April 26 is the World Intellectual Property Day. On this day, the Patent Reexamination Board of the State Intellectual Property Office released China’s top 10 cases of patent reexamination & invalidation in 2015. Among those cases, the second and the eighth, i.e. those involving Beda Medicine Co. and Nippon Steel & Sumitomo Metal Corporation, were represented by Linda Liu & Partners. We herewith attach all the top 10 cases for your reference. We would like to take this opportunity to thank everyone for assisting and supporting us through all these years. We will continue to offer our best services in the future.

Editorial Notes:
The Patent Reexamination Board of the State Intellectual Property Office (hereinafter “the Board”) identified top 10 cases of patent reexamination & invalidation in 2015, and released the list on the open day of the SIPO to promote the publicity of IP system, to improve IP protection under new situations, and to precisely interpret the legal standards for authorization and determination of IP rights.

The selection of the top 10 cases is mainly based on their typical guiding significance to the applicability of the examination standards, with additional considerations of social attention and decisions’ languages. The top 10 cases cover a wide variety of fields, including mechanics, electricity, communication, medicine, chemistry, materials, and design. The cases thoroughly interpret the legal meanings and enforcement standards of the patent laws and regulations in reexamination and invalidation from various perspectives, reflect the Board’s latest understanding of the legal issues and achievements over the past year, help publicity of the patent system, and promote consistent execution of the examination standards to protect and stimulate innovation.

1. Request for Invalidating Invention Patent “Nuclear Reprogramming Factor”

Case Brief:
The petitioner Liu Leiya filed an invalidation request against an invention patent with the patent number of 200680048227.7, which is owned by the patentee University Kyoto. After examination, the Board issued the No. 26398 invalidation decision and held that the patent was valid on the basis of the amended claims submitted by the patentee under Article 5 and Article 26.4 of the Patent Law.

Key of Decision:
For an invention involving cells that can be obtained both directly through fetuses and commercial purchase, the specification shall be wholly construed as excluding the technical content of obtaining corresponding cells directly from human embryos, and shall not be construed as obtaining directly from fetuses when (1) an objective of the invention is to avoid ethical issues resulting from obtaining certain cells from fetuses, (2) the specification contains no language regarding operations on fetuses, and (3) a person skilled in the art can confirm that prior art references contain approaches to the commercial purchase of the cells. For human cells lack totipotency, if the acquisition and preparation procedures do not involve any method or operation that damages or uses human embryos, the cells per se and their preparation shall not be considered as industrial or commercial applications of human embryos. An invention shall not be considered to violate commonly accepted moral principles and standard of conduct solely because the invention has certain potential uses.

2. Request for Invalidating Invention Patent “Condensed Quinazoline Derivative Used as Tyrosine Kinase Inhibitor”

Case Brief:
The petitioners, Fu Lei and Wang Lu, filed an invalidation request against an invention patent with the patent number of 03108814.7, which is owned by the patentee Beda Medicine Co. After examination, the Board issued the No. 27258 invalidation decision and held that the patent was valid on the basis of the amended claims submitted by the patentee.

Key of Decision:
In examining whether an amendment of a definition of a substituent group in a general formula compound in a claim is beyond the scope of disclosure, stress shall be laid on the technical information provided by the embodiments. If a substituent group of most compounds in the embodiments fall into the same category, the embodiments shall be considered as a guide to revise the substituent group into that category, and the definition of the substituent group shall be allowed to be revised into that category based on the embodiments. Meanwhile, such amendments would not result in the incorporation of inventive content into the patent documents which was not completed before the filing date, and would not cause the applicant to gain unlawful interests.

The examination of the inventiveness of a general formula compound shall be determined from the perspective of a person skilled in the art, and based on the state of current technology and the trend of technology development. The examiners shall investigate whether the applicant has the motivation to improve the structure of existing compounds prior to the filing date instead of considering the possibility of improvement after reading the invention to avoid hindsight bias. In addition, for a new medicine that highly depends on technical support, technical innovation, and efficacy-driven drug market, commercial success, without the effect of nontechnical factors such as sale means and advertising, is a factor that shall be taken into consideration in justifying the inventiveness of the invention, as such success is normally a symbol of significant technical improvement.

