Written by: Cheng Cheng (Intellectual Property)
Among the top 10 cases of patent reexamination and invalidation in 2021 released by the China National Intellectual Property Administration (CNIPA) on April 26, 2022, four are patent invalidation cases relating to the mechanical field. Those cases were selected as the top 10 cases because of their great social impact and high social attention. The decisions on those specific cases by the Reexamination and Invalidation Department of the CNIPA have a greater impact on future patent examination as to substance and invalidation, which are enlightening and informative in similar cases. We briefly describe these cases and their typical implications here.
I. Invalidation case in connection with “Left aurcle plugging device” (Invalidation Decision No.52508)
Patentee: Company X
Patent No.: ZL201310567987.0
Conclusion: the subject patent is declared invalid
This case is subjected to the provisions of the law on no loss of novelty grace period. The filing date of the subject patent is November 14, 2013.
The focus of the dispute in this case is whether Exhibit 1 can prevent the subject patent from enjoying the grace period concerning novelty. Exhibit 1 is a foreign language journal article published online on July 18, 2013, and its publication date is within six months before the date of filing of the subject patent.
Article 24 of the Chinese Patent Law provides,
The invention-creation applying for Patents shall not lose its novelty in any of the following circumstances within six months before the date of filing:
- where it was first exhibited at an international exhibition sponsored or recognized by the Chinese Government;
- where it was first made public at a prescribed academic or technological meeting;
- where it was disclosed by any person without the consent of the applicant.
With respect to Article 26.3 of the Chinese patent Law, the Chinese Guidelines for Examination at Part I, Chapter 1, Section 6.3.3 provides:
“The disclosure made by any other person without the consent of the applicant includes the disclosure of the contents of the an invention-creation by another person for his failure to comply with the explicit or implicit confidentiality agreement, and disclosure caused after another person gets to know the contents of an invention-creation from the inventor or applicant by means of coercion, fraud or espionage.
Where an invention-creation for which a patent is applied for is disclosed by another person without the consent of the applicant within sixth months before the date of filing, if the applicant knows about it before the date of filing, the applicant shall make a declaration in the request while filing the application, and submit certifying materials within two months from the filing date. If the applicant knows about the matter after date of filing, he shall submit a declaration to request for the grace period concerning novelty with certifying materials within two months after he knows about it. The examiner may, when necessary, require the applicant to submit the relevant certifying materials within the specified time limit.”
It can be seen that the grace period concerning novelty is an appropriate grace period given to the applicant according to the first-to-file system when the applicant’s invention-creation is disclosed in advance due to special circumstances. This grace period concerning novelty is granted if the applicant submits the declaration and exhibits as required.
The patentee claimed that he discovered Exhibit 1 related to the technology of the subject patent after receiving the Notification of Acceptance of Request for Invalidation, and submitted a declaration to request for the grace period concerning novelty within two months from the date of receipt of the notification. The declaration complies with the two-month period and should therefore enjoy the grace period concerning novelty. In addition, the patentee believed that “knowing” in the grace period concerning novelty should be judged according to the criteria on novelty as provided in Article 22.2 of the Chinese Patent Law.
The petitioner claimed that the exhibit shows that when the patentee filed the application for the relevant award with the local government in 2020 (declared on July 15, 2020), the Exhibit 1 involved in this case was used as one of the materials for application; therefore, it was presumed that July 15, 2020 is the date when the patentee should have known the existence of Exhibit 1, but the date when the patentee actually filed the declaration to request for the grace period concerning novelty was after the two-month period for filing the “grace period concerning novelty”, thus the subject patent should not enjoy the grace period.
The panel supported the petitioner’s claim that the petitioner’s exhibit could prove that the patentee should have known the existence and publication of Exhibit 1 no later than July 15, 2020 but failed to submit a declaration to request for the grace period concerning novelty, and thus, the subject patent should not enjoy the grace period concerning novelty. In addition, regarding the “knowing”, as provided by the patentee, although the expression “novelty” is used in both the grace period concerning and the novelty criteria, the evaluation criteria for the two are different. The reason is that: the legislative purpose of Article 24 of the Patent Law on the “grace period concerning novelty” is not to lose protection due to negligent acts of others, which is not based on the necessary condition of lacking novelty or and inventive step under Article 22 of the Chinese Patent Law.
