China: Interpretation Of Markush Claims In A Recent Supreme People's Court Decision

Last Updated: 31 October 2018
Article by Wei Yang

On December 20, 2017, the Supreme People's Court made a Decision (2016) No.41 on a retrial case for Chinese patent 97126347.7. In this Decision, the interpretation of Markush claims is specified and accordingly the standards as to the amendments to such claims are established.

Markush claims are often found in patent applications for chemical inventions. A Markush claim represents a claim that is drafted by defining alternative elements in parallel therein. The reason that the claim is drafted in such manner is that, for some alternative elements, there is no any generic term available. With such drafting manner, the Markush claim has relatively wide protection scope, and thus once it is granted, the benefit of the patentee would be maximized. However, due to its high generalization, the Markush claim itself is relatively unstable if someone files a request for invalidation against the same. In this scenario, in order to avoid a Markush claim being invalidated, the patentee might choose to amend it by deleting some Markush elements. Due to the contradictory interpretation of the Markush claim between different authorities, however, it has been in dispute for many years as to whether it is acceptable to amend Markush claims by deleting Markush elements during the invalidation proceedings.

There are two views in terms of the Markush claim interpretation. One view is that the Markush claim relates to an integral technical solution, which is held by the Patent Reexamination Board and Beijing Intellectual Property Court. According to this view, it is not acceptable to amend the Markush claim by deleting Markush elements during the invalidation proceedings. The other view is that the Markush claim relates to a collection of individual technical solutions in parallel, which is held by Beijing Higher People's Court. According to this view, it is acceptable to amend the Markush claim by deleting Markush elements during the invalidation proceedings. Under such circumstances, many important cases cannot always obtain consistent examination results, and consequently individual parties cannot obtain exact legal expectation, either.

For settling the above-mentioned dispute, the Supreme People's Court brought up a case involving the amendments to the Markush claim for retrial, and made a decision after careful consideration and investigation for three years.

This case relates to Patent 97126347.7 entitled "a method for preparing a pharmaceutical composition for treating or preventing hypertension", which was filed on February 21, 1992 by Daiichi Sankyo Company Limited and granted on September 24, 2003.

Claim 1 as granted of the subject patent can be read as:

A method for preparing a pharmaceutical composition for treating or preventing hypertension, comprising mixing an antihypertensive agent with a pharmaceutically acceptable carrier or diluent, wherein the antihypertensive agent is at least one compound as represented by Formula (I) or a pharmaceutically acceptable salt or ester thereof,

wherein:

R1 represents alkyl having 1-6 carbons;

R2 and R3 are identical or different and each represent alkyl having 1-6 carbons;

R4 represents:

hydrogen; or

alkyl having 1-6 carbons;

R5 represents carboxyl, COOR5a or –CONR8R9, wherein R8 and R9 are identical or different and each represent:

Hydrogen;

unsubstituted alkyl comprising 1-6 carbons;

alkyl comprising 1-6 carbons and substituted with carboxyl or carbalkoxy having 1-6 carbons in its alkyl moiety; or

R8 and R9 together represent alkylene having 2-6 carbons and substituted with one carbalkoxy having 1-6 carbons in its alkyl moiety;

and wherein R5a represents:

alkyl having 1-6 carbons;

alkylacyloxyalkyl, wherein its alkylacyl moiety and alkyl moiety each comprise 1-6 carbons;

carbalkoxyoxyalkyl, wherein its alkoxy moiety and alkyl moiety each comprise 1-6 carbons;

(5-methyl-2-oxo-1,3-dioxol-4-yl)methyl; or

2-benzo[c]furanonyl;

R6 represents hydrogen; and

R7 represents carboxyl or tetrazol-5-yl.

Beijing Winsunny Harmony filed a request for invalidation against this patent before the Patent Reexamination Board on April 23, 2010, alleging that, among others, claim 1 does not possess inventiveness.

In reply to the request for invalidation, the patentee amended claim 1 by, among others, deleting "alkyl having 1-6 carbons" from the definition of R4, and other options except carboxyl and COOR5a wherein R5a represents (5-methyl-2-oxo-1,3-dioxol-4-yl)methyl from the definition of R5.

The Patent Reexamination Board did not accept the above-mentioned amendments. The court of first instance, namely Beijing Intellectual Property Court, held the same view as that of the Patent Reexamination Board, while the court of second instance, namely Beijing Higher People's Court held a different view from that of the Patent Reexamination Board.

In this decisionthe Supreme People's Court specifies the interpretation of the Markush claim as follows, and accordingly sets standards as to the amendments to the Markush claim during the invalidation proceedings.

As to the interpretation of Markush claims

According to the Supreme People's Court, the Markush claim is a special drafting manner for claims in patent applications for chemical inventions. It is a claim that is generalized by defining alternative elements in parallel in a single claim. The reason that such drafting manner appears initially is that, for some substituents in the chemical field, there is no common generic term available. Such drafting manner per se is always considered as a structural but not functional expression. What is defined in the Markush claim is alternative elements in parallel, but not sub-claims. Despite the particularity of its drafting manner, the Markush claim shall comply with the provisions as to unity. Where the Markush elements represent compounds, the Markush claim shall be considered to have unity where all alternative compounds (1) have common properties and effects, and (2) possess common structures or alternatively all the alternative elements belong to the same compound category recognized in the field to which the invention belongs where said all alternative compounds do not possess common structures.

Furthermore, the Markush claim is highly generalized and thus, once granted, shall have protection scope covering all compounds having common structure, properties or effects, thereby maximizing the benefit of the patentee. Essentially, a patent right means a monopoly of a certain right, and the greater the scope of the patent right owned by the patentee is, the more limitation the public has. Thus, from the view of justice, the interpretation of the Markush claim shall be made strictly. No matter how many variables and combinations the Markush claim comprises, it shall be deemed as a generalized combination solution. Where individual variables are selected, the corresponding individual pharmaceuticals as defined in this Markush claim shall have effects without too much difference, may be replaced with each other, and shall be expected to achieve the same effect. Such an interpretation is in line with the object of Markush claims In view of the above, and the Markush claim shall be deemed as a collection of Markush elements rather than a collection of individual compounds. Generally, the Markush elements shall be interpreted as representing one category of compounds having common properties and effects, and can represent single compounds only under specific situations.

As to the amendment manner to the Markus claim during the invalidation proceedings

The Supreme People's Court held that in view of the particularity for the inventions in the chemical field and that the applicant has opportunities to put all possible structural formulae into one claim when drafting the claims, so as to maximize the protection scope, the amendment to the Markush claim during the invalidation proceedings shall be given strict restrictions, and in principle, the amendments to the Markush claim shall not result in a compound category or single compounds having new property and effect, and the factors relating to individual cases shall be taken into full consideration at the same time. If the patent applicant or the patentee is allowed to delete any option for any variable, even though the protection scope is narrowed and the benefit of the public is not damaged, it would be uncertain whether such deletion results in new protection scope, which neither gives the public stable legal expectation, nor helps to maintain the stability of the system of determining the patent right.

From this decision, two conclusions can be drawn: (1) the Markush claim shall be deemed as an integral technical solution; and (2) the Markush claim may be amended by deleting Markush elements during the invalidation proceedings, provided that such deletion does not result in a compound category or single compounds having new properties and effect.

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions