Summary of the Judgment
The Beijing 1st Intermediate Court ruled on the Administrative Action instituted by SHAO Tong against the Patent Reexamination Board (PRB) on Nov. 29, 2004. Following is an outline of the judgment. I. Parties
Plaintiff: SHAO Tong Agents: ZHANG Supei, an attorney from Nanjing Knowledge Law Office, who was also Mr. Shao’s agent during the invalidation procedure. Defendant: the Patent Reexamination Board Agents: GAO Xue, ZHANG Hanguo, two officials from the PRB’s Department of Administrative Actions The Third Parties: 1. LI Bo (the first invalidation requesting party) Agent: WANG Yi, a patent agent and attorney from East IP 2. Zhuhai Victory-Idea Inc. (the second invalidation requesting party) Agent: ZHANG Lianjie, technical manager of Victory-Idea Inc. SHAO Changfu, an attorney from Zhuhai Feifan Attorney Office II. Procedure June 30, 2003 LI Bo filed with the PRB an invalidation request for SHAO Tong’s patent No. 94111461.9 (referred as “the Patent”). July 1, 2003 Victory-Idea Inc. filed with the PRB an invalidation request for the Patent. March 23, 2004 The PRB made a decision declaring all claims of the Patent invalid (Decision No. 5941). June 14, 2004 SHAO Tong instituted an Administrative Action against the PRB with the Beijing 1st Intermediate Court. Sept. 22, 2004 The Beijing 1st Intermediate Court held an oral trial. Nov. 29, 2004 The Beijing 1st Intermediate Court ruled on the action. III. Allegation of the Plaintiff
1. The PRB cited evidence inappropriately. 2. Claim 4 does not go beyond the scope of the specification. 3. Claim 1 has inventiveness because none of the technical features in Claim 1 are disclosed by Ref.1 or Ref.4. 4. The Patent is a creative invention that overcomes technical prejudices.
Accordingly, the plaintiff requested the revocation of PRB Decision No. 5941. IV. Judgment of the Court 1. Adoption and Usage of the evidence by the PRB during the invalidation examination procedure did not violate the provisions of the relevant laws and regulations. The Court does not support the corresponding allegation of the plaintiff. 2. The additional technical feature is not disclosed in the specification of the published text, and can not be derived from the original application text directly and without dispute. Therefore, Claim 4 does not conform to Article 33 of the Patent Law. 3. SHAO Tong’s allegation for the inventiveness of Claim 1 is not supported. The evaluation that Claim 1 has no inventiveness is not inappropriate. 4. The Court affirms the Decision that none of Claims 2-10 has inventiveness. 5. The Court does not support the allegations that the patented invention has successfully been exploited in business and overcomes the technical prejudices because the plaintiff did not provide any evidence. In general, the PRB made Decision No. 5941 based on clear conclusion upon the facts and the proper application of the law within the context of a lawful procedure. According to Article 54, Paragraph 1 of the Administrative Proceedings Law of China, the Court rules as following: To affirm Invalidation Request Decision No. 5941 made by the PRB. To burden the plaintiff with the acceptance fee of 1000 Yuan. Any party who is not satisfied with the judgment may appeal to the Beijing High Court within 15 days of receipt of the judgment.