Summary
Brief of the case
Our client, a Chinese subsidiary of a German company who filed a request for patent invalidation, requested Patent Reexamination Board (PRB) to declare a utility model invalid, of which the patent number is 200520078682.4 and the title is "multi-stage continuous cooling coil vibrating mold". The Patent Reexamination Board issued a Decision of Invalidation (No. 18046) on January 11, 2012, declaring all the claims of the above utility model patent were invalid. The Patentee "Xi'an Aerospace Warwick Chemical Biological Engineering Co., Ltd." refused to accept such decision, and appealed to the Beijing First Intermediate People's Court for an administrative proceeding. Our company, on behalf of the client participated in the administrative litigation case as the third party.
Result
Beijing First Intermediate People's Court upheld the decision No. 18046 made by Patent Reexamination Board of SIPO.
The focus of the case
(1). Does PRB have to comment on all the reasons and evidence stated in the request for invalidation?
(2). Since the inventiveness of a utility model is weaker than that of an invention, how to apply this rule in practical case? the PRB uses three prior art documents in combination with common knowledge in the art to invalidate claim 3 of the utility model, and the question is whether this action has virtually raised the inventive step of a utility model to same height with that of an invention.
The comments by the Patent Attorney
About focus (1), if the PRB is able to declare the whole patent invalid based on part of the reasons and evidence stated by the petitioner, since the other reasons and evidence do not affect the final conclusion of the invalidation decision, there is no need and no legal basis for PRB to review and comment on all reasons and evidence. For the sake of saving time and labor, the PRB can select robust reasons and evidence so long as the final decision of the invalidation is not changed when all the reasons and evidence are concerned.
About focus (2), according to the <Patent Examination Guideline>, one or two prior art reference could be cited to assess the inventive step of a utility model. Where the utility model is made just by juxtaposing some prior art means, the examiner may cite more than two references to assess its inventive step.
If a claimed invention is merely an aggregation or juxtaposition of certain known products, each functioning in its routine way, and the overall technical effect is just the sum of the technical effect of each part without any functional interaction therebetween, the claimed invention shall be regarded as a mere aggregation, and does not involve any inventive step accordingly. Specific to the present case, the claim 3 merely adds a component of “seed circulation line”. The seed circulation line works as in a conventional manner and does not bring about a special way of working with other parts of the apparatus, and the technical effect can be expected. Therefore, it is feasible for the PRB to cite three reference documents to evaluate its inventiveness.
