China: An Analysis Of The Supreme Court’s Ruling On Amendments To Claims In Patent Invalidation Procedures

Summary

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 Invalidation Procedures

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 litigation).

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 ."

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