Case No.: (2023) SPC IP No. 913 (Invention Patent Grant Case concerning “Tissue Occlusion Agent”)
[Judgment Digest] The so-called “reference documents” introduced in the patent reexamination decision were not used to corroborate the content disclosed in the reference documents or common knowledge cited in the rejection decision, but rather to supplement for technical teachings not provided by the cited reference documents and common knowledge evidence. This practice essentially introduced new evidence beyond common knowledge and new evidence combination methods, constituting procedural illegality.
The patent application at issue relates to the use of a tissue occlusion agent in the preparation of hemostatic agents, specifically defining that the main component of the tissue occlusion agent is a peptide composed of IEIKIEIKIEIKI (abbreviated as IEIK-13) with 13 amino acids. The rejection decision asserted the obviousness of IEIK-13 based on Reference Document 1 disclosing peptides RADA and EAKA with 16 repeating units (i.e. RADA16 and EAKA 16) and common knowledge Evidence 1. During reexamination, the collegial panel introduced Reference Documents 1 and 2 on the basis of the rejection decision, opining that IEIK repeating units had been disclosed in prior art along with odd number IEIK-9, thereby rendering IEIK-13 obvious over Reference Document 1 and common knowledge.
In administrative litigation, we argued that: (1) the challenged decision improperly introduced new documents for assessing inventiveness during reexamination proceedings that had not been cited in substantive examination, constituting procedural illegality, thereby rendering the non- inventiveness determination unreasonable. Regrettably, the first-instance court rejected our arguments and recognized the defendant's claim that the "reference documents" merely corroborated the content disclosed in the reference document cited in the rejection decision.
In the appellate brief and second-instance trial, we not only contested the unreasonable determinations in both the challenged decision and first-instance judgment, but also conducted further analysis of the "reference documents" introduced in the challenged reexamination decision. We argued that the appellee's factual finding regarding the disclosure of IEIK-9 in the reference documents was erroneous, thereby leading the judges to render judgment without considering the disclosed content of the reference documents. Ultimately, the second-instance court fully supported our claims, holding that: (1) the "reference documents" introduced during reexamination were used to supplement for technical teachings not provided by the cited reference document and common knowledge evidence, essentially constituting the introduction of new evidence and evidence combination methods beyond common knowledge, in violation of procedural requirements; (2) the claimed invention could not be derived from Reference Document 1 and common knowledge evidence alone, thus possessing the inventive step. Consequently, the second-instance judgment revoked both the first-instance administrative judgment and the challenged reexamination decision, ordering the China National Intellectual Property Administration to issue a new examination decision.
[Judgment Digest] The so-called “reference documents” introduced in the patent reexamination decision were not used to corroborate the content disclosed in the reference documents or common knowledge cited in the rejection decision, but rather to supplement for technical teachings not provided by the cited reference documents and common knowledge evidence. This practice essentially introduced new evidence beyond common knowledge and new evidence combination methods, constituting procedural illegality.
The patent application at issue relates to the use of a tissue occlusion agent in the preparation of hemostatic agents, specifically defining that the main component of the tissue occlusion agent is a peptide composed of IEIKIEIKIEIKI (abbreviated as IEIK-13) with 13 amino acids. The rejection decision asserted the obviousness of IEIK-13 based on Reference Document 1 disclosing peptides RADA and EAKA with 16 repeating units (i.e. RADA16 and EAKA 16) and common knowledge Evidence 1. During reexamination, the collegial panel introduced Reference Documents 1 and 2 on the basis of the rejection decision, opining that IEIK repeating units had been disclosed in prior art along with odd number IEIK-9, thereby rendering IEIK-13 obvious over Reference Document 1 and common knowledge.
In administrative litigation, we argued that: (1) the challenged decision improperly introduced new documents for assessing inventiveness during reexamination proceedings that had not been cited in substantive examination, constituting procedural illegality, thereby rendering the non- inventiveness determination unreasonable. Regrettably, the first-instance court rejected our arguments and recognized the defendant's claim that the "reference documents" merely corroborated the content disclosed in the reference document cited in the rejection decision.
In the appellate brief and second-instance trial, we not only contested the unreasonable determinations in both the challenged decision and first-instance judgment, but also conducted further analysis of the "reference documents" introduced in the challenged reexamination decision. We argued that the appellee's factual finding regarding the disclosure of IEIK-9 in the reference documents was erroneous, thereby leading the judges to render judgment without considering the disclosed content of the reference documents. Ultimately, the second-instance court fully supported our claims, holding that: (1) the "reference documents" introduced during reexamination were used to supplement for technical teachings not provided by the cited reference document and common knowledge evidence, essentially constituting the introduction of new evidence and evidence combination methods beyond common knowledge, in violation of procedural requirements; (2) the claimed invention could not be derived from Reference Document 1 and common knowledge evidence alone, thus possessing the inventive step. Consequently, the second-instance judgment revoked both the first-instance administrative judgment and the challenged reexamination decision, ordering the China National Intellectual Property Administration to issue a new examination decision.