October 27, 2020

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October 27, 2020

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October 26, 2020

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China’s Supreme People’s Court Releases Provisions on Several Issues Concerning the Application of Law in the Trial of Administrative Cases Concerning Patent Grant and Confirmation

China’s Supreme People’s Court published on September 11, 2020 (effective September 12) the Provisions on Several Issues Concerning the Application of Law in the Trial of Administrative Cases Concerning Patent Grant and Confirmation (1) (最高人民法院关于审理专利授权确权行政案件适用法律若干问题的规定(一)).  The provisions clarify administrative litigation issues for Patent Reexamination Board decisions – both invalidations of granted patents and reexamination of finally rejected patent applications (similar to patent application appeals at the U.S. Patent & Trademark Office).

Claim Interpretation 

Articles 2 – 4 cover claim interpretation stating that the People’s Court shall define the terms of the claim based “on the usual meanings understood by those skilled in the technical field after reading the claims, descriptions and drawings. If the terms of the claims are clearly defined or illustrated in the specification and drawings, the definitions shall be followed. 

If the terms cannot be defined in accordance with the provisions of the preceding paragraph, the terms may be defined in conjunction with technical dictionaries, technical manuals, reference books, textbooks, national or industry technical standards, etc., commonly used by technicians in the technical field.”

Further, the People’s Court may “refer to relevant statements of the patentee that has been adopted by the effective judgment of the civil case of patent infringement when defining the terms of the claims in the administrative case of patent right confirmation.”

Grounds for Rejection/Invalidation 

Clarified grounds to support a decision to invalidate a patent application or affirm a final rejection of a patent application include, in Article 5, “violating the principle of good faith, fabricated or fabricated specific implementation methods, technical effects, data, charts and other relevant technical content in the specification and drawings, and relevant claims.”

Article 6 lists enablement as grounds to support a decision to invalidate/affirm a rejection.  Specifically, 

(1) The technical solution defined by the claims cannot be implemented;

(2) The implementation of the technical solution defined in the claims cannot solve the technical problem to be solved by the invention or utility model;

(3) It is confirmed that the technical solution defined in the claims can solve the technical problem to be solved by the invention or utility model, requiring excessive labor.

 

Article 7 addresses rejection of claims in invalidation/rejection appeals for clarity of the claims allowing rejections. The following are bases:

(1) The type of the subject of the invention is not clear;

(2) The meaning of the technical features in the claims cannot be reasonably determined;

(3) There are obvious contradictions between technical features [in the claims] and cannot be reasonably explained.

 

Article 8 addresses support stating that a rejection under Article 26 of the Patent Law is appropriate “when technical personnel in the technical field have read the specification and drawings and cannot obtain or reasonably summarize the technical solution defined by the claims on the filing date.”

 

Article 9 allows for rejection of functional claims (means for claims) when there is no specific implementation in the description and drawings to achieve the claimed function.

Experimental Data 

Article 10 permits drug patent applicants to submit supplementary experimental data after filing if used to prove compliance with Article 22(3) (usefulness) and Article 26(3) (enablement) of the Patent Law.  This is to comply with the Phase I Trade Agreement, which stated, “China shall allow drug patent applicants to rely on supplementary data in the patent examination procedures, patent reexamination procedures and judicial procedures to meet relevant requirements for patentability, including the requirements for sufficient disclosure and creativity.” Prior to this, in the patent examination procedure, the requirements for supplementary experimental data were relatively strict. The technical content and effects of the supplementary data had to be directly obtained from the original specification and drawings submitted on the filing date.

 

Designs

Invalidity and rejection can be based on “contradictions, missing or ambiguities in the pictures and photos of the design, which cause ordinary consumers to be unable to determine the design to be protected.”

The People’s Court shall determine lack of novelty based on when the overall visual effect of the design is the same or is in the substantively  the same or only partial subtle differences from the same or similar type of product.  Same or similar is determined based on the purpose of the design product. The Articles of the Provisions also cover design inspiration, unique visual effects, design space, and other issues.

Procedural Rules

Partial cancellation is possible under Article 24 and 25.  For example, if all claims were invalidated by the PRB, the People’s Court may partially reverse allowing some claims. The provisions also address violation of legal procedures, such as failure to recuse.

Evidence

A party’s submission that the technical feature of a claim is common knowledge or a design feature is a customary design may need to submit evidence to prove this.

A patent applicant or patentee can provide new evidence in an administrative case for patent authorization or invalidation to prove that the patent application should not be rejected or the patent right should remain valid.

However, the People’s Court will generally not accept new evidence from the invalidation petitioner except for:

(1) Proving the common knowledge or customary design that has been asserted in the examination procedure for the patent invalidation request;

(2) Proving the knowledge level and cognitive ability of technical personnel in the technical field or general consumers;

(3) Proving the design space of the patented product or the overall status of the existing design;

(4) Reinforcing the probative power of the evidence that has been adopted in the examination procedure of the patent invalidation request;

(5) Refuting the evidence provided by other parties in the lawsuit.

 

Evidence will not be accepted when the evidence was required to be provided to the PRB but was not provided without justifiable reasons.

© 2020 Schwegman, Lundberg & Woessner, P.A. All Rights Reserved.National Law Review, Volume X, Number 263
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About this Author

Aaron Wininger IP Attorney China Portfolio Development
Director of China Intellectual Property Law Practice Schwegman Lundberg & Woessner

Aaron Wininger is a Senior Attorney and Schwegman’s Director of China Intellectual Property. Aaron counsels both U.S. and Chinese companies on portfolio development and preparation of their patent applications and office action responses. He has worked with clients in the areas of software, networks (wired and wireless), lasers, medical devices, semiconductors and physics.

Aaron prosecutes both Chinese and U.S. trademarks. He has also drafted and prosecuted hundreds of U.S. and international patent applications in a broad spectrum of areas, including computer hardware and software,...

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