How to prove whether the specification is fully disclosed and whether the claim is supported (1)

The description of the substantive requirements in the third paragraph of Article 26 of the Patent Law shall be fully disclosed, so as to ensure that the technicians in this field can realize at least part of the technical solutions in the claims. The essence of the fourth paragraph of Article 26 of the Patent Law is that the scope of protection outlined in the claims should not be too broad, and all technical solutions should be supported by the specification, in other words, the specification should be fully disclosed to ensure that the technicians in this field can realize all technical solutions in the claims. One of the main problems of the above two clauses in judicial practice is how to prove whether they are fully open and supported, which mainly involves four aspects: First, whether the parties can submit supplementary evidence in litigation. Second, who will bear the adverse consequences of unclear authenticity. Third, to what extent should sufficient publicity and support be proved. Fourth, how to transfer the burden of proof between the parties. Limited by space, this paper intends to discuss the first two issues, and the last two issues will continue to be discussed in the next column. I. Whether the parties can supplement evidence in litigation In administrative cases involving whether the explanations are fully disclosed and whether the claims are supported, whether the parties can supplement evidence is a common problem in judicial practice. To analyze this problem, we must first emphasize that in China, in principle, the parties are not allowed to submit supplementary evidence in administrative proceedings. In administrative proceedings, the people's court mainly examines whether a specific administrative act is legal. Whether a specific act of the Patent Reexamination Board in a case of authorization and confirmation is legal shall be judged according to the evidence when it makes a reexamination decision or an invalid decision. Therefore, in the case of patent authorization, in principle, the parties are not allowed to submit supplementary evidence. However, in order to ensure the legitimate rights and interests of the parties, it is not absolutely impossible to submit supplementary evidence in administrative cases. Kong Xiangjun, president of the Intellectual Property Court of the Supreme People's Court, believes that the provision in Article 59 of the Supreme People's Court's Provisions on Several Issues Concerning Evidence in Administrative Litigation establishes a conditional "case file exclusion" rule for the plaintiff to submit evidence and provides a theoretical basis for the conditional adoption of supplementary evidence in litigation. According to this theory, in the judicial practice of trademark authorization cases, if the trademark application is rejected by the Trademark Review and Adjudication Board or the trademark is revoked, and the trademark applicant or trademark owner has no other remedies, the court may accept the evidence submitted by the trademark applicant or trademark owner in the lawsuit. Similarly, in the judicial practice of patent authorization cases, if the patent application is rejected or the patent right is declared invalid, the patent applicant and patentee have no other remedy except litigation, and they should be conditionally allowed to supplement evidence in the litigation. Whether this patent conforms to the provisions of the third and fourth paragraphs of Article 26 of the Patent Law shall be judged by the technicians in this field. The technician in this field is a virtual "person", and neither the examiner nor the judge is a natural technician in this field. What kind of conclusions will be drawn by technicians in this field in the face of the evidence in the file depends on their knowledge and ability. The knowledge and ability of technicians in this field need to be identified through evidence in the case of disputes between the two parties. In the case of patent authorization, it is very important to prove the knowledge and ability of technicians in this field through the submitted evidence, so that judges can really make judgments from the standpoint of technicians in this field. Therefore, the parties should be conditionally allowed to submit evidence to prove the knowledge and ability of technicians in this field. In an administrative case of authorization and confirmation, the parties concerned cannot submit additional evidence to prove the knowledge and ability of technicians in this field. The fundamental purpose of the third and fourth paragraphs of Article 26 of the Patent Law is to require the patent applicant to fully disclose relevant technical information in the patent application documents, so that technicians in this field can realize all technical solutions in the claims on the basis of the specification. Whether the patent applicant fully discloses the relevant technical information shall be based on the date of patent application, and the patent applicant shall not be allowed to supplement the technical information in the specification at will in the process of rejection and reexamination, nor shall the patentee be allowed to supplement the technical information at will in the invalidation procedure to replace the requirement of fully disclosing the relevant technical information in the specification before the application date. Therefore, in the process of substantive examination, patent reexamination, patent invalidation and patent authorization confirmation proceedings, patent applicants and patentees cannot be allowed to supplement the technical information that should be recorded in the specification of the application date by supplementary evidence. That is to say, in the process of patent authorization, the evidence submitted by the patent applicant or patentee cannot replace the role of the patent specification, nor can it make up for the defects in the specification. To sum up, in the administrative litigation about whether the instructions are fully disclosed and whether the patent claims are supported, the following rules should be established for the parties to submit supplementary evidence: First, in the administrative dispute cases authorized by the patent, that is, the administrative dispute cases in which the patent application is rejected