A. Case Information:
- Invalidation Petitioner: Guangdong Midea
- Patentee: YE Jianrong
- Agency of Patentee: Beijing Genuineways Intellectual Property Agency Co., Ltd.
- Court/Body with Jurisdiction: Patent Reexamination Board
B. Result of Processing / Judgment:
It is decided that the patent right is maintained, which has come into effect, as the petitioner didn’t file an administrative lawsuit.
C. Analysis of the Case:
This invalidation request mainly involves the utility model patent No. 200420087654.4 of YE Jianrong titled "Apparatus for controlling hot water temperature and hot water quantity for electric heating drinker", and the grounds for invalidation mainly relates to practicality problem. The Petitioner held that the apparatus was inconsistent with the "connector principle" and couldn’t achieve the purpose of discharging water.
In this regard, our attorney firstly pointed out the correct understanding of the practicality, i.e., practicality actually requires the overall technical solution having a positive effect rather than achieving the effect of invention purpose. That is to say, the positive effect doesn’t refer to producing of positive and beneficial effects compared with the prior art, but the method itself capable of bringing about positive and beneficial effects. (See the decisions of review Nos.WX6828 and WX7314). The requirement of positive effect is different from whether it can achieve invention purpose, and hence there exists obvious deviation in the Petitioner’s understanding on practicality, as shown by the Petitioner’s assessment based on the criteria of invention purpose throughout the practicality assessment process.
At the same time, our attorney investigated and verified through various means, searching a large amount of data and repeatedly communicating with the inventor, and conducted in-depth analysis of the work process to understand the technical principles. The process of preparing documents for response gave an in-depth inspiration to the technician, which enabled the same to clearly state the working process and principle of the product. Ultimately from the connector principle and the law of conservation of energy and other aspects, a strong defense was presented against the Petitioner’s grounds for invalidation, which successfully made the Reexamination Board accept our point of view, ultimately maintain the validity of the patent and dismiss the invalidation request of Guangdong Midea.
The client highly appraised the service of our attorney on this case, saying that “You have become an expert in water heater technology!”
D. Comments by Attorney:
Practicality grounds are not commonly used for invalidation in practice. Response to such grounds requires the attorney’s in-depth understanding of the technical solution and analysis of the working principle, clearly showing the work process and principle of product. And evidence of material object or of successful commercial application can also be introduced.
Attachment: Examination decision of the Patent Reexamination Board of SIPO on invalidation request of the case. PDF