3. Request for Invalidating Invention Patent “Treatment of Gastrointestinal Stromal Tumors”

Case Brief:
The petitioner Jiangsu Hansoh Pharmaceutical Group Co., Ltd. filed an invalidation request against an invention patent with the patent number of 01817895.2, which is owned by the patentee Novartis AG. After examination, the Board issued the No. 27371 invention decision and held that the entire patent invalid. Specifically, claim 1 met the novelty requirement but lacked inventiveness.

Key of Decision:
For a medical use claim written in the form of “application of a substance in the preparation of a medicine for the treatment of a disease”, “treatment of a disease” shall be construed as the treatment of a patient suffering from certain disease, and “patient” shall be construed to include both human and animal patients. Nevertheless, providing clinical test data in the specification is not the only way to support a medical use claim. Providing in vitro cell experiments or animal model experiments in the specification are both alternative methods.

However, these alternative methods shall be provided to the extent that enables a person skilled in the art to expect the uses and/or effects of the substance.

For novelty of a medical use invention, if prior art references cannot reflect the effectiveness of treatment for certain diseases, the medical use invention shall be considered novel.

When determining the obviousness of an invention relative to current technologies for the inventiveness of a medical use invention, one shall not only consider whether a person skilled in the art would attempt to use a substance to treat a disease, i.e., whether to attempt the technical solution per se, but also consider whether the attempt has anticipation of success. Anticipation of success can be reasonable, and it does not need to be absolute.

4. Request for Invalidating Invention Patent “Process for Producing Dichloropropanol from Glycerol, the Glycerol Coming Eventually from the Conversion of Animal Fats in the Manufacture of Biodiesel”

Case Brief:
The petitioner Jiangsu Yangnong Chemical Group Co., Ltd. filed an invalidation request against an invention patent with the patent number of 200480034393.2, which is owned by the patentee Solvay S.A. After examination, the Board issued the No. 20060 invalidation decision and held that the entire patent invalid. Specifically, claims 1-33 were not inventive.

Key of Decision:
In the chemical field, if the difference between the technical solution of an invention and prior art references is merely replacing an element of the product or method with a known element, it is essential to determine the technical effect of the replacement in identifying the technical problem that the invention actually solves. If the replacement has the same or about the same technical effect as a known element, the invention can be treated as an alternative of a prior art. Therefore, if the means of element replacement is known in a prior art reference, or obvious to a person skilled in the art based on the person’s common knowledge, the invention shall be determined to lack inventiveness. If the technical effect of the replacement is different from the effect of a known element or has unexpected effect, one shall first determine the actual technical problem solved by the invention based on the effect, and then determine whether the means of element replacement provides technical inspiration.

Where the patentee declares multiple beneficial effects in the specification, one shall accurately comprehend the construction of the invention, comprehensively consider all the technical information, objectively analyze the relationship between the technical effects and the replacement from the perspective of a person skilled in the art, and precisely determine the technical effect of the replacement to determine the inventiveness accordingly.

5. Request for Invalidating Invention Patent “Projection Optical System, Exposure Apparatus and Exposure Method”

Case Brief:
The petitioner Carl Zeiss AG filed an invalidation request against an invention patent with the patent number of 200480012069.0, which is owned by the patentee Nikon Corporation. After examination, the Board issued the No. 26658 invalidation decision and held part of the patent invalid. Specifically, the part of the claims lacked novelty, thus the corresponding part of the patent was invalid.

Key of Decision:
Whether an application can enjoy priority on separate comparisons depends on whether the technical solution of each of the claims of a later application is clearly disclosed in the document of the prior application. Clear disclosure can be satisfied by an explanation of the later application, and does not require identical expressions. However, if a later application makes detailed explanations for one or more technical features of a technical solution, but a prior application only makes ambiguous and vague statements about the technical features, or even only an implication, such that a person skilled in the art cannot confirm the features directly and unequivocally from the prior application based on his knowledge, then the later application cannot enjoy the priority of the prior application.

