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With Respect To the Same Prior Art Reference(s), Can the Patent Office Reach a Different Conclusion in a Patent Cancellation Procedure from the Conclusion Given When It Granted the Patent?
After a patent is granted by the patent office, anyone who considers the patent to lack novelty or an inventive step can file a cancellation (invalidation) action with the patent office along with the relevant prior art reference(s). In some countries, the patentability issues that may be submitted to the patent office for reexamination in the cancellation action stage are not allowed to overlap those substantially examined at the patent application stage, but there is no such regulation in our country. Therefore, if a prior art reference(s) that a cancellation petitioner submits in a cancellation action is one that the patent office has substantially reviewed and compared with the patented technique, can the patent office change its conclusion to decide that some claims of that patent do not have an inventive step over the same prior art reference(s)? With regard to this potentially contentious issue, the Supreme Administrative Court Judgment No. 2014-Pan-242 (rendered on 15 May 2014) and the Intellectual Property Court (the "IP Court") Judgment No. 2013-Xing-Zhuan-Su-50 (rendered on 9 October 2013) rendered for a cancellation case seem to accept that the patent office can hold different opinions at the stages of patent application and cancellation action.
The target patent in the cancellation case pertaining to the above-mentioned two judgments relates to a hand tool. At the patent application stage, the patent office issued an office action mentioning that Citation A rendered all the claims obvious (non-inventive) to persons with ordinary skill in the art and requesting the applicant to respond and/or amend the claims. The patent applicant responded to the office action with claim amendment and explanation regarding the differences between the invention and Citation A. After examining the amended claims, the patent office granted a patent to the applicant. Then, a third party filed a cancellation action against some claims of the patent based on the same Citation A. The patent office agreed with the cancellation petitioner's arguments and concluded that Citation A substantially discloses the elements and the structure recited in the claims, so it is sufficient to prove that these claims lack an inventive step; the patent office also mentioned that the combination of Citation A and the prior art described in the specification of the target patent can further prove the patent lacks an inventive step. The patent right was therefore withdrawn by the patent office. The patentee filed an administrative suit with the IP Court arguing that the patent office had violated the principle of good faith in administrative behaviors and also failed to give reasons in its cancellation decision in view of the facts that the patent office reversed its conclusion at the patent application stage with regard to Citation A without explaining why.
In the first instance, the IP Court affirmed the patent office's decision for the cancellation action; in Judgment No. 2013-Xing-Zhuan-Su-50, the IP Court states that all the technical features in the claims have been substantially disclosed by Citation A and that the minor modification in shape can be directly understood by persons in the art with reference to the description in the prior art section of the specification of the target patent. In the second instance, the Supreme Administrative Court Judgment No. 2014-Pan-p242 also affirmed such conclusion.
It is worth noting that the IP Court and the Supreme administrative court both agreed that the patent office cited "the description regarding the prior art in the field in the specification of the target" as prior art and combined it with Citation A to negate the inventive step of the patent. Such opinions are consistent with a previous judgment rendered by the Supreme Administrative Court (Judgment No. 2012-Pan-774), in which the court pointed out that "the rule of estoppel and the principle of good faith are also applicable in cases pertaining to patent validity." That is, since the patentee clearly indicated in the patent specification that a patent or a technique (Citation B) is prior art, Citation B should be deemed a qualified prior art reference without requiring proof when the validity of the patent is further evaluated; this is to ensure consistency of the patentee's explanations regarding the invention and protect not only the interest of the cancellation petitioner but also the interest of the public; such interest is formed on the basis that the public believes the patentee's previous explanations/statements. The judgments imply that the prior art mentioned in a patent specification is certainly a qualified prior art reference and can be combined with other prior art references to challenge the validity of the patent in a cancellation action. The impact of such opinion would be to significantly reduce a cancellation petitioner's burden of proof on admissibility of evidence. With this in mind, a patent applicant needs to carefully consider whether and how to disclose a skill or technique used prior to the invention to be claimed in a patent specification.