CPA Wins Patent Administrative Cases on Behalf of Clients Domestically and in Japan 

China Patent Agent (H.K.) Ltd. (CPA) is glad to report that it recently won two cases relating to PCT application for invention patent on behalf of its clients, both involving patent administration litigation where the chance of winning is known to be relatively low. In one case, CPA represented a Chinese applicant to file a suit in Japan and for the other, a foreign applicant to litigate in China.

For the first case, the application in suit was rejected in 2008 by Japan Patent Office (JPO), and in May 2010 during the reexamination procedures the rejection decision was upheld. Seeing the flaw in JPO’s opinions regarding inventive step of the application and error in examination procedures, CPA advised its client to bring the case to court. The case was filed before the IP division of the Tokyo High Court in September 2010, and it took four hearings before a ruling was reached on 4 October 2011.

The court found violation of law in the reexamination procedures and absence of motivation for a person skilled in the art to combine prior art reference teachings. As a result, the conclusion of the reexamination decision that the application in suit lacked inventive step was untenable.

As it used to be rare for domestic applicants to lodge patent administrative lawsuits in Japan, and even rarer for such cases to win, the winning of this case is particularly encouraging news, for the applicant itself as well as for enterprises who plan to enter the Japanese market with their patented technologies.

As for the other patent administration case, the litigation was instituted before the people’s court in China on behalf of a foreign applicant in March 2011. The application in suit had been rejected by the State Intellectual Property Office (SIPO) of China in November 2008 on the ground of lacking novelty. The rejection decision was subsequently upheld by the Chinese Patent Reexamination Board (PRB) in December 2010.

The court found in September 2011 that the reexamination decision was based on incomplete understanding of the reference, and the conclusion that the claims of the application lacked novelty was not well-grounded, as the technical solution of the patent in suit should have been understood on the basis of the general understanding of a person skilled in the art in combination with the full texts of the description in the reference. The reexamination decision of the PRB was revoked as a consequence.