An examiner shall analyze the documents of a prior application as a whole from the perspective of a person skilled in the art, and compare aspects such as the technical field, the technical problem to be solved, the technical solution, and the expected technical effect. Additionally, the examiner shall determine whether the subject matter of a later application can be obtained directly and unequivocally from the prior application, and whether the prior application and the later application deal with the same subject matter.
A later application cannot enjoy priority if (1) the later application requires multiple priorities, and (2) one of its technical solutions is a summarization or combination of different technical solutions or technical features disclosed separately in two or more prior applications.

6. Request for Invalidating Invention Patent “Stereoscopic Display Method and Tracking Type Stereoscopic Display”

Case Brief:
The petitioner Shenzhen Takee Technology Co., Ltd. filed an invalidation request against an invention patent with the patent number of 201010229920.2, which is owned by the patentee Shenzhen Super Multi Dimension Optoelectronic Co., Ltd. After examination, the Board issued the No. 27801 invalidation decision and held that the patent was valid. Specifically, claims 1-6 submitted by the patentee on September 2, 2015 possessed inventiveness.

Key of Decision:
The disclosure by a reference is a crucial factor in the determination of inventiveness. Objective identification of the reference shall be based on the perspective of a person skilled in the art, and be determined objectively and wholly from the reference’ objective, the technical problem to be solved, the adopted technical solution, and the acquired technical effect. Interpretation of a reference shall not be based on the understanding of technical solutions of a patent in consideration. Likewise, in determining whether a reference has technical teaching, one shall comprehensively consider the technical flaws, the adopted technical solutions, and the achieved technical effects of the reference, and then objectively determine whether the technical teaching has been given. Contents from a patent in consideration shall not be introduced for analysis and deduction because it may lead to an incorrect conclusion. Isolating technical features from technical solutions and technical problems to be solved in a reference, and introducing facts inferred from the reference based on technical features of a patent in consideration, may lead to a variance from the technical content disclosed by the reference itself, and an excess of the scope of disclosure contained in the reference which is objectively recognized by a person skilled in the art.
 
7. Request for Invalidating Invention Patent “Improved Frequency Control Type Hydraulic Coupler Electrically Driven Feed Pump”

Case Brief:
The petitioner Hiconics Drive Technology Co., Ltd. filed an invalidation request against a utility model patent with the patent number of 201320342548.5, which is owned by the patentees Guangdong Zhiguang Energy Co., Ltd. and Shenyang Water Pump and Pump Products Sales Co., Ltd. After examination, the Board issued the No. 27267 invalidation decision and held that the entire patent was invalid. Specifically, claims 1-6 lacked inventiveness.

Key of Decision:
To determine whether a technical means is common knowledge, analysis and judgement shall be made on three levels on the basis of knowledge and capability of a person skilled in the art. First, whether the technical means per se determined as common knowledge is widely known by a person skilled in the art. Second, whether the specific technical problem solved or the specific role played by the technical means determined as common knowledge is widely known or commonly acceptable by a person skilled in the art. The specific technical problem or role is usually the same as or corresponds to the technical problem in the invention under consideration which the technical means intends to solve. Third, whether the introduction of the common knowledge is obvious to a person skilled in the art. Only when a technical method meets all the three requirements can it be determined as common knowledge.

The understanding of technology information in current technology, and whether the technical information in the prior art references constitute contrary technical teaching, should be based on the overall technical solution rather than individual technical features or technical means of the technical solution. When improving current technologies, the selection of one common technical means from a relevant field due to its advantages does not necessarily exclude use of another common technical means in the relevant field due to other advantages, and thus does not constitute contrary teaching.

8. Request for Invalidating Invention Patent “Cold-rolled Steel Sheet, Process for Producing the Same, and Cell and Process for Producing the Same”

Case Brief:
The petitioner Nippon Steel & Sumitomo Metal Corporation filed two invalidation requests against the invention patent with the patent number of 200780009180.8, which is owned by the patentee JFE STEEL Corporation. After examination, the Board issued No. 24367 and No. 28343 invalidation decisions respectively. In the No. 24367 decision, the Board held that the patent was valid because the grounds for the petitioner’s invalidation request were not valid. In the No. 28343 decision, the Board held that part of the patent was invalid because part of the technical solutions lacked novelty.

