CPA Wins Supreme Court Patent Retrial Case & Attains Full Victory in Administrative Proceedings on Behalf of German Client

China Patent Agent (H.K.) Ltd. (CPA) recently won on behalf of a German client a patent administrative retrial case following Supreme People's Court of China (SPC)'s decision of denying the request for retrial. Along with the winning at first and second instances, the case was concluded with complete victory through the administrative proceedings.

The subject patent application was initially filed with the Chinese Patent Office in 2004, but was objected on the ground of lacking novelty. Although amendments were then made by the applicant according to the examination opinions, the application was rejected as the amended contents were found to have gone beyond the protection scope of the original application. In response to this, the applicant filed a request for reexamination with PRB together with further amendments to the claims. The PRB approved the amendments, however, it raised the defect of lacking inventiveness and upheld the rejection decision of the Patent Office on that new ground.

In respect of PRB's rejection decision, CPA represented the client to initiate an administrative lawsuit, pointing to both substantive and procedural flaws of the decision. In particular about the procedure, CPA's attorneys argued that PRB had cited a new ground not mentioned in the rejection decision of the Patent Office, thereby exceeding the scope of ex-officio examination as stipulated in the Guidelines for Patent Examination. Both the first- and second-instance courts ruled in favour of our arguments and revoked PRB's reexamination decision.  
To this, PRB filed a petition to SPC for retrial of the case. Recently SPC has issued its decision and found that it is not justified to extend the interpretation of obvious substantive defect stipulated in the Guidelines to cover inventiveness. Furthermore, with no inventiveness assessment in the rejection decision of the Patent Office and the ground of inventiveness not within the scope of obvious substantive defect, the case is not subject to ex-officio examination by PRB. For these reasons, PRB's request for retrial of the case was denied.
We are glad that our attorneys' efforts were able to help the client in pursuing its IP rights, and actually the above-mentioned second-instance case was commended as one of the 50 exemplary cases of IP judicial protection in China of 2012. Likewise, we believe that this supreme court ruling, which touched upon the determination of whether  inventiveness ground falls within the scope of obvious substantive defect as well as PRB's ex-officio examination in practice, should also serve as important reference for patent applicants in facing similar issues in future.