CPA Wins for US Client an Administrative Case on Sufficiency of Disclosure
China Patent Agent (H.K.) Ltd. (CPA) recently won an administrative dispute case relating to sufficiency of disclosure on behalf of a reputed US pharmaceutical company.
CPA was entrusted by the client to appeal against a decision on reexamination of a patent application related to derivatives for medicinal uses. The application had been rejected by the Chinese Patent Office on the ground of insufficient disclosure due to unclearness about the active data objects in the patent specification. The decision of rejection was upheld by both the Patent Reexamination Board and the first-instance court on the same ground.
In the second-instance trial of the case before Beijing Higher People's Court, CPA attorneys Ms Tina Tai, Mr. Ke Ke and Mr. Wan Xuesong, after detailed analysis and discussion of the case with the participation of the client, put forward the argument that relevant data in the specification should be accepted and technical effect of the compounds of the application could be substantiated, with solid support of internal and external evidences as well as citation of SIPO's examination practice. Additionally, they had gathered extensive reference materials for presentation to the court.
The court in trial, after deliberation of the argument and evidences presented, held that those skilled in the art, based on the recitations of the specification, could at least see that the derivatives mentioned in the claims were all able to satisfy the minimum requirement on therapeutic activity, and as a result, the application had met the requirement set forth in the Guidelines for Examination on sufficient disclosure. Accordingly, the first-instance ruling and the reexamination decision were revoked and the case was remanded to Patent Reexamination Board for retrial.
