In the patent confirmation case handled by Beijing Unitalen Law Firm representing Sichuan Huaguang Company (the "Client"), the involved patent was declared invalid. After the first and second instances, it was recently received the (2024) Zui Gao Fa Zhi Xing Zhong No. 366 Judgment issued by the Supreme People's Court, which rejected the appellant's appeal request. The case was ultimately supported by the Supreme People's Court, safeguarding the interests of the client.
Case Brief
The involved patent relates to an expansion bolt set, which is a connecting component used for connecting furniture boards. As granted and announced, the involved patent comprises ten claims. The closest reference document cited in this case to request the invalidation of the involved patent is another patent application for invention of the Client (the “Reference Document”), which shares the same filing date with the priority document of the involved patent. Therefore, the debate between the two parties in this case focuses on whether the involved patent enjoys the priority right and the inventive evaluation based on this. The China National Intellectual Property Administration determined that the "locking structure" defined in the independent claims of the involved patent and the specific locking structure further defined in the dependent claims, such as the features "buckle," "insertion hole and matching interlocking teeth," and "convex strip of interlocking teeth," are not disclosed in the priority document, and are not even mentioned in a general or vague manner. It is also impossible to directly and unambiguously determine these contents from the drawings of the priority document. Therefore, the involved patent and the priority document do not have the same subject matter, and the involved patent cannot enjoy the priority. On this basis, it is determined that, through the combination of the Reference Document with other evidence and common knowledge, all claims of the involved patent do not involve an inventive step, and the involved patent is declared invalid.
With dissatisfaction, the patentee filed an administrative lawsuit. Both the courts of first instance and second instance ruled to uphold the invalidation decision concerning the involved patent.
Attorney's Analysis
One of the disputes, in this case, is whether the technical solution of the involved patent should enjoy the priority of the prior application. In particular, in the case where the prior application documents only disclose the technical features of the specific term, whether the later application can enjoy the priority of the generic summary based on the specific term of the prior application.
Based on the relevant provisions of Paragraph 2, Article 29 of the Chinese Patent Law and Part II of the Guidelines for Patent Examination, a legal basis is provided for determining whether the later application claiming priority and the prior application have the "same subject matter". However, in practice, there may still be different understandings of the "same subject matter." For example, in this case, the patentee asserted that the standards for the determination of priority and the determination of the novelty and inventive step should be the same, and the recognition of the contents disclosed in the prior document should follow a completely consistent standard.
The judgment of the second instance negated the patentee's view, emphasizing that the determination of the "same subject matter" in the priority judgment also requires an examination of whether the extension of technical features is the same: if the later application provides a generic summary based on a specific summary corresponding to the prior application, and the summary makes it cover other technical solutions not included in the prior application, resulting in different technical solutions of the prior application and the later application, then the later application and the prior application do not share the same subject matter. The judgment of the second instance also confirmed the difference between the determination of the "same subject matter" for priority and the determination of the "identical invention-creation" for novelty. That is, the determination of the "same subject matter" requires a stricter standard, and the priority document needs higher correspondence to the contents of the later application. However, the determination of the "identical invention-creation" has a relatively loose standard. Theoretical analysis also supports the same conclusion.
The second instance judgment provides a new adjudicative rule for determining the "same subject matter" for priority in the form of a case, serving as a reference case for subsequent related cases.