The Supreme People's Court clarified the rules for determining priority right in two administrative disputes over the invalidation of two invention patents involving priority rights. The case summaries are as follows:
Company A is the patentee of the invention patents in this case (hereinafter referred to as “the Patents”). Company A claimed three foreign priority rights for the Patents. Company B requested the CNIPA to invalidate the Patents, primarily arguing that the Patents lacked inventiveness, and that certain claims were not entitled to the first and second priority rights. The CNIPA issued its Invalidation Decisions (the “Disputed Decisions”), upholding the validity of the Patents. However, the CNIPA ruled that certain claims were not entitled to the first and second priority rights.
Dissatisfied with the ruling, Company A filed a lawsuit with the court of first instance, seeking to overturn the Disputed Decision’s priority determination and to affirm the Patents’ validity. During the first instance, Company A submitted evidence, primarily arguing that, by considering the first priority, the second priority, and the technical background at the time the priorities were claimed, the technical information of the relevant claims could be directly and unambiguously determined. Therefore, the relevant claims were entitled to the first and second priority rights.
The court of first instance held that the priority documents did not explicitly record the relevant technical information, the current litigation evidence existed in the conference discussion draft, rendering it impossible for a person skilled in the art to directly and unambiguously determine the relevant technical information, or the evidence dates were later than the priority dates. Thus, the determination that the relevant claims were not entitled to the first and second priority rights was not improper. The court of first instance therefore dismissed Company A's lawsuit.
Dissatisfied with the first instance judgment, Company A appealed. In the second instance, Company A argued that: first, the first priority and second priority documents explicitly record the additional technical features of claim 2, and claim 2 should be entitled to the first and second priority rights; second, based on the contents of the first and second priority documents and the technical background at the time they were filed, the additional technical features of other relevant claims could be directly and unambiguously determined from the two priority documents. Therefore, the relevant claims should be entitled to the first and second priority rights.
In the second instance, the Supreme People's Court held that when determining whether a priority is established, examination should be carried out on whether the content defined in the claims of the later application could be directly and unambiguously derived from the patent document of the prior application. In this case, first, a person skilled in the art could not directly and unambiguously determine the technical information of the relevant claims; second, part of the evidence submitted by Company A had dates later than the first priority case and the second priority date, and thus could not prove that the additional technical features were information that a person skilled in the art could directly and unambiguously determine at the time of the first and second priority dates; third, the priority documents did not explicitly record the relevant technical information. Therefore, Company A's appeal, which claimed that the disputed claims of the Patents could enjoy first and second priority, was unsustainable.
Through the above judgment, the Supreme People's Court clarified that a technical solution entitled to priority rights must be explicitly recorded in the prior documents, and can be determined directly and unambiguously by a person skilled in the art.
(2024) Zui Gao Fa Zhi Xing Zhong Nos. 126 and 127
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