Shanghai Wujing Chemical Co. Ltd. Wins the Second Instance of Administrative Procedure of Patent Right Invalidation (Patent attorneys: Qi Xue and Hua Zhong)
2013-04-18 14:56:42 Source： Hit：
Case Information:
Application Number: CN03116492.7
Title of Invention: Catalyst system of Rhodium/Inorganic iodide used in the process for preparing acetic acid which can reduce the amount of the impurity
Petitioner: Patent Reexamination Board of State Intellectual Property Office
Appellee: Shanghai Wujing Chemical Co. Ltd.
The Third Party: Li Wen
Attorneys: Xue Qi and Zhong Hua of our patent office, are as the patent attorneys for Shanghai Wujing Chemical Co. Ltd.
Cause of action:
On April 23, 2007, petitioner Li Wen filed a request for invalidating the invention patent CN 03116492.7 of Shanghai Wujing Chemical Co. Ltd.. The invalidation causes and evidences are as follows: relative to evidence 1, claims 1-4 possessed no novelty, and also relative to evidence 1, or the combination of evidence 1 and 3, or the combination of evidence 1, 2 and 4, claims 1-4 possessed no inventive step.
On May 28, 2008, the patent reexamination board made the No. 11650 examination decision that relative to the embodiment 1 of evidence 1, claims 1-4 possessed no inventive step.
The patentee was not satisfied with the decision, and filed an administrative litigation to the Beijing No. 1 Intermediate Court. Beijing No. 1 Intermediate Court made the (2008) Yi-Zhong-Xing-Chu-Zi (一中行初字) No. 1466 administrative judgment that in the prerequisite that the petitioner for the invalidation had not explicitly adduced the embodiment 1 of evidence 1 as the evidences against the novelty and inventiveness of the patent, the patent reexamination board evaluated the novelty and inventiveness of the patent based on the embodiment 1 of evidence 1 on its own initiative. In addition, the patent reexamination board did not inform patentee of the new facts and causes on which the examination decision was based and did not give patentee a chance to make observations as well, which violated the principle of examination upon request and the principle of hearing.
The patent reexamination board was not satisfied with the decision, and filed an administrative litigation to Beijing Municipal Higher People's Court. On January 27, 2010, Beijing Municipal Higher People's Court hold a court trial.
On March 9, 2010, Beijing Municipal Higher People's Court made (2010) Gao-Xing-Zhong-Zi (高行终字) No. 148 final judgement that reject the appeal and maintain the original judgment.
For petitioner, the main grounds of appeal are as follows:
The petitioner considered that: 1. In the request for invalidation, the causes that relative to evidence 1, claims 1-4 possessed no novelty and inventiveness were explicitly proposed, and furthermore, the evidence submitted was not just restricted to the claim 1, so that it did not violate the principle of examination upon request; 2. The petitioner had clearly pointed out that relative to the embodiment 1 of evidence 1, claims 1-4 possessed no novelty during the oral proceeding in the invalidation procedure. Thus, from the angle of petitioner, it was inevitable that the technical solution of embodiment 1 of evidence 1 was considered as the most related technical solution for evaluating inventiveness, and moreover, the observations about the inventiveness had been fully made by both parties, so it did not violate the principle of hearing.
For appellee, the main grounds of appeal are as follows:
1. The observations made by Li Wen on why evidence 1 was against the patent’s inventiveness was not explicitly related to the embodiment 1 at the time of submission of the request or within one month of submission of the request. 2. The embodiments were distinguished from and the claims, it could not be taken for granted that they were equated. 3. The embodiment 1 of evidence 1 was only adduced as the evidence against novelty but not the inventiveness during oral proceeding. 4. Li submitted the full text of evidence 1, which did not mean that it explicitly pointed out that the embodiment 1 of evidence 1was the evidence against the inventiveness of the patent. 5. The patent reexamination board did not inform Shanghai Wujing Chemical Co. Ltd. the causes why evidence 1 was against the patent’s inventiveness. Therefore, the patent reexamination board violated the principle of examination upon request and the principle of hearing.
Conclusion:
Beijing Municipal Higher People's Court supported what appellee (patentee) had advocated, rejected the appeal of the patent reexamination board and maintained the original judgment.
