Brief introduction of the case:
The patent number involved is named "Control Unit and Control Method of Radiation Source and Radiation Detection System and Method", and the patentees are Tongfang Weishi Technology Co., Ltd. and Tsinghua University. The filing date is 10, 13, and the authorization announcement date is 20 1 1. There are 48 claims in the authorization announcement. The invalid claimant, Beijing Hejun Xinda Technology Co., Ltd., filed a request for invalidation with the original Patent Reexamination Board on March 24, 2007. After receiving the invalid transmittal from the Reexamination Board, the patentee submitted the revised version of 1 within the specified time limit, and revised 48 claims in the authorization text into 272 claims. 20 17 10 19 Both parties participated in the oral hearing. During the oral hearing, the patentee proposed to delete 196 claims from the revised 272 claims, and submitted the revised text 2 containing the remaining 76 claims after the oral hearing. On April 20 18 1 1 day, the Patent Reexamination Board made an invalid decision, and maintained the validity of the patent right on the basis of the revised text 2 containing 76 claims submitted by the patentee. The plaintiff refused to accept the invalid decision and filed a lawsuit in Beijing Intellectual Property Court. Beijing Intellectual Property Court's first-instance judgment: the reexamination decision made by the original reexamination board was revoked, and the reexamination board made a new decision. The patentee refused to accept the judgment of first instance and appealed to the Supreme People's Court. The Supreme Court's second-instance judgment rejected the appeal and upheld the original judgment.
One of the focuses of the dispute in this case is whether the patentee's modification of the claim in the invalid procedure is beyond the scope. In the invalid procedure, the patentee modifies the claim in two ways, and the Supreme Court respectively explains whether the two modification methods are beyond the scope.
The first modification means simply changing the reference relationship of the dependent claims without modifying the claims cited by the dependent claims. Taking dependent claim 4 as an example, claim 4 cited claim 3 when it was authorized in the announcement, and claim 3 cited claim 2, while the patentee changed claim 4 to cite claim 2 in the invalid procedure. Compared with the original claim 4, it is equivalent to deleting the technical feature of the original claim 3, that is, defining the position of the second detector "the second detector is located between the first detector and the radiation source".
The Supreme Court held that the right holder's modification of the claim by changing the citation relationship to delete the relevant technical features does not violate the relevant provisions of the Patent Law and its detailed rules for implementation, and can be regarded as the modification method of "further qualification of the claim" in the examination guide. The Supreme Court revised the comparison method adopted by the court of first instance when judging whether the modification of the claim is out of scope, and held that the original independent claim should be taken as the benchmark when judging whether the modification is out of scope, that is, the revised claim 4 should be compared with the original claim 1, rather than the original claim 4 which has the greatest correspondence with it.
Although the Supreme Court approved the first amendment itself, it still did not support the above amendment by the patentee in this case. According to the Supreme Court, the final question to judge whether the amendment of the claim is out of scope lies in whether the technical scheme requested by the revised claim (1) is beyond the maximum protection range set by the original patent independent claim, and (2) whether it belongs to the technical scheme that can be "directly and clearly deduced" by technicians in this field after reading the original patent claim, its specification and drawings.
The Supreme Court held that in this case, the technical feature of "the second detector is located between the first detector and the radiation source" was deleted from the revised Claim 4, and the technical scheme requested for protection was extended to several technical schemes in which the second detector is located in other positions, which were not explicitly mentioned or discussed in the original patent claim, specification and drawings. At the same time, the modification also deviates from the technical prudence and safety principles in the research and development of high-energy radiation detection equipment to a certain extent. It is difficult for technicians in this field to directly and clearly deduce all the above new technical schemes after reading these technical materials, that is, the modification is not supported by the specification and drawings, so the modified Claim 4 violates the principle of "direct and clear derivation" and does not conform to the provisions of Article 68 of the Implementing Rules of the Patent Law of 200 1.
The second revision refers to the formation of several new claims on the basis of the original claims after more than two "further definitions". Taking claims 13 and 14 as examples, the revised independent claim 13 is formed by adding some features of the original claim 2 and all features of the original claim 3 on the basis of the original independent claim 1; The revised claim 14 is based on the original independent claim 1, adding some features of the original claim 2 and all features of the original claim 5.
For the second modification, the Supreme Court also recognized the modification itself, but held that the modified claims 13 and 14 made the technical scheme more complicated, and the technicians in this field could not directly and clearly deduce the new technical scheme after reading the original claims and their specifications and drawings, and the modification could not be supported by the specifications and drawings. Therefore, the revised claims 13 and 14 do not conform to the provisions of Article 68 of the Implementing Rules of the 200 1 Patent Law.
case analysis
Paragraph 1 of Article 69 of the Detailed Rules for the Implementation of the Patent Law stipulates that in the process of examining the request for invalidation, the patentee of a patent for invention or utility model may amend its claim, but shall not expand the scope of protection of the original patent (that is, paragraph 1 of Article 68 of the Detailed Rules for the Implementation of the Patent Law of 200/KLOC-0 is applicable to this case).
Article 3 of Chapter 4 of the Examination Guide stipulates that in the procedure of invalidation of a patent for invention or utility model, only the claim can be amended, and the principle of amendment is: (1) the subject name of the original claim shall not be changed. (2) Compared with the authorized claim, the protection scope of the original patent shall not be expanded. (3) It shall not exceed the scope recorded in the original specification and claims. (4) In general, technical features not included in the authorization claim shall not be added. Article stipulates that the specific ways to modify the patent right are generally limited to deleting the patent right, deleting the technical scheme, further defining the patent right and correcting obvious mistakes.
According to the view of the Supreme Court in this case, the two modification methods adopted by the patentee in this case can be classified as "further qualification of the claim", which belongs to one of the modification methods specified in the above review guide. In addition, judging from the judgment standard established by the Supreme Court in this case, the comparison standard of whether the claim modification is out of scope in the invalid procedure should be the original independent claim rather than the corresponding subordinate claim, but at the same time, the Supreme Court has not completely released the freedom of modification within the protection scope of the original independent claim, but strictly limited the modification to meet the requirement that "the technicians in this field can' directly and clearly deduce' after reading the original claim and its specification and drawings".
In this case, the amendment to the claim accepted by China National Intellectual Property Administration in the invalid procedure was not supported by the court in the subsequent administrative proceedings, reflecting that the standards of whether China National Intellectual Property Administration and the court should accept the amendment to the claim in the invalid procedure are inconsistent. It can be seen that the patentee's modification is at risk of not being accepted in every link, which enlightens us to strictly grasp the way of claim modification in invalid procedure in practice, and limit it to the original independent claim, specification and attached drawings to avoid losing the patent right because the modification is deemed as "out of scope" and not accepted. In addition, in the patent application stage, all feasible technical solutions should be included in the specification as far as possible to support the modification of subsequent claims, provide enough modification space, and strive for more opportunities for the patentee to retain the patent right.