INSIGHTS In recent patent invalidation decisions issued by the China National Intellectual Property Administration (CNIPA), several key insights and considerations have emerged, shedding light on important aspects of patent law and practice. These decisions have far-reaching implications for both patent applicants and challengers. Below, we delve into five significant takeaways from these cases, providing valuable guidance for navigating the patent law and procedure in China.
1. Reaffirming sufficient disclosure of the description, including the alleged technical effect, could be reproduced
In Invalidation Decision No. 563247 and Invalidation Decision No. 562899 (Petitioner: CALB, Patent Owner: CATL) issued on July 31, 2023, the China National Intellectual Property Administration (CNIPA) declared both patents entirely invalid due to insufficient disclosure in the description. These patents were involved in civil proceedings in which the patentee claimed high damages; thus, these invalidation decisions will likely go through administrative litigations and still need to be in effect. However, we can still learn from the invalidation decision.
During the invalidation procedures, the patent owner mainly argued that the claims sought to protect are product claims (i.e., a positive electrode piece and a lithium-ion battery), and the description has elaborated information on battery manufacturing methods and performance testing methods and provides multiple examples and comparative examples, such that the disclosure satisfies the requirement of sufficient disclosure. They contend that the absence of process data doesn't impede those skilled in the field from implementing the patent. However, such arguments did not persuade the collegiate panel of the CNIPA. The panel pointed out that when the empirical model in the technical solution of the invention must rely on experimental for its establishment, complete disclosure in the description requires more than the ability to manufacture the product and achieve the expected results. It is also necessary to describe experimental process data and effect measurement methods.
Therefore, applicants dealing with patent applications closely related to experimental data should comprehensively disclose the experimental processes in the description. The description should encompass intermediate process data, critical experimental conditions, essential measurement methods, and typical charts illustrating experimental results. Such thoroughness can better prepare patent holders to address challenges related to insufficient disclosure of the description during subsequent patent enforcement procedures.
2. Conventional technical means do not necessarily fall under common knowledge in the art
In Invalidation Decision No. 441001 (First Petitioner: BOSE, Second Petitioner: VARTA, Patent Owner: EVE Energy) issued on January 31, 2023, the collegiate panel outlined the criteria for determining whether the conventional technical means can be considered part of common knowledge in the art.
The determination of common knowledge in the art relies on more than whether a technical means belongs to a conventional technical means used by a person skilled in the art. It also depends on the following factors:
Conventional technical means may not automatically be categorized as common knowledge in the art. A thorough analysis is required in each case to determine whether these means fall within common knowledge.
Those challenging patents' validity should provide a comprehensive argument demonstrating the broad recognition of the technical problem, the wide application of the technical means, and the predictability of the technical outcomes. Conversely, applicants or patent owners can present reasons based on these three aspects to assert that a particular technical means does not qualify as common knowledge in the art.
3. Examination criteria of inventiveness remain case-by-case
In Invalidation Decision No. 60288 (Petitioner: Samsung (China) Investment Co., Ltd., Patent Owner: China IWNCOMM Co., Ltd.) issued on January 11, 2023, the collegiate panel recognized that the execution entities for the access control method concerning claim 1 are the user and the access point, while the access control method described in the closest prior art reference, as outlined in the comparative document, involves two STAs as the execution entities. This distinguishing feature is not considered common knowledge in the art.
In Invalidation Decision No. 560238 (First Petitioner: Xiaomi, Second Petitioner: OPPO, Patent Owner: Ultra HD Coding Co., Ltd.) issued on March 14, 2023, the collegiate panel highlighted that when addressing the smoothing of gain attenuation for echoes, as disclosed in comparative document 4, and the difference in the smoothing of the time-domain envelope of non-transient signals between claim 1 and comparative document 1, comparative document 4 offers clear technical insights into this distinguishing feature.
After studying the two cases, it was underscored that inventiveness examination criteria are closely tied to the specific technical details of the particular case, the technical field involved, and how detailed the cited reference documents disclose. As a result, judgments regarding inventiveness carry a vital element of case-specificity.
