*AI-generated translation, for reference only.

[Keywords]

Keywords: administrative; patent administration; reexamination-of-rejection procedure; practical applicability; positive effects; defect

[Case Facts]

Xiamen [REDACTED] Footwear Company is the applicant of the utility model patent application with Application No. 201820174833.3, entitled "A Shoe" (hereinafter the "application"). The China National Intellectual Property Administration (CNIPA), holding that the technical solution of the application was manifestly without benefit, divorced from social needs, and lacked practical applicability, issued on February 11, 2020 Reexamination Request Examination Decision No. 202217 (hereinafter the "contested decision"), upholding its decision to reject the application. Dissatisfied, Xiamen [REDACTED] Footwear Company 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 July 23, 2021, the Beijing Intellectual Property Court rendered Administrative Judgment (2020) Jing 73 Xing Chu No. 6492: dismissing Xiamen [REDACTED] Footwear Company's claims. Dissatisfied, Xiamen [REDACTED] Footwear Company appealed to the Supreme People's Court. On June 28, 2022, the Supreme People's Court rendered Judgment (2022) SPC IP Admin. Final 68: revoking the original judgment and the contested decision, and ordering CNIPA to make a new examination decision.

[Judge's Opinion]

The legally effective judgment of the court holds: Article 22, Paragraph 4 of the Patent Law provides: "Practical applicability means that the said invention or utility model can be made or used and can produce positive effects." The focus of dispute in this case is whether the application can produce positive effects. Being able to produce positive effects means that, as of the filing date of the invention or utility model patent application, the economic, technical, and social effects it produces are foreseeable to a person skilled in the relevant technical field. Such effects should be positive and beneficial. Only a technical solution of an invention or utility model patent application that is manifestly without benefit and divorced from social needs lacks practical applicability. It should be noted that requiring the invention or utility model for which a patent is sought to be able to produce positive effects does not require the invention or utility model to be entirely free of shortcomings. So long as the existing shortcomings or deficiencies are not so serious as to render the technical solution fundamentally incapable of being carried out or fundamentally incapable of achieving its inventive purpose, the technical solution cannot be denied practical applicability merely because of the existence of such or other shortcomings or deficiencies.

In this case, although, as stated in the contested decision and the first-instance judgment, there may be certain inconveniences in filling the hollow cavity involved in the application with items such as nail polish, ointment, and perfume, and in taking out and replacing such contents, the above items, being filled into the hollow cavity of the shoe, can be taken and used at any time when the user travels without the need to carry them separately, which can to some extent meet social needs and thereby produce positive and beneficial social effects, and is not manifestly without benefit. The contested decision and the first-instance judgment, in directly determining that the solution had no positive effects merely because the technical solution of the application might have certain defects, did not conform to the standard for determining practical applicability under the Patent Law, were somewhat improper, and should be corrected.

[Judgment Digest]

Practical applicability requires that an invention or utility model patent application be able to produce positive effects, but does not require it to be entirely free of defects; so long as the existing defects are not so serious as to render the technical solution incapable of being carried out or incapable of achieving its inventive purpose, the technical solution cannot be denied practical applicability on that ground alone.

[Related Index]

Article 22, Paragraph 4 of the Patent Law of the People's Republic of China (this case applies Article 22, Paragraph 4 of the Patent Law of the People's Republic of China as amended in 2008)

First Instance: Beijing Intellectual Property Court, Administrative Judgment (2020) Jing 73 Xing Chu No. 6492 (July 23, 2021)

Second Instance: Supreme People's Court, (2022) SPC IP Admin. Final 68 (June 28, 2022)