*AI-generated translation, for reference only.

Keywords: Administrative; invalidation of utility model patent right; claim; clarity of the scope of protection; obvious error

Case Facts

Zhang [REDACTED] is the patentee of the utility model patent titled "Fully Automatic Panel-Assembling Box-Making Machine" with Patent No. 201320862896.5. On September 14, 2020, a [REDACTED] Packaging Machinery Company in Dongguan City filed a request for invalidation against the patent right. In response, on March 29, 2021, the China National Intellectual Property Administration (CNIPA) issued Invalidation Request Examination Decision No. 49013, holding that the patent lacked inventiveness and declaring the patent right wholly invalid. Dissatisfied, Zhang [REDACTED] filed a lawsuit before the Beijing Intellectual Property Court, requesting revocation of the challenged decision and an order that CNIPA make a new decision.

On March 24, 2022, the Beijing Intellectual Property Court issued Administrative Judgment (2021) Jing 73 Xing Chu No. 10961: the claims of Zhang [REDACTED] are dismissed. Zhang [REDACTED] appealed, and on June 20, 2023, the Supreme People's Court issued Administrative Judgment (2022) SPC IP Admin. Final 858: 1. the Administrative Judgment (2021) Jing 73 Xing Chu No. 10961 of the Beijing Intellectual Property Court is revoked; 2. Invalidation Request Examination Decision No. 49013 of the China National Intellectual Property Administration is revoked; 3. the China National Intellectual Property Administration shall make a new examination decision on the invalidation request filed by a [REDACTED] Packaging Machinery Company in Dongguan City against the utility model patent titled "Fully Automatic Panel-Assembling Box-Making Machine" with Patent No. 201320862896.5.

Judge's Opinion

The court's effective judgment held that Article 26, Paragraph 4 of the Patent Law provides that the claims shall be supported by the description and shall define, clearly and concisely, the scope of patent protection sought. The claims express the technical solution in the form of textual recordation; owing to the inherent difference between textual recordation and the technical solution, whether the meaning of a claim is clear, whether there is an obvious error, and the specific meaning of its content must all be determined from the perspective of a person skilled in the art, so as to delimit the scope of patent protection. If a person skilled in the art, by reading the claims and the description of the patent, is able to arrive at a definite interpretation of the claim—including ascertaining that there is an error in the drafting of the claim and arriving at definite correct content—then it should be held that, for a person skilled in the art, the scope of patent protection is still clear. In order to avoid undue expansion or narrowing of the scope of protection and to ensure the stability of the right, interpretation of a drafting error may be directed only at an obvious error. A so-called obvious error means an error such that, for a person skilled in the art, if, on the basis of the common technical knowledge possessed, he or she is able, upon reading the claims, to immediately discover that a certain technical feature contains an error and, combining the common technical knowledge possessed, is able, upon reading the relevant content of the description and the accompanying drawings, to immediately determine the unique correct answer thereto. Claim 5 of the patent recites "The fully automatic panel-assembling box-making machine according to claim 4, characterized in that the right-side-plate conveying device is provided with a guide-rail pair"; claim 6 recites "The fully automatic panel-assembling box-making machine according to claim 5, characterized in that the guide-rail pair is an open-type linear guide rail"; and claim 7 recites "The fully automatic panel-assembling box-making machine according to claim 6, characterized in that the guide-rail pair is a closed-type linear guide rail." Viewed solely from the relationship between claims 6 and 7 of the patent, claim 6 records that the guide-rail pair is an "open-type linear guide rail," whereas claim 7 cites claim 6 but records that the guide-rail pair is a "closed-type linear guide rail"; therefore, as to whether the form of the guide-rail pair in claim 7 is an open-type linear guide rail or a closed-type linear guide rail, there may be an issue of lack of clarity. However, when considered together with the recordation in the description and the drawings, paragraph [0160] of the description records that in Embodiment 1 "the bottom-plate conveying device is provided with a guide-rail pair, and the guide-rail pair is an open-type linear guide rail," and paragraph [0162] of the description records that Embodiment 2 is "the same as Embodiment 1, the difference being that the guide-rail pair is a closed-type linear guide rail." Therefore, with respect to the recordation of claim 5, namely "the right-side-plate conveying device is provided with a guide-rail pair," claims 6 and 7 further define the structure of the "guide-rail pair," and according to the recordation in the description of the patent, the guide-rail pair has only two structures: the "open-type linear guide rail" and the "closed-type linear guide rail." Therefore, where claim 6 of the patent has already expressly defined the guide-rail pair in claim 5 as an "open-type linear guide rail," a person skilled in the art, after reading the description and the drawings of the patent and on the basis of common technical knowledge in the art, is able to confirm that the "closed-type linear guide rail" of claim 7 of the patent is in essence a specific definition of the "guide-rail pair" in claim 5. The drafting of "according to claim 6" in claim 7 of the patent constitutes an obvious error, and the scope of protection of claim 7 is clear to a person skilled in the art.

Judgment Digest

Where a person skilled in the art, after reading the claims and the description, is able to determine that there is an obvious error in the drafting of a claim and is able to determine the unique correct answer, it should, in principle, be held that the scope of protection of the claim is clear. Where a party asserts that the scope of protection of the claim is unclear solely on the ground that this obvious error exists, the people's court will not support such an assertion.

Related Index

Article 26, Paragraph 4 of the Patent Law of the People's Republic of China (the version applicable to this case is Article 26, Paragraph 4 of the Patent Law of the People's Republic of China that took effect on October 1, 2009)

First instance: Administrative Judgment (2021) Jing 73 Xing Chu No. 10961 of the Beijing Intellectual Property Court (March 24, 2022)

Second instance: Administrative Judgment (2022) SPC IP Admin. Final 858 of the Supreme People's Court (June 20, 2023)