01Case overview
Recently, under the engagement of Shenzhen Kexin New Material Technology Co., Ltd. Guangdong Junlong Law Firm has received No. 564757 of an invalidation review decision made by CNIPA on the grounds that it did not comply with the provisions of Article 26, Paragraph 4 of the Patent Law, declaring that the invention patent of No. 201911425355.4 with name of “A photoinitiator, its crystallization preparation method and ink composition” invalid. The civil infringement litigation related to this patent involved a high amount of money and included appraisal procedures. The results of this invalidation allowed the client to safeguard its business interests, eliminate the threat of infringement litigation, and avoid bearing high compensation.
02Decision points
For chemical product claims, the scope of protection of the claim should be clearly defined so that the public can clarify the boundaries of patent protection. If parameter characteristics are used to define chemical products, the public cannot distinguish which products are covered by the claim and which products are not, that is, the rights boundary between the patentee and the public cannot be clearly demarcated, which resulted that the chemical products defined by the parameters unclear.
03Reasons for not complying with Article 26, Paragraph 4 of the Patent Law
The content of claim 1 of the patent is：
According to the patent specification, the statements of the patentee and the relevant journal articles, it can be seen that the size of the angle of repose is related to many factors. The factors include not only the physical properties of the powder itself, such as the particle size, particle shape of the powder, particle surface properties, electrostatic interaction etc., as well as external factors that have nothing to do with the powder itself such as temperature, humidity, etc.
The collegial panel believes that for 3-methyl-4′-phenylbenzophenone, it is a compound with a known chemical structure. Since the angle of repose will change with changes in multiple factors, claim 1 only relies on a specific angle of repose, which is hard to distinguish the product of this patent from other 3-methyl-4′-phenylbenzophenone products, resulting claim 1 unable to clearly define the boundaries of its chemical products.
04Typical meaning
In this invalidation case, the collegial panel clarified the relationship between patent rights and private rights in chemical patent cases related to parameter limitation from the perspective of “the claims should clearly limit the scope of patent protection required” stipulated in Article 26, paragraph 4, of the Patent Law. This case has guiding significance for the granting and confirmation of such cases.
In its invalidation decision, the collegial panel emphasized that although patent rights are private rights in the world, the Patent Law does not unconditionally protect private rights and undermine public interests. The legislative purpose of the Patent Law is to protect the legitimate rights and interests of patentees, encourage inventions and creations, promote the application of inventions and creations, improve innovation capabilities, and promote scientific progress and economic and social development. On the one hand, the Patent Law protects the legitimate rights and interests of patentees and encourages inventions and creations. On the other hand, the patent system adjusts people’s interest relationships in the process of creating and using patents by reasonably determining the boundaries of patentees’ rights to encourage innovation, promote economic development and social progress.
If an ill-defined right is included in the scope of patent protection, the public will not be able to clearly understand what kind of technical solution to implement and how to implement a technical solution that will infringe on the rights of the patentee, causing the public to fear infringement of patent rights. The inability to implement technical solutions related to patented technology not only harms the interests of the public, but also hinders the progress of science and technology and economic and social development. It actually violates the legislative intention of the patent law. Therefore, if the patentee adopts a method of defining parameters that cannot clearly define the scope of the patent right itself or cannot clearly define the boundary of rights between the patented product and the prior art to circumvent the prior art or expand the protection scope of the patent right, such behavior should not be encouraged.
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