*AI-generated translation, for reference only.

[Keywords]

Keywords: administrative; reexamination of the rejection of an invention patent application; claims; clarity of the scope of protection; code; self-defined model designation

[Case Facts]

Li [REDACTED] is the applicant of the invention patent application with Application No. 201410853500.X, entitled "Type WA/B Ball-Screw Electric Speed-Regulating Disc-Type Magnetic Coupler." On April 11, 2019, the China National Intellectual Property Administration (CNIPA), after examination, decided to reject the application. The principal ground for rejection was that the application did not comply with Article 26, Paragraph 4 of the Patent Law of the People's Republic of China (hereinafter the "Patent Law"). Li [REDACTED] filed a request for reexamination, and on January 20, 2021, CNIPA issued Reexamination Request Examination Decision No. 243435, upholding the rejection decision made by CNIPA on April 11, 2019. Dissatisfied, Li [REDACTED] brought a lawsuit before the Beijing Intellectual Property Court, requesting revocation of the contested decision and an order directing CNIPA to make a new decision.

On August 26, 2022, the Beijing Intellectual Property Court rendered Administrative Judgment (2021) Jing 73 Xing Chu No. 3384: (1) revoking Reexamination Decision No. 243435 made by CNIPA; and (2) ordering CNIPA to make a new decision on the request for reexamination filed by Li [REDACTED] with respect to the invention patent application with Application No. 201410853500.X, entitled "Type WA/B Ball-Screw Electric Speed-Regulating Disc-Type Magnetic Coupler." Dissatisfied with the first-instance judgment, CNIPA appealed on the grounds that "WA Type," "WB Type," and "WA/B Type" were coined by Li [REDACTED], were not technical terms in common use in the art, and that the description of the application did not specify any particular meaning for them. On April 14, 2023, the Supreme People's Court rendered Administrative Judgment (2022) SPC IP Admin. Final 755: (1) revoking Administrative Judgment (2021) Jing 73 Xing Chu No. 3384 of the Beijing Intellectual Property Court; and (2) dismissing Li [REDACTED]'s claims.

[Judge's Opinion]

The legally effective judgment of the court holds that the focus of dispute in this case is how to determine whether the scope of protection of a claim is clear when expressions such as a code or a model designation self-defined by the applicant appear in the claim.

Article 26, Paragraph 4 of the Patent Law provides: "The claims shall be supported by the description and shall define the extent of the patent protection sought for in a clear and concise manner." Accordingly, the scope of protection of a claim shall be interpreted according to the meaning of the words used therein, and a claim should generally not be drafted using terms of indefinite meaning. The practice of using various codes or model designations self-defined by the applicant in a claim increases the ambiguity of the claim, impairs the public-notice and boundary-defining functions of the claim, causes inconvenience to the public in understanding the content of the claim, and needlessly increases the cost of ascertaining the scope of protection of the claim. Therefore, the use of a code or a self-defined model designation in a claim should ordinarily be restricted; only where it is not suitable to express the matter in words, or where the use of a code or a self-defined model designation is clearer and more concise than a description in words, may a code or a self-defined model designation be used, and the specific meaning of such code or self-defined model designation must be capable of being given a sole correct and reasonable interpretation from the description and the drawings, so that the claim expressed by such term is defined sufficiently clearly in terms of its scope of protection.

In this case, the claims of the application use the technical terms "WA Type," "WB Type," and "WA/B Type." Although a person skilled in the art knows that standard model designations exist for some mechanical equipment, the above "WA Type," "WB Type," and "WA/B Type" are not standard model designations in the art, but rather model designations self-defined by the application, and do not have any ordinary meaning. A claim should reflect, as a whole, the technical solution of the invention or utility model and set forth the essential technical features for solving the technical problem; the claims of the application should have set forth the specific structure of the coupler in order to make clear the scope of protection of the claims, rather than defining the scope of protection of the claims by means of self-defined model designations. The self-defined model designations in the application are not terms in general use in the art; although the description provides explanations of them, these explanations are all specific technical means that should, in principle, be written into the claims, instead of increasing the ambiguity of the claims by way of self-defined model designations. The description of the application's product structure does not constitute a clear definition of the model designation either, and the precise equipment structure represented by the designation cannot be determined on that basis. In summary, the "WA Type," "WB Type," and "WA/B Type" in the claims of the application have no ordinary meaning in the art, and the content recorded in the description does not render the scope of protection of the claims defined sufficiently clearly; under such circumstances, the contested decision's determination that the claims of the application do not comply with Article 26, Paragraph 4 of the Patent Law as amended in 2008 was not improper.

[Judgment Digest]

The use of a self-defined model designation in a claim should ordinarily be restricted and should be permitted only where it is not suitable to express the matter in words, or where the use of the self-defined model designation is clearer and more concise than expression in words; moreover, the specific meaning of such designation must be capable of being given a sole correct and reasonable interpretation from the claims and the description, so as to ensure that the scope of protection of the claim defined thereby is sufficiently clear.

[Related Index]

Article 26, Paragraph 4 of the Patent Law of the People's Republic of China (this case applies Article 26, Paragraph 4 of the Patent Law of the People's Republic of China as amended on December 27, 2008)

First Instance: Beijing Intellectual Property Court, Administrative Judgment (2021) Jing 73 Xing Chu No. 3384 (August 26, 2022)

Second Instance: Supreme People's Court, (2022) SPC IP Admin. Final 755 (April 14, 2023)