Docket number of the case in the first instance: 4185, first instance (初), administrative case (行), (2018) Beijing Intellectual Property Court (京73)
Docket number of the case in the second instance: 491, second instance (终), administrative case (行), (2020) IP Court of the Supreme People’s Court (最高法知)
[Prefatory Syllabus]
The Guideline for Patent Examination provides for open and closed forms of claim expression, as it is not suitable to divide independent claims into the preface and features due to the nature of some inventions in the technical area, especially the composition invention in the chemical area. However, in the machinery area, by adding or reducing structural technical features, it usually will not lead to substantial changes in other technical features of the original technical plan in terms of characters, functions, features, etc., thus destroying the purpose of invention in the original technical plan. Therefore, although the Guideline for Patent Examination provides in Section 3.3/Chapter 2/Part II that "Closed claims shall be expressed in the form of “consisting of” ... It is generally construed to contain no structural components or methods and steps other than those described in such Claims”. However, it doesn’t mean that the claims using the above expression form are necessarily closed claims; to determine whether the claim excludes structural components or methods and steps other than those described therein, it’s necessary to consider from the perspective of the technician in this area and review the context of claims and the contents recorded in the patent specification and its attached drawings.
[Basic Facts]
Appellant (Plaintiff in the case in the first instance): Giesecke & Devrient (China) Information Technologies Co., Ltd. (Hereinafter: Giesecke & Devrient)
Appellee (Defendant in the case in the first instance): China National Intellectual Property Administration (CNIPA)
Third party in the case in the first instance: Shanghai Gemalto IC Card Technologies Co., Ltd. (Hereinafter: Gemalto) and Hou XX
The patent involved is a utility model patent named “A Financial Trading Card with 3D Printed Graphic Surface” (Patent No.: 201520879638.7). The application date is November 6, 2015, and the authorization announcement date is April 6, 2016. Giesecke & Devrient is the patentee. Regarding the patent involved, Gemalto and Hou filed a request for invalidation to the former Patent Reexamination Board of the China National Intellectual Property Administration on August 14, 2017 and September 27, 2017, respectively on the ground that Claims 1-6 for the patent involved don’t comply with the provisions of Paragraph 3/Article 22 of the Patent Law, requesting to declare all the claims for the patent involved invalid. On February 1, 2018, the Patent Reexamination Board made a decision, holding that: Claims 1-6 for the patent involved don’t have creativity as stipulated in Paragraph 3/Article 22 of the Patent Law. So it declared all the patents involved invalid.
Giesecke & Devrient refused to accept the decision and appealed to Beijing Intellectual Property Court, requesting to annul the decision and order the China National Intellectual Property Administration to make a decision on review. The Beijing Intellectual Property Court ruled to dismiss Giesecke & Devrient’s claim.
Giesecke & Devrient refused to accept the verdict of first trial, and appealed to the Supreme People's Court. The Supreme People's Court ruled in the second instance to dismiss Giesecke & Devrient's appeal and uphold the original judgment as Giesecke & Devrient's appeal was untenable. Giesecke & Devrient shall bear the court acceptance fee of RMB 100 for the second instance.
[Typical Significance]
To meet practical needs of the patent applicants to prepare claims for defining the scope of their protection, the Guideline for Patent Examination provides for open and closed forms of claim expression. Due to the nature of some inventions in the technical area, especially the composition invention in the chemical area, it is not suitable to divide independent claims for them into the preface and features. As a result of the interaction between composition components, the substantial changes in the technical effect of the invention arising out of an increase or decrease in chemical constituents may render the purpose of the invention unachievable. Therefore, patent applicants usually prepare claims in a closed form to define the scope of their patent protection.
However, regarding inventions in the machinery area, by adding or reducing structural technical features, it usually will not lead to substantial changes in other technical features of the original technical plan in terms of characters, functions, features, etc., thus destroying the purpose of invention in the original technical plan. Therefore, the claim for inventions in the machinery area is usually expressed in an open way. Only when the claim can still keep its original functional effect unchanged after a certain structural feature is reduced, i.e., under the circumstance of inventions with one or more elements omitted, it’s necessary to adopt a closed expression. Therefore, although the Guideline for Patent Examination provides in Section 3.3/Chapter 2/Part II that "Closed claims shall be expressed in the form of “consisting of” ... It is generally construed to contain no structural components or methods and steps other than those described in such Claims”. However, it doesn’t mean that the claims using the above expression form are necessarily closed claims. To explain the protection scope of the claims expressed in the form of “consisting of”, it’s necessary to determine whether the claim excludes structural components or methods and steps other than those described therein as per the provisions of Article 59 of the Patent Law from the perspective of the technician in this area by reviewing the context of claims and the contents recorded in the patent and its attached drawings.
When determining whether a claim is an independent claim or a dependent claim, given that the patentee prepares dependent claims to define different levels of protection, the claims prepared by reference shall be generally presumed to be dependent claims, that is, the scope of protection shall be smaller than the claim referred to and all the technical features of the claim referred to shall have a limited effect on the claim, unless the identification of it as a dependent claim will lead to the contradictions or ambiguities between various claims. Based on the patentee's general perception of the rules for preparing claims, where the preparation defects of the patentee lead to the preparation of an independent claim into a dependent claim, the patentee shall bear adverse liability for its preparation errors.
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