INSIGHTS 1. Introduction
In a legal dispute, Contemporary Amperex Technology Co. Limited (CATL) faced a challenge to its intellectual property rights from CALB. Eventually, two of CATL's patents were declared invalid, sparking discussions about intellectual property rights in the lithium-ion battery industry. The panel found the data of the inventions insufficient, needing more technical details and a solid foundation. Additionally, the patent holder failed to provide the sources and processes of the experimental data, raising doubts about its authenticity. Consequently, these inventions did not meet the requirements for sufficient disclosure in the specification. This article explores the connection between experimental data and insufficient disclosure issues of parameter inventions by analyzing legal provisions, invalidation decisions, and judicial cases.
2. Legal Basis for Sufficient Disclosure Terms
The legal basis for sufficient disclosure terms includes the Patent Law, Patent Examination Guidelines, and judicial interpretations:
From a Patent Law perspective, Article 26(3) requires the specification to provide a clear and complete description of the invention or utility model to enable a person skilled in the art to reproduce it, with drawings attached when necessary. The criteria for clarity and completeness are judged based on whether a skilled person can implement the invention.
The "Patent Examination Guidelines" provide specific standards for what constitutes "capable of being implemented" concerning the disclosure requirements:
Judicial interpretations, particularly those from the Supreme People's Court regarding administrative cases on patent grant and confirmation, clearly state that fabricating or falsifying the implementation methods, technical effects, and data in the specification violates the principle of good faith. The court should support claims that argue non-compliance with the law if the specification does not sufficiently disclose specific technical content, rendering the technical solution unworkable, incapable of solving the problem addressed by the invention or utility model, or requiring excessive effort.
3. Review of Past Cases Involving Insufficient Disclosure of Experimental Data in Parameter-Limited Technology Disclosures in the Lithium-Ion Battery Field
In the lithium-ion battery industry, some cases have involved parameter disclosures, with a few invalidated due to insufficient disclosure of experimental data. While these cases constitute a relatively low proportion of invalidations, they are still noteworthy.
In the following cases, the specifications did not provide sufficiently clear measurement conditions and methods, or the diversity of measurement methods led to different results. Consequently, a person skilled in the art found it challenging to determine the exact meaning of the parameters defined in the claim based on the content of the specifications, violating the principle of sufficient disclosure in the specification.
Case No. 46299: This case required the L* value of the blackness parameter to be below 15, but the specification did not provide a complete testing method and conditions, making accurate measurement impossible and violating the principle of sufficient disclosure.
Case No. 49079: The patent claims involved multiple separator characteristics, but the specification did not offer precise testing methods. Different testing conditions could yield different results, making it difficult for a person skilled in the art to ascertain the exact meanings of the parameters, violating the principle of sufficient disclosure.
Case No. 52971: While the parameters involved in this case were relatively conventional, the patent's manufacturing process was complex, with numerous parameters. The specification contained limited information, making it challenging to implement these parameters in practice accurately. Even if, as claimed by the patent holder, they could be implemented, the technical difficulty and effort required exceeded the capability of a person skilled in the art, leading to a finding of insufficient disclosure.
While the proportion of patents invalidated due to insufficient disclosure through parameters is relatively low in the lithium-ion battery field, it remains a topic of concern. These cases highlight the importance of sufficient disclosure, especially in parameter invention disclosures. When specifications do not provide clear measurement conditions and methods or present diverse testing methods, a person skilled in the art may find it impossible to implement the technology solutions defined in the patent claims. Consequently, these cases remind patent applicants to provide clear and complete measurement conditions and methods in the specification to ensure compliance with the standard of sufficient disclosure. Additionally, these cases underscore the applicability and strict enforcement of the principle of sufficient disclosure in significant cases.
4. Conclusion
Experimental results are essential to establish the validity of an invention. Therefore, the content disclosed by the specification must allow the person skilled in the art to replicate the invention based on experimental data. In electrochemistry, technical effects are typically validated through experimental data rather than solely on theoretical analysis. When theoretical knowledge is insufficient, experimental data becomes indispensable.
The key factor in determining the need for experimental data is the clarity of anticipated technical effects. Parameter invention technology disclosures require a case-by-case evaluation to determine whether providing experimental data is necessary. If the expected technical effects can be anticipated, experimental data may be optional. However, experimental data becomes necessary to support the claims if the effects are unclear.
Parameter invention disclosures require particular attention to measurement techniques, standards, and parameter precision. Factors such as the commonality of parameters, standardization of measurement techniques, clarity of measurement standards, and accuracy of parameters may influence whether experimental data needs to be provided and the level of detail required in the data. All the factors above will impact the validation of the patent based on Article 26.3 of the Patent Law.
Author
Helen Zhang - Partner
With over 10 years of experience in intellectual property, Helen is familiar with domestic intellectual property laws and regulations, particularly in patent litigation and invalidation. She handled over a hundred patent invalidation cases in mechanical engineering, optoelectronics, and chemistry. Helen has also been involved in nearly a hundred cases of patent administrative litigation and patent infringement litigation. Her clients included ZF Friedrichshafen AG, Swarovski, Taiwan Wonderland Group, Mitsubishi, Bose, and Norma. Before joining Peiwei Law, Helen was a senior lawyer in a well-known intellectual property agency in China and a law firm. She also served as an intellectual property manager in a photovoltaic group company. Contact Helen at helen.zhang@peiweilaw.com.
Suyuan Wang - Senior Associate
Suyuan has over 8 years of experience in the intellectual property industry, specializing in patent search, investigation, and analysis, patent portfolio management, patent invalidation, handling international intellectual property and competition law litigation disputes, and other related work. He previously led various patent analysis reports and completed nearly a hundred cases of patent invalidation and administrative litigation. Before joining Peiwei Law, Suyuan worked at China Aviation Industry Corporation, Beijing IP Sunshine, and Hylands Law Firm. He holds a Bachelor's degree in Engineering and a Master's in Law. Contact Suyuan at suyuan.wang@peiweilaw.com.
* The article is prepared by the lawyers at Peiwei Law, a strategic alliance of Purpelvine IP in China. The article is authorized by Peiwei Law to publish on Purplevine IP Group’s platform.