When evaluating inventiveness, it's crucial to approach it from the perspective of the person skilled in the art. However, persons skilled in the art are hypothetical individuals created to apply standardized examination criteria. It's important to note that examiners can't precisely match the knowledge and abilities of these hypothetical individuals but can only come close.
Furthermore, the Guidelines for Patent Examination stipulate that, especially when making determinations about non-obviousness, a logical analysis, reasoning, or limited experimentation should be conducted from the viewpoint of the person skilled in the art. However, it's worth mentioning that the interpretation and application of terms like "logical" and "limited" may vary depending on the specific case and the individual conducting the assessment. Consequently, assessments of inventiveness inherently involve some level of subjectivity. In practical terms, during inventiveness assessments, it's vital to strictly adhere to the inventiveness assessment methods outlined in the Examination Guidelines and avoid taking "external" factors into account, such as whether a case is involved in litigation, the nature of the parties involved (whether they are corporate or individual), or the size of the parties' companies.
4. The requirement for how to amend claims has been unified
In Invalidation Decision No. 57812 (Petitioner: Jinzhou Halla Electrical Equipment Co., Ltd., Patent Owner: Valeo Electrical Equipment Company) issued on August 17, 2022, the collegiate panel pointed out that a restrictive amendment to a claim shall be:
(1) By incorporating one or more technical features from other claims in the original patent document into the claims intended for modification, a new claim is generated with a narrower scope of protection. This new claim supplants the original claim, rendering the original claim null and void.
(2) The quantity of claims after amendment should not exceed the expected number compared to the original set of claims; and
(3) Generally, one cannot add or rewrite existing claims to establish a new set of claims.
In invalidation proceedings, amending claims serves the dual purpose of enhancing invention protection and fostering innovation. However, it's crucial to balance these objectives with the need for transparency in claim presentation. Unlike the amendment criteria for substantive examination and reexamination processes, post-grant procedures prioritize safeguarding the public's expected interests. Therefore, the standards for claim transparency should be more stringent.
5. The "directly and unambiguously derived by the person skilled in the art" standard remains rigorous
In Invalidation Decision No. 57428 (Petitioner: OPPO, Patent Owner: Nokia) issued on July 26, 2022, the collegiate panel pointed out that for a priority claim to be valid in subsequent applications, the person skilled in the art should directly and unambiguously derive the technical solutions by information given in the previous application. For example, the previous application provides a broad overview of technical features without enabling a person skilled in the art to deduce the detailed technical features presented in the subsequent application. In that case, the subsequent application cannot assert priority based on the previous application. Note that such examination standard also applies to voluntary amendments to claims and descriptions.
We reviewed multiple invalidation decisions related to priority and found that the examination criteria in most of these decisions were consistent with the above standard. While some scholars argue that this standard may be too rigid and should be reconsidered, the examination criteria regarding this issue have remained the same. Therefore, patent attorneys should continue to apply a rigorous examination standard when preparing patent application documents and providing analysis opinions on such matters.
Conclusion
In summary, recent patent invalidation decisions from CNIPA have highlighted important lessons for both patent applicants and challengers. These insights cover the need for comprehensive disclosure in description, the distinction between conventional means and common knowledge, the case-specific nature of inventiveness assessments, the claim amendment manners in invalidation proceedings, and the rigorous standard for priority and specification amendments. These takeaways offer valuable guidance for navigating the complex realm of patent law and practice in China.
Author: Zhenxian Zhang
With over a decade of extensive experience in patent practice, Zhenxian has amassed a wealth of knowledge in patent litigation, invalidation, search and analysis, consulting, and applications. He has successfully represented renowned companies such as OPPO, Xiaomi, ZTE, Midea, Baidu, BOE, and others in handling numerous cases involving patent invalidation, patent administrative litigation, and patent infringement litigation. Contact Zhenxian at zhenxian.zhang@peiweilaw.com.
* The article is prepared by the lawyer at Peiwei Law, a strategic alliance of PurpleVine IP in China. The article is authorized by Peiwei Law to publish on PurpleVine IP Group’s platform.
