ADMINISTRATIVE PATENT CASES

China IP,[Patent]

Retrial Case of Administrative Dispute over Invention Patent Invalidity
Case No.: (2014)Xing Ti Zi No. 8
[Synopsis]
On July 8, 1996, WARNER-LAMBERT COMPANY LLC (LAMBERT) applied for the invention patent titled “crystal[R- (R*, R*)]-2-(4- fluoro-phenyl)-β, δ-dyhydroxy-5-(1-methyl ethyl)- 3-phenyl-4-[(phenylamino) carbonyl]-1H-pyrrole-1-heptylic acid hemicalcium salt” (the patent involved in this case) and was granted the patent (patent No. 96195564.3) on July 10, 2002. The subject matter of the patent claim 1 is Type-I crystal atorvastatin hemicalcium trihydrate containing 1-8 mole water, whose characteristic is defined using an X-ray powder diffraction pattern (XPRD). Regarding the patent involved in this case, Beijing Jialin Pharmaceutical Co., Ltd. (Jialin) and Zhang Chu separately requested the Patent Re-examination Board of SIPO (Patent Re-examination Board) to make an announcement of invalidation. After review, the Patent Reexamination Board decided on the review of the request for announcement of invalidation (Decision No. 13582) on June 17, 2009, declaring the patent invalid because the patent involved in this case didn’t conform with the Paragraph 3 of Article 26 of the Patent Law. Main reasons include: 1. In the specification, there is no qualitative or quantitative data demonstrating that Type-I crystal atorvastatin hemicalcium trihydrate containing 1-8 mole(s) of water (3-mole preferred). Based on the preparation procedures and XPRD data and spectrogram for representation of crystal shape of the product, it is unable to speculate that the water content of the product is 1-8 mole(s) (or 3 moles).

Therefore, technicians specialized in this field are unable to determine the product protected in the patent claims according to the information disclosed in the specification. 2. Technicians specialized in this field are unable to know how to prepare the Type-I crystal atorvastatin hemicalcium trihydrate containing 1-8 mole(s) of water (3-mole preferred) protected by the patent involved in this case according to the information disclosed in the specification. LAMBERT was not satisfied with the Decision and brought an administrative suit. However, the Beijing First Intermediate People’s Court sustained the Decision No. 13582.LAMBERT appealed against the decision to the Beijing Higher People’s Court. In the second instance, the Beijing Higher People’s Court held that the technical issue addressed by this invention is to obtain the crystalline form of atorvastatin (specifically, Type-I crystal atorvastatin) to address the problem that amorphous atorvastatin is not suitable for filtration and drying in mass production. As the Patent Re-examination Board neither identified the technical issue to be addressed by the invention nor defined the chemical and physical property parameters related to the technical issue to be addressed, it was improper for the Patent Re-examination Board to decide that the patent involved didn’t conform with the Paragraph 3 of Article 26 of the Patent Law. The Beijing Higher People’s Court decided abrogation of judgment of first-instance trial and Decision No. 13582 and ordered the Patent Re-examination Board to change the decision. Both the Patent Re-examination Board and Jialin were not satisfied with the second-instance judgment and applied to the Supreme People’s Court for retrial.The Supreme People’s Court decided to retrial the suit and on April 16, 2015 judged that second-instance judgment shall be dismissed and the first-instance judgment shall be sustained.

[Comment]
This case involves the judgment of whether product specification is adequately disclosed, it is a typical case related to the application of law. The technical issue involved in this case is complicated. Also, the patent is of great economic value. Therefore, the trial of this case aroused wide concern at home and abroad. The Supreme People's Court held that the specification of chemical invention shall indicate the identification, preparation and intended use of chemical products. To be specific, if the invention is a kind of chemical, the specification shall provide the chemical structure of such chemical and chemical and physical property parameters related to the technical issues to be addressed by the invention, enabling technicians in this field to identify such chemical compound. Also, the specification shall also disclose a method of preparation for technicians to perform. From the perspective of the identification and preparation of chemicals, the specification of the patent didn’t conform with the Paragraph 3 of Article 26 of the Patent Law. Besides, this case clarified the relation between the determination of technical issue to be addressed by the invention and judgment of the adequate disclosure of the specification and also defined whether the empirical evidences submitted after the date of application can be used to support the adequate disclosure of the specification. This case is of great legal and practical significance in establishing legal criteria, guiding the preparation of specifications and so on.

