The SPC concluded an appeal against an administrative dispute over the invalidation of an invention patent. The court clarified that, for claims containing custom product models, if the description neither discloses the product's source nor its structure, composition, performance, or manufacturing method—making the referenced material indeterminable—and those skilled in the art cannot reasonably determine its meaning after reading the claims, description, and drawings, it shall be determined that the protection scope of the claims is unclear, and the patentee shall bear the corresponding adverse consequences.
Xi'an A Company filed an invalidation request with the CNIPA against an invention patent owned by Shenyang B Company, titled "A Method for Manufacturing Resin-Based Composite Aircraft Part Stretch-Forming Molds" (hereinafter referred to as "the Patent"). The primary grounds were that Claims 1-2 of the Patent were unclear and lacked inventiveness. The CNIPA's decision, which was later contested, held that Claim 1 specified the operational source materials for two steps as "SAM910" and "SAM900" resin materials, which were commercially available products of Shenyang B Company, and thus the protection scope of Claim 1 was clear. Dissatisfied, Xi'an A Company filed a lawsuit.
The first-instance court held that: "SAM" is a terpolymer of styrene (S), acrylonitrile (AN), and maleic anhydride (MA), and "SAM910" and "SAM900" are product grades. Grades of Resin products are publicly known, and each corresponds to a specific product model. In addition, Xi'an A Company acknowledged that "SAM910 resin material" and "SAM900 resin material" were publically sold by Shenyang B Company. Hence, in the absence of contrary evidence, the contested decision's determination that SAM910 and SAM900 were clearly identified as resin materials based on the evidence in this case should be upheld. The court thus dismissed Xi'an A Company's claims. Xi'an A Company was dissatisfied, and appealed the first-instance judgment.
The SPC, in the second instance, held that the "the claims must be clear" refers to the protection scope of the claims should be clear to those skilled in the art. In this case, "SAM910" and "SAM900" resin materials in the Patent's claims were custom product models defined by Shenyang B Company, not generic terms with established meanings in the field. The Patent's description neither disclosed the source of SAM910 and SAM900 resin materials nor their structures, compositions, performances, or manufacturing methods, making the referenced materials indeterminable. Under these circumstances, those skilled in the art could not reasonably determine the meaning of SAM910 and SAM900 after reading the claims, description, and drawings, which meant that the protection scope of the Patent was unclear. Although the patentee, Shenyang B Company, submitted evidence during the second instance to show it had sold SAM900 resin material to Xi'an A Company, the description of the Patent did not disclose whether the resin materials of custom models SAM910 and SAM900 defined by the patentee were commercially available products. Furthermore, whether the invalidation requester had previously purchased these custom-model products does not affect the general understanding of those skilled in the art and is irrelevant to the determination of whether the patent claims are sufficiently clear.
The second-instance judgment in this case holds certain reference value for promoting higher-quality patent drafting and ensuring fair and reasonable protection of inventions in accordance with the law.
(2023) Zui Gao Fa Zhi Xing Zhong No. 269
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