalidation of Invention Patent
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 completely invalidated due to its insufficient disclosure of the specification.
In the administrative stage of the case, our firm successfully invalidated the invention patent named “maintenance-free slide bearing” on behalf of Mingyang Technology (Suzhou) Co., Ltd. (“Mingyang Technology”). (Please refer to this
link for the relevant information of the invalidation decision.) The patentee was dissatisfied and filed an administrative litigation against the invalidation decision. Our firm represented Mingyang Technology, the third party in the case, to participate in the lawsuit. On December 29, 2023, the Beijing Intellectual Property Court rendered a judgment of first instance, upholding the determination in the invalidation decision that the technical solution of claims 1-33 in the patent specification was not sufficiently disclosed, and thus found that the plaintiff’s claim that claims 1-33 of the patent complied with the provisions of Article 26.3 of the Patent Law was untenable, and rejected the plaintiff’s claim.
In this case, in addition to the claims in the invalidation process, the plaintiff also submitted new evidence to the court, and claimed that it was the only technical document that disclosed the specific method of maleic anhydride modified ETFE before the priority date of this patent, so the preparation method of the intermediate layer polymer of this patent is known in the art.
In this regard, based on multiple pieces of evidence and combined with their own scientific research experience, the attorneys of our firm explained that there are multiple process routes of maleic anhydride modified ETFE, including monomer copolymerization, chain transfer, graft copolymerization, etc., and there are also multiple known methods for each process route. The performances of products obtained by different process routes and process parameters are not the same, and those skilled in the art do not know the specific structure of the maleic anhydride modified ETFE of this patent, nor are they clear about how it is prepared. The evidence provided by the plaintiff merely disclosed one of the many routes, that is, graft copolymerization, and there is no evidence to prove that the said patent used graft copolymerization. Furthermore, there are a variety of known methods for graft copolymerization, and the evidence submitted by the plaintiff cannot prove that it is the only published technical document on the specific method of maleic anhydride grafting modified ETFE, nor can it prove that the plaintiff must adopt this method. Therefore, the disclosure of the maleic anhydride modified ETFE of this patent is insufficient.
The court of first instance upheld our claim after trial, holding that the intermediate layer polymer of this patent could not be clearly identified; The patent does not clearly record the specific method for obtaining the intermediate layer polymer, and those skilled in the art cannot realize its technical solution, so the specification is not sufficiently disclosed. The other evidence submitted by the plaintiff is also insufficient to prove that the claims of this patent comply with the provisions of Article 26.3 of the Patent Law.
The plaintiff may appeal against the judgment within 30 days, and the first instance judgment has not yet taken effect.
