CPA's Winning Patent Case Elected Exemplary IPR Case of 2012

China Patent Agent (H.K.) Ltd. (CPA) is glad to report that a winning administrative case CPA handled on behalf of a foreign company was selected by the Supreme People's Court of China as one of the 50 Exemplary Intellectual Property Rights Protection Cases of 2012, further to another case of the firm relating to a US patent interference lawsuit on behalf of a Chinese enterprise being elected a major case of year 2012 earlier on.
The administrative case relates to an invention patent application filed in China by the CPA client. In the first office actions issued by the State Intellectual Property Office of China (SIPO) upon substantive examination of the application, the defect of lack of novelty was raised. In response to this the applicant made amendments to the claims, which, upon further examination, were found to have gone beyond the original scope of disclosure, thus failing to conform to the provision of Article 33 of the Chinese Patent Law. The application was rejected accordingly.
Dissatisfied with the examination result, the applicant filed a request for reexamination with the Patent Reexamination Board (PRB), accompanied by further amendments to the claims. The decision of PRB read that although the amendments to the claims satisfied Article 33 of the Chinese Patent Law, the application, however, lacked inventive step, and on this basis the original decision of rejection was upheld.
To deal with the case, CPA gathered a highly capable team of attorneys led by Mr. Wu Yuhe. As the central issue of the case pertains to whether it is legitimate to introduce the new ground, i.e. lack of inventive step, for rejection of the application at the stage of patent reexamination, the CPA attorney team focused their efforts on finding out whether such new ground falls within the scope of "obvious substantive defects”, a condition that would approve of the reexamination being conducted ex officio, rather than in a manner confined to the grounds and evidence on which the decision of rejection is based.
With substantial support for arguments resulted from CPA attorneys' diligent researches into relevant areas including statutory requirements of inventive step, legal basis for introducing new grounds at reexamination stage, scope of examination ex officio, and the principle of examination ex officio in practice, the court was convinced that the new ground relating to inventive step in the case did not fall within the scope of examination ex officio. As such the reexamination decision of upholding the decision of rejection was revoked.
The inclusion of this case as one of the exemplary cases of the year underscores the fact that apart from substantive requirements related to patentability, importance is also attached by the Chinese courts to the legitimacy of examination procedures in judicial review of patent grant determination, in this case it relates specifically to the concern about the exercise of authority by the administrative agencies according to principle of examination ex officio.