Written by: Cheng Cheng (Intellectual Property)
Among the top 10 cases of patent reexamination and invalidation in 2021 released by the China National Intellectual Property Administration (CNIPA) on April 26, 2022, five are patent invalidation cases relating to the mechanical field. Those cases were selected as the top 10 cases because of their great social impact and high social attention. The decisions on those specific cases by the Reexamination and Invalidation Department of the CNIPA have a greater impact on future patent examination as to substance and invalidation, which are enlightening and informative in similar cases. We briefly describe these cases and their typical implications here.
I.Invalidation case in connection with “Left aurcle plugging device” (Invalidation Decision No. 52508)
Patentee: Company X
Patent No.: ZL201310567987.0
Conclusion: the subject patent is declared invalid
The focus of the dispute in this case is whether the disclosure of Exhibit 1 can prevent the subject patent from enjoying the grace period concerning novelty. Exhibit 1 was published online on July 18, 2013, and its publication date is within six months before the date of filing (November 14, 2013) of the subject patent.
The petitioner claimed that the technical solutions of Claims 1, 3 and 4 of the subject patent were disclosed in Exhibit 1 (a foreign language journal article).
After amending the claims, the patentee submitted the “declaration to request for the grace period concerning novelty” on February 7, 2021, specifically stating that: the patentee did not realize the existence of Exhibit 1 relating to the subject patent until it received the request for invalidation; moreover, one of the authors of Exhibit 1 had a confidentiality agreement with the patentee, but the author published Exhibit 1 without complying with the confidentiality obligation, and the patentee did not know this, and thus the declaration complied with the “two-month period” provided in Item (3) of Article 24 of the Patent Law, and Exhibit 1 should not be taken as prior art.
The petitioner asserted that the patentee actively used Exhibit 1 as application materials for several Awards, and should have known the existence of Exhibit 1 before the date of filing.
Article 24 of the Chinese Patent Law provides,
“The invention-creation applying for Patents shall not lose its novelty in any of the following circumstances within six months before the date of filing:
(1) where it was first exhibited at an international exhibition sponsored or recognized by the Chinese Government;
(2) where it was first made public at a prescribed academic or technological meeting;
(3) where it was disclosed by any person without the consent of the applicant.”
With respect to above Item (3), the Guidelines for Patent Examination at Part I, Chapter 1, Section 6.3.3 provides:
“The disclosure made by any other person without the consent of the applicant includes the disclosure of the contents of the an invention-creation by another person for his failure to comply with the explicit or implicit confidentiality agreement, and disclosure caused after another person gets to know the contents of an invention-creation from the inventor or applicant by means of coercion, fraud or espionage.
Where an invention-creation for which a patent is applied for is disclosed by another person without the consent of the applicant within sixth months before the date of filing, if the applicant knows about it before the date of filing, the applicant shall make a declaration in the request while filing the application, and submit certifying materials within two months from the filing date. If the applicant knows about the matter after date of filing, he shall submit a declaration to request for the grace period concerning novelty with certifying materials within two months after he knows about it. The examiner may, when necessary, require the applicant to submit the relevant certifying materials within the specified time limit.”
It can be seen that the requirements for meeting the grace period concerning novelty are very strict. Since this case examines the provisions of Item (3) above, it is necessary to confirm that: (a) the relevant technical content of the subject patent was disclosed without the consent of the applicant; and (b) the time point for making the said declaration must be within two months after becoming aware of said disclosure.
In this case, the panel held that the patentee knew the existence of Exhibit 1 before the filing date, regardless of whether Exhibit 1 was disclosed due to the failure of others to comply with the confidentiality obligation, i.e. the starting point of “two months” shall be the time when the patentee knew the existence of Exhibit 1. In this regard, the panel supported the petitioner’s claim that the evidence as provided shows that when the patentee filed the application for the award with relevant authorities in 2020 (declared on July 15, 2020 or declared before August 20, 2020), the Exhibit 1 involved in this case was used as one of the materials for application; therefore, it can be presumed that Exhibit 1 had been known (or at least should have been known) by the patentee before August 20, 2020. However, the date when the patentee actually filed the declaration to request for the grace period concerning novelty was after the two-month period for filing the “grace period concerning novelty”, thus the subject patent should not enjoy the grace period.
In addition, the patentee claimed that the above-mentioned “knowing/should have known” should be based on its awareness that Exhibit 1 would destroy the novelty of the subject patent, not on the existence of Exhibit 1. The Panel did not support the patentee’s claim. Regarding the “knowing”, as provided by the patentee, although the expression “novelty” is used in both the grace period concerning and the novelty criteria, the evaluation criteria for the two are different. The reason is that: the legislative purpose of Article 24 of the Patent Law on the “grace period concerning novelty” is not to lose protection due to negligent acts of others, which is not based on the necessary condition of lacking novelty or and inventive step under Article 22 of the Chinese Patent Law.
The patentee also claimed that it only knew the existence of Exhibit 1 after it was granted, and the provisions of Item (3) of Article 24 of the Chinese Patent Law are targeted to the patent applicant, rather than the patentee. In this regard, the panel held that although the expression in Article 24 of the Patent Law is “the applicant”, it is not only the obligation of the applicant at the application stage but also the obligation of the patentee after the patent application has been granted based on the original meaning of said article.
In the end, the panel found that: the patentee did not submit to the CNIPA a declaration to request for the grace period concerning novelty within two months after knowing the existence of Exhibit 1; in this case, Exhibit 1 constitutes the prior art affecting the novelty or inventive step of the subject patent; therefore, the subject patent is declared totally invalid.
