Recently, our firm has secured the win in the first instance for our client- the plaintiff- in an administrative litigation against an invalidation decision that upheld the validity of an invention patent. In the case, the Beijing Intellectual Property Court (BIPC) has made the first instance judgment, in which it found that the amendment of the granted claims went beyond the scope of the original application document and did not comply with the provisions of Article 33 of the Patent Law. Based on this, the BIPC revoked the invalidation decision of the CNIPA and ordered the defendant (i.e. the CNIPA) to make a new decision.
The appealed invalidation decision held that the defects in the granted patent claims caused by the applicant himself were in accordance with the situation prescribed in Article 33 of the Patent Law. Specifically, the grounds to uphold the validity included that the granted claims were “covered by the technical solution of the tablets in the original scheme, even though they were not explicitly documented in the original document”; and that “the significance of the patent system is to effectively protect inventions, encourage innovation and promote the disclosure and dissemination of technology, thereby effectively contributing to economic development, while at the same time striking a balance between the interests of the public and those of the patentee. If a granted patent is found to be defective in the subsequent procedure and the defect may be caused by the applicant himself, resulting in public disclosure with deviation, and at this time, comprehensive consideration should be made to determine whether there are technological improvements in the invention that can promote social development and scientific and technological progress, and whether granting a patent protection will be in line with the public interests”.
During the course of the litigation, our firm, on behalf of the plaintiff, fully articulated the defendant’s erroneous findings of fact and incorrect application of law in the sued decision. We contended that the defendant’s examination standard on the amendment going beyond the scope exceeded the boundaries set by the patent law and patent examination guidelines; Article 33 of the Patent Law in fact encompasses the “first to file principle”. If a violation is likely to result in unjust consequences for other applicants or the public, it is important to ensure that the “balance between the interests of the public and the patentee” remains within the boundaries of the law, rather than undermining the existing legal framework. Applying a more lenient examination standard to amendments that go beyond the scope for an applicant who made a mistake can be seen as a penalty in a disguised way imposed on applicants who have not made a mistake.
Our claim was supported by the above-mentioned first instance judgment. The judgment held that allowing amendments going beyond the scope of the original specification and claims would violate the “first-to-file principle” and result in unjust consequences for other applicants or the public. In the event that a granted patent is found to have defects in later proceedings, and if these defects might be traced back to the patentee himself, it is unfair for the public to bear the adverse consequences brought by the public disclosure with deviation. It is important to thoroughly consider the technical contribution made by the patentee, but this should never be used as a ground to violate Article 33 of the Patent Law, as it ultimately undermines the public interest.
The appealed invalidation decision held that the defects in the granted patent claims caused by the applicant himself were in accordance with the situation prescribed in Article 33 of the Patent Law. Specifically, the grounds to uphold the validity included that the granted claims were “covered by the technical solution of the tablets in the original scheme, even though they were not explicitly documented in the original document”; and that “the significance of the patent system is to effectively protect inventions, encourage innovation and promote the disclosure and dissemination of technology, thereby effectively contributing to economic development, while at the same time striking a balance between the interests of the public and those of the patentee. If a granted patent is found to be defective in the subsequent procedure and the defect may be caused by the applicant himself, resulting in public disclosure with deviation, and at this time, comprehensive consideration should be made to determine whether there are technological improvements in the invention that can promote social development and scientific and technological progress, and whether granting a patent protection will be in line with the public interests”.
During the course of the litigation, our firm, on behalf of the plaintiff, fully articulated the defendant’s erroneous findings of fact and incorrect application of law in the sued decision. We contended that the defendant’s examination standard on the amendment going beyond the scope exceeded the boundaries set by the patent law and patent examination guidelines; Article 33 of the Patent Law in fact encompasses the “first to file principle”. If a violation is likely to result in unjust consequences for other applicants or the public, it is important to ensure that the “balance between the interests of the public and the patentee” remains within the boundaries of the law, rather than undermining the existing legal framework. Applying a more lenient examination standard to amendments that go beyond the scope for an applicant who made a mistake can be seen as a penalty in a disguised way imposed on applicants who have not made a mistake.
Our claim was supported by the above-mentioned first instance judgment. The judgment held that allowing amendments going beyond the scope of the original specification and claims would violate the “first-to-file principle” and result in unjust consequences for other applicants or the public. In the event that a granted patent is found to have defects in later proceedings, and if these defects might be traced back to the patentee himself, it is unfair for the public to bear the adverse consequences brought by the public disclosure with deviation. It is important to thoroughly consider the technical contribution made by the patentee, but this should never be used as a ground to violate Article 33 of the Patent Law, as it ultimately undermines the public interest.