Key of Decision:
Determining novelty of a claim of a chemical product characterized by parameter(s) by way of presumption is a difficult issue in the examining practice in the field of chemistry. Novelty of a claim of a chemical product characterized by parameter(s) can be obtained by comparison and determination from the perspective of preparation method because the preparation method of a product is directly related to its structure and composition, and the same preparation method would generally result in products with the same structure and composition.

In the procedure of right verification, when novelty of a claim of a chemical product characterized by parameter(s) is determined by way of presumption using its preparation method, distribution of the burden of proof and the standards of proof are always essential issues. At this point, the burden of proof lies upon the petitioner who filed the invalidation request. The petitioner shall submit evidence that is comprehensive, accurate, targeted, and consistent so that the collegial panel can, based on the known basic fact and empirical law, conclude that the preparation method demonstrated by the evidence generates the same product as the chemical product of the invention under consideration. Otherwise, the petitioner of the invalidation request shall bear the corresponding consequences brought about by the unfavorable adduction of proof.

9. Request for Invalidating Design Patent “Mobile Phone (100C)”

Case Brief:
The petitioner Apple Computer Trading (Shanghai) Co., Ltd. filed an invalidation request against a design patent with the patent number of 201430009113.9, which is owned by Shenzhen Baili Commerce and Trade Co., Ltd. After examination, the Board issued the No. 27878 invalidation decision and held the entire design patent valid under Article 23.1 and Article 23.2 of the Patent Law.

Key of Decision:
“Normal consumers”, as the subject of determination in the examination of design patents, are not equal to average consumers in real life. Instead, such consumers have knowledge of corresponding state of the art and cognitive competence, common awareness of the design and the commonly used design methods of same or similar types of products prior to the filing date, and basic capability of interpreting drawings. They can also revivify six views to a three-dimensional product, and use common design methods to make simple designs.
Design patents shall be examined from the perspective of a normal consumer by using the status of prior designs as the objective frame of reference. An examiner shall stick to the principal of “overall observation and comprehensive determination”, and comprehensively observe the similarities and differences between the disputed design and the reference design. On that basis, one shall also comprehensively consider the weights of influences of the various design features on the overall visual effect based on the analysis of the status, design space, and innovative design features of the prior design. Only in this way can a reasonable conclusion be reached.

10. Request for Invalidating Design Patent “Sideboard (6102-173)”

Case Brief:
The petitioner Shanghai Mingxuan Furniture Co., Ltd. filed invalidation requests against a series of design patents owned by the patentee Beijing Royal Modern Furniture Co., Ltd., all of which involves network evidence on WeChat. This case is one of the series of related cases, involving the patent invalidation request concerning the disputed design with the patent number of 201430429543.6. After examination, the Board issued the No. 26912 invalidation decision and held the patent valid.

Key of Decision:
Due to features of network evidence, the determination of authenticity and transparency of network evidence generally requires the following factors: 1. credit, qualification and operation status of the network company, 2. management mechanism for publishing, revising and deleting messages, and 3. access for browsing.

In this case, WeChat is an instant messaging application released by Tencent Holdings Ltd. in 2001 for intelligent terminals. Tencent Holdings Ltd. is creditworthy, its system environment is relatively stable and reliable, and its management mechanism is relatively standardized. For WeChat public platforms, upon acquiring an official account, the administrator of the account is responsible for information publication, but the time of publication is generated automatically by the system. Once an article is published via the official account, the administrator cannot do anything besides deleting it. Once an article is published on a public platform, all subscribers of an official account can browse it. Meanwhile, the search function of WeChat by search engine enables the subscriber to find and browse the actual content. Based on the above considerations, without adequate evidence to the contrary, the authenticity of the article published by the official account and the time of publication can be determined, and the publication is thought to be that in the sense of the patent law.