The patentee also claimed that he only knew the existence of Exhibit 1 after it was granted, and the provisions of Article 24.3 of the Chinese Patent Law are targeted to the patent applicant, rather than the patentee. In this regard, the panel believes that the expression in Article 24 of the Patent Law is intended to address the situation of the disclosure behavior and non-consensual behavior of others before the filing date, and based on the original meaning of the article, it is not only the obligation of the applicant at the application stage but also the obligation of the patentee after the patent application has been granted.
In the end, the panel found that: the patentee did not submit to the CNIPA a declaration to request for the grace period concerning novelty within two months after knowing the existence of Exhibit 1; in the case, Exhibit 1 formulates the prior art documents undermining the novelty or inventive step of the subject patent; therefore, the subject patent is declared totally invalid.
To sum up, Article 24 of the Chinese Patent Law is intended to provide a remedy for inventions disclosed in a particular manner before the filing date, which is limited in terms of protection. Applicants or patentees should keep their invention-creations strictly confidential before filing a patent application, and should also fully understand the legal provisions on the “grace period concerning novelty”. Therefore, applicants or patentees should fulfill corresponding obligations timely in order to enjoying the rights as provided in Article 24 of the Chinese Patent Law. Once discovered that the invention has been disclosed by others without permission, the applicant or patentee should submit a corresponding declaration to request for the grace period concerning novelty as well as supporting materials attached thereto in a timely manner, to actively claim the rights and avoid huge loss caused by loss of relevant rights.
II. Request for Invalidation of Invention Patent Right of “Axial-flow windwheel” (Invalidation Decision No. 50181)
Patentee: Company G
Requester: Company Z
Patent number: ZL200710026747.4
Conclusion: the patent right is declared invalid
The subject patent relates to the structure of the axial-flow fan.
This case involves a number of focal issues, including determination of various types of exhibits, whether the publicly available products can be used for technical comparison, and what standard of proof should be adopted in the invalidation procedure.
- About disclosure by use
Patent invalidation cases relating to disclosure by use usually involve complicated, difficult issues such as the examination on effect of evidence, the sort-out of the purpose of proof, the integrity of the evidence chain, the determination and conclusions, and the like.
In this case, the petitioner claimed that a set of Exhibits 18-29 constituting an evidence chain includes not only publication exhibits such as patent documents, journal papers, etc., but also four documents respectively proving that the four wind turbine devices (wind turbines 1 to 4) constitute disclosures by use.
In response to the set of exhibits, the panel followed the principle of examination on the cases about disclosures by use. Based on the legal elements of a disclosure by use, the following matters should be determined: (a) whether there was any act of using a certain technology before the filing date, including selling, using, exhibiting, etc.; (b) where the facts of the act have been confirmed, whether the technology involved in the act carries substantive content that can be compared with the technical solution of the subject patent involved in the case; (c) whether the substantive technical content involved in the act is in a state of disclosure that the public could know if they desire to know; (d) whether the state of disclosure of the technical content exists before the filing date of the subject patent. In the case that the above four aspects are verified to be true, it can be determined that the relevant technical content constitutes the prior art due to disclosure by use. Conversely, if any of the above aspects cannot be verified, it cannot be concluded that the disclosure by use is established, and the concerned party who bears the burden of proof shall bear the adverse consequence.
Specifically for this case, the panel carried out: (a) the four air-conditioner sales facts proved by Exhibits 18-21 are all acts of using the wind turbine technology that exist before the filing date; (b) the wind turbine technologies involved in these four sales acts all relate to the substantive technical content; (c) the sales behaviors described above all render the technical solution carried by the wind turbines in the state of disclosure; (d) the above state of disclosure already existed on the day when the sales invoice was issued, and the date of disclosure is before the filing date of the subject patent. That is to say, the four air-conditioner sales facts in this case constitute the disclosure by use.
As a result, after summarizing all the facts provided by the petitioner, the panel determined the keynote of the examination, i.e., in this case, the sales fact of Windwheel 2 proved by Exhibit 18 should be used as the main fact for determining the disclosure by use, and Windwheel 2 should be used in this case. The measurement report of Exhibit 29 in combination with the sample of Windwheel 2 is used for technical comparison, and then the investigation and examination are carried out on this basis.
