Supplementary Experimental Data to Prove Inventive Step: Acceptance Conditions
Guest Author: David Lee[1]
English Editors: Han-Mei Tso and Xi-Pei Cheng
On September 4, 2024, the China National Intellectual Property Administration (“CNIPA”) issued an invalidation decision on a utility model patent (Pat. No. ZL201620610437.1, hereinafter referred to as “the Patent-in-Issue”) owned by Joyoung Co., Ltd. (the “Patentee”). After reviewing the case, the panel concluded that some claims of the Patent-in-Issue lack inventiveness, and therefore the Patent-in-Issue is partially invalid.
The Patent-in-Issue relates to a heating food processor. During the invalidation proceeding, the Patentee amended claim 1 as follows:
1. A heating food processor, comprising a base, a motor and a control panel arranged in the base, a stirring cup arranged on the base, and a cup cover covering the stirring cup, wherein a heating plate is arranged at a bottom of the stirring cup, and a grinding blade driven by a motor is arranged at a center of the heating plate, wherein a mounting hole is arranged at a position eccentric from the center of the heating plate, and a detection device is arranged at the mounting hole, wherein the detection device comprises a detection probe and a metal sleeve that fits around the detection probe and protrudes from a surface of the heating plate, wherein a sealing ring is arranged between the metal sleeve and the heating plate, and wherein a distance from the metal sleeve to the center of the heating plate is D, a radius of the heating plate is R , 0.2R≤D≤0.8R, a distance from a top of the detection device to an inner bottom surface of the heating plate is H1, a distance from a lower end of the grinding blade to the inner bottom surface of the heating plate is H2, H2>H1, and 0.2H2≤H1≤0.8H2.
During the proceeding, after comparing the Patent-in-Issue with the evidence provided by the invalidation petitioner, the panel stated that the main distinguishing features are: “wherein a distance from the metal sleeve to the center of the heating plate is D, a radius of the heating plate is R , 0.2R≤D≤0.8R, a distance from a top of the detection device to an inner bottom surface of the heating plate is H1, a distance from a lower end of the grinding blade to the inner bottom surface of the heating plate is H2, H2>H1, and 0.2H2≤H1≤0.8H2.”
Regarding the above-mentioned distinguishing technical features, the specification of the Patent-in-Issue describes: the technical effect of 0.2R≤D≤0.8R is to enhance the turbulence effect, thereby improving the grinding efficiency; and the technical effect of 0.2H2≤H1≤0.8H2 is to ensure both good grinding effect and grinding efficiency and avoid interference between the detection device and the grinding blade. In order to prove that the distinguishing technical features have an unexpected technical effect, the Patentee submitted supplementary experimental data to prove the technical effect of this patent.
Regarding the supplementary experimental data submitted by the Patentee, the panel acknowledged that the supplementary experimental data of the Patentee could prove to a certain extent that the above-mentioned distinguishing technical features (i.e., the selection of the position and height setting range of the detection device) have an unexpected technical effect. However, the panel contended that the supplementary experimental evidence is unacceptable. The panel contended that the standard for the acceptance of supplementary experimental data is that “the technical effect proved by the supplementary experimental data should be obtained by a person skilled in the art from the disclosure of the patent application... This patent only describes that the grinding effect is good within the selected range and poor beyond the selected range, without analyzing or confirming how its technical effect is unexpected... That is, a person skilled in the art would not obtain the technical effect confirmed by the experimental data from the patent application documents.” Because the supplementary experimental evidence is unacceptable, the panel concluded that the selection of the position and height parameter range of the detection device in claim 1 of the Patent-in-Issue can be obtained by a person skilled in the art through customary means, and the description in the specification of the Patent-in-Issue fails to show that it has an unexpected technical effect, and therefore the claim lacks inventiveness.
However, whether the reasoning of the panel’s decision that claim 1 lacks inventiveness is justified and whether the supplementary experimental data used to prove that the distinguishing technical feature has an unexpected technical effect can be accepted appear to be debatable.
The panel stated that the standard for the acceptance of supplementary experimental data is that the technical effect to be proved by the experimental data needs to be disclosure of the specification of the patent. In fact, this is clearly described in the specification, that is, the parameter range of the distinguishing technical feature is to enhance the turbulence effect and improve the grinding efficiency. Furthermore, the panel stated that how the technical effect of “good grinding effect” brought about by the selection of the parameter range of the distinguishing technical feature “is specifically unexpected” is not analyzed or confirmed in the specification of the patent. The logic of the panel appears to be that the Patentee fails to provide, in the specification of the Patent-in-Issue, specific experimental data to prove the unexpected technical effect of the patent, and therefore it could not prove the inventiveness of the Patent-in-Issue through subsequent supplementation. In other words, the panel does not accept the use of content not described in the original specification to prove the inventiveness of the Patent-in-Issue.
Regarding the question of whether the supplementary experimental data should be accepted, the decision of the panel appears to be different from the guidance issued by the Supreme People's Court in the case number (2021) SPC Intellectual Property Final No. 389 on August 15, 2024. In Case No. 389 , the Supreme People's Court stated that "whether the supplementary experimental data should be accepted shall consider whether the original patent application documents clearly disclose or suggest the facts to be directly proved by the supplementary experimental data as a positive condition, while taking into account a negative condition that the inherent defects of the original patent application documents cannot be compensated by the supplementary experimental data.”
The specification of the Patent-in-Issue clearly discloses: The technical effect of 0.2R≤D≤0.8R is to enhance the turbulence effect, thereby improving the grinding efficiency; and the technical effect of 0.2H2≤H1≤0.8H2 is to ensure both good grinding effect and grinding efficiency and avoid interference between the detection device and the grinding blade (i.e., the facts to be proved ). Based on the disclosure of the Patent-in-Issue and the common knowledge of the art, a person skilled in the art could determine the technical effect of the distinguishing technical feature (the selection of parameter range) of claim 1. Therefore, it should have been considered that the positive condition for accepting the supplementary experimental data has been met. As for the negative condition, the supplementary experimental data provided by the Patentee is used to prove that the selection of parameter range of the distinguishing technical feature has an unexpected technical effect, and is not used to overcome any inherent defect of the original patent application documents, such as the fact that the patent does not comply with the provisions of Article 26, Paragraphs 3 and 4 of the Patent Law. Therefore, it should have been considered that the negative condition for accepting the supplementary experimental data has been met. In addition, in previous cases, such as (2019) SPC Intellectual Property Final No. 235 and (2022) SPC Intellectual Property Final No. 15, the Supreme People's Court applied this standard in determining whether to accept the supplementary experimental data. However, in the invalidation proceeding of the Patent-in-Issue, the principles applied by the panel on whether supplementary experimental data is acceptable obviously deviate from the position of the Supreme People's Court.
Although the guiding cases and typical cases issued by the Supreme People's Court are important references for lower courts, China is not a country of case law, and these cases do not have mandatory binding force on lower courts or administrative agencies. Therefore, the Patent Reexamination Board can still choose whether to refer to these cases based on specific circumstances. Considering the situation, it is important to clearly describe the technical effect corresponding to the parameter features in the specification and include experimental data when drafting a claim with a parameter limitation. This will be beneficial in proving that the parameter limitation has an unexpected technical effect during the prosecution since this approach is currently accepted by both the CNIPA and the courts as strong evidence to show inventiveness.
[1] Special thanks to Mr. David Lee for his contribution to this article. Mr. Lee is a former patent examiner at the Taiwan Intellectual Property Office and currently a Chinese patent agent.
