Recently, the Supreme Court issues a Retrial Judgment ((2016)Supreme Court Administrative Retrial Case No. 94 and 95) on a patent administrative case, revoking the corresponding judgment of second instance and making reversal decision on the application of China Patent Law Article 26.3 “insufficient disclosure of patent description”. Generally speaking, the Supreme Court makes guidance on how to apply the provision of “the patent description should be clear” in the Patent Law Article 26.3. The Supreme Court believes that the standard to evaluate whether a patent description is clear should be based on whether those skilled in the art are able to carry out the invention based on the understanding of the patent description, but not simply based on amounts of mistakes or gravity of such mistakes in the description.
The patent at issue relates to a weaving machinery with complicated structure, the validity of which has been examined and reexamined under scrutiny four times in invalidation, administrative litigation of first and second instance and the Supreme Court Retrial. From the start, the Invalidation Decision of this case is made from the perspective of those skilled in the art to understand the patented solution based on the whole technical solution of the patent description, thereby explaining the description in consistent with the level of those skilled in the art.
Then, the Judgment of First Instance confirms the standing of the Invalidation Decision and believes that whether a patent description has clearly and completely described the technical elements should be understood based on the description and the drawing as a whole. Since the context of the patent description is consistent with the drawings in an easy-to-understand manner, those skilled in the art are able to clearly understand the technical solution of the patent.
However, the Judgment of Second Instance makes an answer contrary to those in the First Instance and invalidation. The Judgment of Second Instance examines the patent description embodiments in super details, holding that there are mistakes in the description rendering the technical solution unclear and incomplete and those skilled in the art need excessive labor or plenty of corrections to carry out the invention. Therefore, the Judgment of Second Instance revokes the Judgment of first instance.
In consideration of that there does exist questions needing further discussion regarding the issue of “insufficient disclosure of patent description” in the Judgment of second instance, this case further proceeds to the Supreme Court for retrial. After the Supreme Court holds a hearing on this case, a decision to retrial this case is made. Finally, the Supreme Court abides by the principle of “appropriateness” to decide the issue of “patent description not sufficiently disclosed”.
The Supreme Court confirms the perspective of understanding a patent description in the Retrial Judgment. The Supreme Court believes that “although there are a few unclear sentences in the description, such unclearness is more to describe the background and prior art of the present patent. When those skilled in the art are reading the description, they are able to understand the related technical details about such unclearness and carry out the invention based on their own understandings. Therefore, it is not appropriate to judge on the unclearness based on the amounts or gravity of mistakes, but on whether those skilled in the art are able to understand the technical solution and carry out the invention.”
The Supreme Court further makes general guidance on what degree of disclosure is sufficient for a patent description. The Supreme Court believes that “what degree of clearness and completeness is sufficient for a patent description is related to the level of readers. It is those skilled in the art, not the common public, who is the key factor to determine whether the description is clear and complete or whether there are lethal mistakes in the description. If those skilled in the art are able to understand, find and correct mistakes when reading the description, especially if such understanding and correction will not result in any changes of the claimed solution and not destroy the publicity and stability of the claims, then such correction should be acceptable on the unclearness of the description, otherwise, benefits of the patentee will obviously not be consistent with the contribution made to the society.”
Finally, the Supreme Court abides by the principle of “appropriateness” to point out that “from the basic principle of protecting and encouraging invention, on the one hand, it is allowed to correct the understandings on the mistakes in the granted patent description, on the other hand, the patentee should be prevented from abusing such right of “correction”. Therefore, it is necessary to precisely identify “real” mistakes in a patent description to balance benefits between the patentee and the public welfare, thereby complying with the instrinct nature of Patent Law “encouraging invention, promoting society progress and economic development”.”
Based on the above reasonings, the Supreme Court believes that the patent description of this case has made clear and complete disclosure to the technical solution of the invention, based on which those skilled in the art are able to carry out the invention. The Supreme Court revokes the Judgment of second instance and maintains the Judgment of First Instance.
The Retrial Judgment of the Supreme Court clearly explains what degree of unclearness in the description could result in “insufficient disclosure” and emphasizes the importance of those skilled in the art to determine “sufficient disclosure”. From the Patent Law legislation and balance of benefits, the Retrial Judgment points out that it is necessary to precisely identify the unclearness in a patent description and such way to identify the unclearness should be in “appropriate” degree but not “a clean curt”. This case gives a role model on the degree to determine whether a description would be considered to be sufficiently disclosed, and provides a guidance on future invalidation and administrative judicial review on issue of “insufficient disclosure” of a patent description.
Lawyers from Liu, Shen & Associates, Mr. PENG Jiuyun and Mr. YAO Guanyang are fully in charge of this case from the invalidation to the Supreme Court Retrial, Mr. TAO Fengbo (Allen) also attended this case and finally win the case before the Supreme Court.