and examined, the Patent Reexamination Board cannot submit supplementary evidence in principle, because before making an administrative decision, the legality of the administrative act should be ensured. If the patent application is rejected, the patent applicant may submit supplementary evidence to prove the knowledge and ability of the technicians in this field. The Patent Reexamination Board may submit evidence to the contrary against the evidence submitted by the patent applicant. Second, in the administrative dispute case of patent confirmation, that is, the administrative dispute case of invalid patent, the invalid claimant can not supplement the evidence that was not examined when the invalid request was examined in principle, because the invalid claimant can also re-submit the invalid request based on new evidence. In the case of patent confirmation, if the patent right is declared invalid, the patentee may supplement and submit evidence to prove the knowledge and ability of technicians in this field. The Patent Reexamination Board and the invalid claimant may disprove the supplementary evidence submitted by the patentee. Third, in principle, patent applicants and patentees cannot supplement experimental data that are not recorded in the specification. Unless the experimental data itself is used to prove the professional knowledge and ability of technicians in this field, it is not used to make up for the shortcomings of insufficient disclosure of this patent specification. Second, if the authenticity is unknown, who should bear the adverse consequences? In the trial practice of patent authorization confirmation, whether the patent application or patent conforms to the provisions of the third and fourth paragraphs of Article 26 of the Patent Law is not only a legal issue, but also a factual issue. The parties claim that whether the technicians in this field can realize some technical solutions can prove their claims by proving the knowledge and ability of the technicians in this field. A common problem in judicial practice is that if it is really impossible to judge which side's claim can be established on the basis of existing evidence, who should bear the adverse consequences. Generally speaking, the burden of proof can be divided into the burden of proof in the sense of behavior and the burden of proof in the sense of result. The former means that the parties bear the burden of proof for the facts they claim, which is called behavioral liability for short; The latter refers to the fact that when the truth is unknown, the party who advocates the fact bears the responsibility for the adverse consequences of the lawsuit, which is referred to as the responsibility of result, sometimes called the burden of proof. If it is still difficult for judges to judge whether some technical schemes can be realized on the basis of existing evidence, how to determine the adverse consequences should be decided by the burden of proof or the distribution of the burden of proof in the sense of results. Therefore, the distribution of burden of proof is very important, which often determines the outcome of the case. In a patent authorization administrative dispute case, if the patent applicant and the Patent Reexamination Board have a dispute about whether the technical personnel in this field can realize all or part of the technical scheme in the claim on the basis of the specification, and it is still difficult to judge whose claim can be established based on the evidence filed, who should bear the adverse consequences? The author believes that the patent applicant should bear the adverse consequences. This is because, from the standpoint of the technical personnel in this field, it is still difficult for the judge to judge whether all or part of the technical scheme in the claim can be realized according to the specification, which just shows that the specification is not fully disclosed or the generalization of the claim is too broad to be supported by the specification. In the administrative dispute case of patent confirmation, if there is a dispute between the invalid claimant and the patentee about whether some technical scheme can be realized, it is really difficult for the judge to judge whose claim can be established based on the evidence filed, so who should bear the adverse consequences? In my opinion, there may be three different views. The first view is that invalid claimants should bear the adverse consequences. The main reason is that once a patent is authorized, it should be presumed to be valid, and the invalid claimant should bear the burden of proof for the claim that the patent is invalid. The second view is that the patentee should bear the adverse consequences. The main reason is that only patent applications that meet the third and fourth paragraphs of Article 26 of the Patent Law can be granted a patent right. The patent applicant and the patentee shall bear the burden of proof to prove that the patent application or patent complies with the provisions of paragraphs 3 and 4 of Article 26 of the Patent Law from beginning to end. The third point is to distinguish between invention patents and utility model patents. If it is an invention patent, it is difficult to judge whether some technical solutions in the claim can be realized, and the invalid obligee shall bear the adverse consequences; If it is a utility model patent, it is difficult to judge whether some technical solutions in the claim can be realized, and the patentee shall bear the adverse consequences. The main reason is that in the process of substantive examination, the examiner has examined whether this patent conforms to the provisions of the third and fourth paragraphs of Article 26 of the Patent Law, so it can be presumed to be effective. However, the utility model patent has not undergone substantive examination, and no one has examined whether it conforms to the provisions of the third and fourth paragraphs of Article 26 of the Patent Law, so it cannot be presumed to be effective. The author believes that, on the whole, the third view seems more reasonable. Of course, according to the current level of patent examination in China, it is worthy of further discussion whether it can be preliminarily presumed that the invention patent after substantive examination conforms to the provisions of the third and fourth paragraphs of Article 26 of the Patent Law.