To sum up, we are of the opinion that, the grace period for novelty is an appropriate time period granted by the Patent Law to a patent applicant for early publication of his/her invention due to special circumstances. However, such grace period is conditional and limited. Under the first-to-file system, a patent applicant should file the patent application as early as possible, keep his/her invention-creation strictly confidential before filing a patent application, and should be fully aware of the legal provisions on the “grace period concerning novelty”. Therefore, once discovered that the invention has been disclosed by others without permission, the patent applicant should submit a corresponding declaration to request for the grace period concerning novelty as well as supporting materials attached thereto in a timely manner, and should not be negligent in adducing evidence and thus lead to loss of rights.
II.Request for Invalidation of Invention Patent Right of “Axial-flow wind wheel” (Invalidation Decision No. 50181)
Patentee: Company G
Requester: Company Z
Patent number: ZL200710026747.4
Conclusion: the patent right is declared invalid
The subject patent relates to the structure of the axial-flow wind wheel.
This case involves a number of focal issues, including the prior art as disclosure by use and evidentiary effect of the unilaterally entrusted appraisal in the invalidation proceedings.
- Regarding disclosure by use
The key to a patent invalidation case involving disclosure by use is the validity of evidence and the integrity of the chain of evidence.
In this case, the petitioner claimed that a chain of evidence, i.e. Exhibits 18-29 (concerning Wind Wheel II in four wind wheel apparatus), constitutes disclosure by use, to prove that the axial-flow wind wheel identical with the subject patent has been designed, manufactured and publicly used before the filing date of the subject patent.
Specifically, the petitioner provided physical evidence of the Wind Wheel II, sales invoices and measurement data to support the claim of disclosure by use. The patentee claimed that the authenticity and relevance of the evidence involving disclosure by use are doubtful, the parts of the wind wheel apparatus may be replaced, and the disclosure status cannot be determined, so it cannot be used to evaluate the validity of the subject patent.
Regarding the above evidence, the panel supported the panel supported the petitioner’s claim. Upon verification of the evidence, the panel found that there were sales activities (based on sales invoices etc.) of air conditioners (Wind Wheel II) targeted at non-specific persons (i.e. to the public) prior to the filing date of the subject patent, which is in line with general commercial practice. Furthermore, in consideration of the installation position of the air conditioners and difficulty in removal of the air conditioners, the panel found that the possibility of replacement of Wind Wheel II after initial installation is low, and in the absence of proof to the contrary by the patentee, the panel found that Wind Wheel II was publicly sold to the public prior to the filing date of the subject patent and the technical solution embodied by Wind Wheel II was available to the public upon desire before the filing date of the subject patent.
In this regard, we are of the opinion that the standard of proof of “disclosure by use” is relatively strict. In practice, disclosure by sale is the most common form. For a product, especially for consumer goods for daily life (such as the air conditioner in this case), any public can obtain it by purchase. As long as it can be proved that the product has been disclosed to the public by public sale before the date of filing of the patent, it can usually be considered that the relevant technical content is in the state that the public can know it if they wish. However, because as the sales usually take place before investigation and evidence collection, the focus is to confirm the sales time of disclosure by sale, whether it is within the meaning of “disclosure” as prescribed by the Chinese Patent Law, and the specific contents disclosed shall be determined.
In addition, the air conditioning equipment in this case is a common product in daily life, and the party can prove the disclosure by use of the product and the technical solution it carries from a number of aspects in terms of burden of proof. For other types of products, there may be different considerations. For example, for large-scale manufacturing equipment, how to prove the disclosure by use of the product and how to prove that its components have not been replaced are important factors to be considered.
- Regarding evidentiary effect of the unilaterally entrusted appraisal report
In this case, the petitioner provided corresponding measurement reports (Exhibit 27 and Exhibit 29) for Wind Wheel II. The patentee argued that the unilaterally entrusted measurement in the patent invalidation procedure is different from the judicial appraisal in the judicial procedure, and the fact finding cannot be based on the measurement report of the unilaterally entrusted measurement institution, and thus the measurement report in Exhibit 29 is not reliable.
In this regard, the panel held that the measurement report in Exhibit 29 is an appraisal opinion. In the absence of explicit provisions on unilaterally entrusted appraisal opinions in the Guidelines for Patent Examination, the examination shall be conducted with reference to the related provisions of the Civil Procedure Law. Therefore, in accordance with the provisions of Article 41 of the Several Provisions of the Supreme People’s Court on Evidence for Civil Actions (Revised in 2019) (“when a party commissions an opinion on a specialized issue from a relevant institution or person on its own, if the other party has evidence or reasons that suffice for contradiction and moves for authentication, the people’s court shall grant the motion”), the panel confirmed that the Civil Procedure Law does not exclude the effect of evidence related to unilaterally entrusted appraisal opinions.
The panel held that Exhibit 29 is the appraisal opinion issued by an authoritative metrological institution, and there is no obvious flaw in its measurement procedures and methods. The effect of such evidence cannot be denied where the patentee failed to present sufficient evidence to the contrary.
Finally, based on other documented evidence, the panel found that, compared with the technical solution carried by Wind Wheel II, the patent lacks novelty or inventiveness.
In this regard, we hold the view that, from the perspective of the evidentiary effect of the unilaterally entrusted appraisal report in this case, the patent invalidation procedure still follows the basic principle of proof in civil proceedings, which does not mean that the unilaterally entrusted appraisal report is inadmissible. The party concerned shall actively bear the burden of proof for its claim, and, if necessary, entrust a qualified and authoritative appraisal institution to issue the appraisal report.
To sum up, regardless of whether the disclosure by use or unilaterally entrusted appraisal report is used, the party concerned shall provide a complete chain of evidence. The trial of this case provides a reference example for future cases involving disclosure by use and unilaterally entrusted appraisal reports.