CPA Successfully Represents German Client in Markush Claims Case 

 

China Patent Agent (H.K.) Ltd. (CPA) recently represented successfully a German chemical and pharma company in appeal against the ruling of Patent Reexamination Board (PRB) in an administrative dispute case. The final decision of the case was delivered by Beijing Higher People's Court.
 
The central issue of the case concerns amendments to Markush claims**. CPA was entrusted by the client to file an appeal with Beijing First Intermediate People's Court upon PRB's ruling of disallowing amendments to Markush claims in invalidation process. In July 2013 the court in trial issued a decision revoking said ruling.
 
This is believed to be the first ever court decision in mainland China that permits amendments to Markush-type claims in invalidation process. Prior to that, PRB generally disapproved amendments to the claims by deleting elements from a claimed Markush group in the invalidation process, though these amendments may in some cases help compliance with the requirement on patentability.

 

** Markush claims, named after Eugene Markush, the first inventor to use them successfully in a U.S. patent, are commonly used in chemistry related patent applications. The artificial group where multiple functionally equivalent chemical entities are recited as alternatives in the claims is referred to as a Markush group.