The Supreme People's Court, in second-instance judgments on two administrative disputes over the invalidation of two invention patents involving priority rights, clarified the rules for determining partial priority in invention patents.
Company A is the patentee of two invention patents titled "Method and Apparatus for Enhancing Uplink MAC Multiplexing and TFC Selection Process" and "Method, WTRU, and Base Station for Enhancing Uplink MAC Multiplexing and TFC Selection Process" (collectively, the "Patents"). Company A claimed three foreign priority rights for the Patents.
On May 15, 2020, Company B requested the CNIPA to invalidate the Patents, primarily arguing that the Patents lacked inventiveness. In response, Company A asserted that the Patents were entitled to priority based on: In response, Company A argued that the Patents were entitled priority based on Evidence 5 ( the “First Priority Document”) and Evidence 6 (the “Second Priority Document”). Company B, in turn, argued that claims 2, 4, 6, 12, 14, 16, 18, and 24 of the Patents did not qualify for priority. In January 2021, the CNIPA issued its Invalidation Decisions (the “Disputed Decisions”), upholding the validity of the Patents. However, the CNIPA ruled that the aforementioned claims were not clearly recorded in Evidences 5 and 6 and therefore could not enjoy first and second priority rights, and did not comply with Article 29 of the Patent Law. On this Basis, the CNIPA also reassessed the inventiveness of the those claims. Dissatisfied with the ruling, Company A filed a lawsuit with the court of first instance, seeking to overturn the Disputed Decision’s priority determination and to fully affirm the Patents’ validity of the patent.
During the first instance, Company A submitted three pieces of evidence: two discussion draft documents from the TSG RAN WG2 meeting held before the filing date of the Patents, and the 3GPP standard published on June 30, 2005, purporting to demonstrate that a person skilled in the art could directly and unambiguously identify the technical solution defined in the Patents’ claims from the priority documents claimed. However, the court of first instance held that the evidence submitted by Company A could not prove that the technical solution defined in the relevant claims of the Patents was technical information that could be directly and unambiguously identified on the first and second priority dates, and that Company A's claims were untenable. The court of first instance therefore dismissed Company A's lawsuit. Dissatisfied with the first instance judgment, Company A appealed.
In the second instance, the Supreme People's Court held that when determining whether a priority is established, examination should be carried out on whether the content defined in the claims of the later application can be directly and unambiguously derived from the patent document of the prior application. When a patent application contains multiple claims, or when a single claim defines multiple parallel and independent technical solutions, whether priority is entitled should be assessed separately for each distinct claim or technical solution. Therefore, even when an independent claim can enjoys priority, its dependent claims further – which further define additional technical features that alters the scopes of protection and constitute different technical solutions - must be investigated and evaluated for priority entitlement in accordance with the law.
In this case, first, although Evidences 5 and 6 (the priority documents at issue) recorded that header information and other control signaling overhead were considered when selecting an E-TFC, a person skilled in the art could not directly and unambiguously determine technical information. This is because Evidences 5 and 6 also implicitly disclosed that control information, such as scheduling information, must also be considered during E-TFC selection. Second, the evidence submitted by Company A was insufficient to prove that incorporating scheduling information into the MAC-e header constituted technical information that a person skilled in the art could directly and unambiguously determine as of the first and second priority dates. Therefore, Company A's appeal, which claimed that the disputed claims of the Patents could enjoy first and second priority, was unsustainable.
The priority system enables patent applicants to apply for patent protection across multiple jurisdictions. When determining whether a patent qualifies for priority, a substantive examination must be conducted to confirm that the subsequent patent application discloses the same subject matter as the prior application for which priority is sought. This prevents applicants from using the priority system to improperly extend protection to inventions developed after the priority date into the technical solution of the subsequent patents, thereby improperly obtaining a prior application date and, consequently, undue benefits. The rules clarifying the determination of partial priority in this case provide valuable insights for similar situations.
(2024) Zui Gao Fa Zhi Xing Zhong Nos. 126 and 127
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