Recently, the China National Intellectual Property Administration (CNIPA) issued an examination decision in a high-profile patent invalidation case, rejecting all invalidation grounds raised by the petitioner and maintaining the full validity of the core invention patent in question. The case was represented by the China Council for the Promotion of International Trade Patent and Trademark Law Office (hereinafter referred to as “CCPIT Patent and Trademark Office”) on behalf of an internationally renowned enterprise in the medical imaging field, securing a comprehensive victory for the client in this highly complex and closely watched intellectual property rights confirmation case.

The patent at issue embodies the core original technology of the client’s new-generation medical imaging diagnostic agents, holding critical strategic value for the product’s market launch and global commercial deployment. During the invalidation proceedings, the petitioner asserted comprehensive grounds spanning multiple dimensions, including the legality of patent amendments, the clarity of the claims' scope of protection, the support of the technical solutions by the description, as well as novelty and inventiveness. Involving numerous complex issues of legal application and professional technical disputes, the case carried a high degree of complexity.

To address the core disputes, the case handling team constructed a robust defense system, submitting well-founded arguments and evidence against each invalidation ground to clearly elucidate the patentability of each technical solution. Throughout the proceedings, the team accurately grasped the rules for interpreting claims in international applications entering the national phase, as well as the standards for determining the validity of product patents in the chemical field. By leveraging the conventional knowledge of those skilled in the art for rigorous reasoning, the team effectively refuted all of the opponent’s assertions, successfully safeguarding the stability of the client’s core patent rights.

Ultimately, through a comprehensive and rigorous response, the case handling team successfully maintained the full validity of the patent, establishing a solid legal barrier for the client’s market advancement and global intellectual property layout.

The case was handled by our specialized Chemical and Pharmaceutical Team, consisting of team members: Xu Da, Tan Wei, Wang Na, and Wang Xinlei.

In 2027, CCPIT Patent and Trademark Office will celebrate its 70th anniversary of providing intellectual property services. Over the past 70 years, we have upheld client rights and earned their trust through professionalism and dedication. Equipped with extensive experience in patent confirmation and enforcement cases, alongside teams possessing profound backgrounds across a wide range of technological fields, our office is particularly adept at handling intellectual property cases involving emerging technologies, complex industries, and cutting-edge legal issues. We remain committed to our founding mission of “Safeguarding Wisdom, Enriching Your Ideas,” continuously striving for excellence to provide industry-leading, reliable, and forward-looking legal services to domestic and international clients.

【Brief】
Because of the infringement dispute with Honda Motor over a Chinese design patent No. 01319523.9 titled "Vehicle" ("present patent"), Shijiazhuang Shuanghuan Automobile and Hebei Xinkai Automobile each filed a request for invalidation of the present patent at Patent Reexamination Board ("PRB"). The PRB heard the two cases jointly and made a decision No. 8105 on Mar. 07, 2006 declaring the present patent invalid over Japanese design gazette JP1004783 (“Exhibit 1"). Honda appealed to the Beijing First Intermediate People's Court, which affirmed the PRB decision No.8105. Honda then appealed to the Beijing High People's Court, which dismissed the appeal and affirmed the first instance judgment and the PRB decision. Upon Honda's petition for retrial, the Supreme People's Court (SPC) decided to hear the case with the writ of Certiorari. On Nov. 26, 2010, the SPC made its judgement vacating the first and second instance judgements and the PRB decision and held that the present patent and the design shown in Exhibit 1 are not similar designs.

 

【Reasoning】
The so-called "whole observation" covers all the design features of the visible parts of an article, rather than some specific parts thereof. The so-called "comprehensive judgment" indicates a judgment based on all the factors that may affect the overall visual effect of an article design. In the present case, the "whole” of the design of the vehicle in the disputed category of vehicles not only includes the general profile and proportional relationship among various parts of the vehicle, but also includes other factors such as the front, side, rear parts of the vehicle; all of them shall be observed and considered. When making a comprehensive judgment, one should weigh the influence of each of the parts on overall visual effect of the vehicle design according to the characteristics of the disputed category of vehicles. Regarding the disputed category of vehicles in the present case, the vehicles share similar profiles, which features have limited effect on the visual effect to an ordinary consumer; while the changes in the design features in the portions such as the front, the side and the rear parts of the vehicle will draw more attention from an ordinary consumer. The differences (i.e. the changes) between the present patent and Exhibit 1 are obvious to the ordinary consumer of the category of vehicles at issue and are sufficient to distinguish the overall visual effect of the vehicle design shown in the present patent from that in Exhibit 1.