With respect to the amendments to claims in patent invalidation
procedures, the Guidelines for Examination provide that, "the
specific manners of amendment are generally limited to deletion of
a claim, combination of claims and deletion of a technical
solution", and in the hearings of invalidation cases, the
Patent Reexamination Board also implements the said rules. In an
administrative dispute involving patent invalidation, the Beijing
Municipal Higher People's Court held that, in addition to the
said manners, an amendment in any other manner is also applicable
provided that such amendment is in conformity with the relevant
provisions concerning the amendments to claims in patent
invalidation cases as set forth in the Patent Law and Implementing
Rules of the Patent Law. The decision of the Beijing Higher Court
was upheld by the Supreme People's Court. This article analyzes
the grounds on which the Beijing Higher Court made the decision and
the Supreme Court made the ruling, and also analyzes whether such
decision and ruling will cause legal issues in the aspect of
confirming a patent right.
Key Words: patent invalidation, claims,
amendment manner, confirming a patent right
Supreme Court's Ruling on Amendments to Claims in Patent
The Patent Reexamination Board (hereinafter referred to as the
"PRB") filed a petition with the Supreme People's
Court (hereinafter referred to as the "SPC") for a
rehearing of the administrative dispute involving patent
invalidation "Zhixingzi No.17/2011" arising between the
PRB and Jiangsu Simcere Pharmaceutical R&D Co., Ltd. (Jiangsu
Simcere Company), Nanjing Simcere Pharmaceutical R&D Co., Ltd.
(Nanjing Simcere Company) and Li Ping (the third party to the
The SPC rejected the PRB's request for a rehearing. Under
the decision delivered by the SPC it was found that, "in the
patent invalidation procedures, while complying with amendment
principles, the specific manners of amendment are generally limited
to the three manners—deletion of a claim, combination of
claims and deletion of a technical solution; however it does not
rule out other manners of amendment ."
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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