- About evidentiary effect of the unilaterally entrusted appraisal report
In this case, the petitioner has entrusted two measuring institutions to measure Windwheel 2 and issued corresponding measurement reports (Exhibit 27 and Exhibit 29).
The patentee did not recognize the validity of the above-mentioned appraisal reports issued by the appraisal agencies unilaterally entrusted by the petitioner, on the grounds that: the unilaterally entrusted appraisal in the patent invalidation request procedure is different from the judicial appraisal in the judicial procedure, and the measurement report of Exhibit 29 is not reliable.
In this regard, the panel opines that, in the absence of explicit provisions in the Chinese Guidelines for Examination, the examination shall be conducted with reference to the related provisions of the Civil Procedure Law. Regarding the appraisals issued by the unilaterally commissioned appraisal institutions, in accordance with the provisions of Article 41 of “Some Provisions of the Supreme People’s Court on Evidence in Civil Procedures (Revised in 2019)” (“when a party commissions an opinion on a specialized issue from a relevant institution or person on its own, if the other party has evidence or reasons that suffice for contradiction and moves for authentication, the people’s court shall grant the motion”), the Chinese Civil Procedure Law does not exclude the effect of this type of evidence. Therefore, the effect of such evidence cannot be denied where the other party does not present sufficient evidence to the contrary.
At last, the panel believed that Exhibit 27 and Exhibit 29 are basically the same in terms of measurement basis, method and results, and can be mutually confirmed. The panel further conducted an on-site inspection on the identification materials of Windwheel 2 and determined that Exhibit 29 had no obvious loopholes in terms of scientificity and accuracy. Moreover, the patentee did not specifically and clearly point out the obvious loopholes in the measurement reports, nor did he provide rebuttal exhibits. Therefore, the panel believes that the measurement reports of Exhibit 29 should be accepted.
- Comparison of the claims with the technology of the disclosure by use
The technical solution of the subject patent involves defining the structure of the axial-flow windwheel with custom parameters and equations. As far as technical comparison is concerned, a single prior art document published in a publication typically does not disclose all the parameter characteristics, and multiple prior art documents comprehensively covering those parameters may result in the problem that they cannot be combined. Therefore, many applicants prefer to use the prior art disclosed by use. However, this imposes a high requirement on the disclosure of the technical solution disclosed by use. That is, the act of using the disclosed technical solution should be conducted before the application date; the date of obtaining the evidence related to the technical solution should be after the grant; during this period, whether the technical solution has changed and the technical solution proved by the evidence in the record is identical to that previously disclosed by use should be verified.
In this case, the patentee claimed that: Windwheel 2 has been used for nearly 11 years, and it must have undergone severe deformation as a plastic product (6 rebuttal exhibits support this point); in Exhibit 29, the size of the deformed windwheel is measured; the data cannot reflect the technical solution in the state of prior disclosure, nor can it be used as the basis for technical comparison with the custom parameters and equations of the subject patent.
In this regard, the panel held that, according to the common knowledge of those skilled in the art on the deformation characteristics of plastic products, it is made clear that the plastic material used in Windwheel 2 is AS-GF20. After a review on the reference documents submitted by both parties as well as related background technologies, the panel confirmed that the plastic windwheel formed of this material has good dimensional stability, and the rebuttal exhibits submitted by the patentee only concern general discussion about deformation of plastic products, and are not enough to lead to the conclusion that Windwheel 2 is severely deformed, as claimed by the patentee. In addition, the collegial panel also analyzed many factors that affect the deformation of the windwheel product during the design, manufacture and use, carried out a systematic demonstration in view of the difficulty of both parties in collecting exhibit, the state of Windwheel 2 inspected on site, and the size ratio of the corresponding feature of the subject patent in the same direction, and the like, and ultimately determined that the relevant parameters contained in Exhibit 29 can be used as the basis for technical comparison.
To sum up, in the above cases, the examination practice on the disclosure by use is clearly shown, and rules for determining an evidentiary effect of a unilaterally entrusted appraisal report are interpreted. In addition, it is clarified in these cases that when technical comparison of product claims specified by parameters and equations is performed using measurement data of a disclosed product, the technical state of the product disclosed by use is determined in combination with the common knowledge of those skilled in the art from the perspective of the industry practice, the difficulty of proof and the like. Such cases provide reference examples for examinations on typical disputes of this type.