Case 13
Administrative Case of Invention Patent Invalidity of “A Kind of Chat Robot System”
Second Instance Case No.: (2014) Gao Xing (Zhi) Zhong Zi No. 2935
[Synopsis]
 Zhizhen Corporation is the patentee of a patent in the name of “A Kind of Chat Robot System” (the patent). Apple Inc.made a request for invalidation for the patent to the Patent Reexamination Board on November 19, 2012. The Patent Reexamination Board made a review Decision No. 21307 for the request for invalidation on September 3, 2013, which determined that the patent was in line with the Patent Law and the relevant provisions of the Implementing Regulations of Patent Law, so that the patent was maintained as valid. Apple refused to accept it and filed the administrative proceedings.

The court held that realization of the game features had been a form of expression in anthropomorphic realization rather than some additional anthropomorphic features according to the records in the patent specification. The game features had to be the essential technical features described in the patent Claim 1. However, the patent specification described only the idea of having a game server and realization of interaction in the game, but nothing about how to connect the game server with the other components of the chat robot. In addition, according to the records and instructions in the specification, if the user entered statements related to the game in the chat robot system of the patent, the statements could only be judged as natural or format statements even if they could be analyzed and processed by the filter, so that the statements were sent to a artificial intelligence server or a query server, which were impossible to be sent to the game server. Thus, the patent specification failed to fully disclose how to achieve the game features defined in the patent Claim 1, which was a violation of the provisions of Paragraph 3 of Article 26 of the Patent Law, and the patent should be declared as invalid therefore. As the patent specification failed to fully disclose how to achieve the game features, which only described a game server in the form without further explanation of the components and working mechanism consisting the game server. The “game server” features were not supported by the relevant specification. The patent Claim 1 was not compliant with the provisions of Paragraph 4 of Article 26 of the Patent Law. Since the patent Claim 1 did not clearly define what kind of statements would be forwarded to the game server, and it was also difficult to interpret in the specification, the connection between the filter and the three servers was not clear, so that the patent Claim 1 did not meet the provisions of Paragraph 1 of Article 20 of the Rules for Implementation of the Patent Law, which should be declared as invalid. The Patent Reexamination Board’s decision to maintain the patent valid was wrong and should be corrected. The court made a judgment to revoke the defendant decision and that the Patent Reexamination Board should make a decision again.

[Comment]
The core value of the patent system is to “open” for “protection”, which means that a patentee discloses his technical proposal for exclusive rights for his patented creation and inventions. The claim of rights and the specification are the most important two documents when applying for a patent. The specification is a detailed technical document that an applicant discloses his creation and inventions providing the basis for determining claims, which is used to interpret the claims and the foundation of entire patent. The effect of claims of rights is that the patentee discloses his creation and inventions in the specification to request a scope of protection.According to relevant laws and regulations for patent licensing terms in China, the patent specification should be made clear and complete instructions for the creation and inventions as long as the skilled in the art can carry it out. The claims of rights should be based on the specification, illustrating the scope of the patent protection requested. A patent document in compliance with the conditions of authorization must satisfy the above conditions. In spite of a good technology innovation, it may be rejected or declared as invalid after obtaining authorization in the authorization phase if the patent application documents have not been written well. In recent years, there are frequent computer software patent disputes.The case plays an important role in patent protection for computer software, which is a demonstration for identification of patent validity, especially for the Paragraph 3 and 4 of Article 26 of the Patent Law whose relation between has been explored and made clear in a useful way. The case is in favor of harmonization of judgment standards for patent authorization and identification.

(Translated by Liu Xiaoyu, Liu Juan)

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