CPA Successfully Defends Two Patent Administrative Litigation Cases 

China Patent Agent (H.K.) Ltd. (CPA) is glad to announce that two patent cases it handled on behalf of a multinational conglomerate were awarded favourable decisions by Beijing Higher People’s Court. Both cases pertain to appeal of rejected patent applications in second-instance hearing before the Court.

The first case relates to a patent application for invention directed to recording material. The application was rejected on the ground that the claims did not clearly define the physical structure of the recording material. The view was upheld in both the reexamination ruling and the first-instance judgment.

In the second-instance hearing, CPA attorneys put forward the arguments including: the improvement brought by the invention did not lie in the micro-structure of the recording material; the technical terms in the claims were well-known and capable of clearly defining the structure of the recording material to enable implementation of the invention; definition of the structure in the claims was unnecessary and impracticable as micro-structure of the record carrier may vary with changes in the information carried. The aforesaid arguments were supported by the Court and the rejection decisions were revoked accordingly.

The other case relates to construction of the claims. In this case, the Patent Reexamination Board and the first-instance court referred merely to the earlier part of a claim in construing relevant technical feature, thus overlooking that a specific manner of implementation was defined later in the claim. As such, the technical feature was regarded as covering implementation manners not supported by the description.

The Court in trial accepted the arguments by CPA attorneys and concluded that the technical solution defined in the claim should be construed in context and based on the perspective of those skilled in the art; further, by defining a specific solution in the technical feature, a claim actually ruled out parallel technical solutions not defined in it. Accordingly, the rejection decisions of the case were also revoked.