CPA Successfully Represents European Clients on Series of Patent Invalidation Cases
We are glad to report that China Patent Agent (H.K.) Ltd. (CPA) recently won on behalf of its European clients three patent administrative cases heard respectively before the Beijing Higher People's Court, all of which successfully overturned the decisions of invalidation issued by the Patent Reexamination Board (PRB). The cases have been remanded to PRB for reexamination.
The said three cases related to the application of Article 33 of the Chinese Patent Law in patent examination practice, an issue much discussed within the industry over recent years. According to Article 33, amendments to patent application documents may not exceed the scope of disclosure in the original description and claims.
PRB's invalidation decisions were based on the grounds that although the essential technical features of the divisional applications were contained in different parts of the respective parent applications, the technical solutions of the divisional applications, however, were not expressly recited in the embodiments of the parent applications. The said technical solutions were regarded as new technical solutions derived from reorganised technical features subsequent to the filing date, thus exceeding the scope of the original disclosure. These invalidation decisions were upheld by the court of first instance.
In the second-instance trials, CPA successfully represented its clients. The said invalidation decisions were revoked by the Beijing Higher People's Court, which deemed that in accordance with the recitations in the description of the subject parent applications, reasonable combinations of light emitting materials and optional substrates were allowed. Moreover, there is no provision in the Patent Law, Implementing Regulations of the Patent Law, and Guidelines for Patent Examination that the description must list all existent embodiments in an exhaustive manner. As such, reasonable generalisation by the applicants should be permitted.
This second-instance rulings of the cases certainly have bearing on the development of Article 33 with respect to the determination of whether an amendment has exceeded the scope of the original disclosure, which in turn may influence the manner of Chinese patent application drafting.
