The Beijing Higher People's Court issued the "10 typical cases and 10 innovative cases concerning IPR protection in 2014" tried by Beijing courts on April 15, 2014. Two cases represented by CCPIT Patent and Trademark Law Office were included in the “10 Innovative Cases”.

Case 1: The Administrative Review Case on the Rejection of a Design Patent Application for a Portable Display Device with Graphical User Interface

In this case, the Patent Reexamination Board (i.e. the PRB) upheld the Rejection Decision issued to the design patent application for a “Portable Display Device” applied by Apple Inc. Apple Inc. appealed the Decision of the PRB to the court. The court reversed the Decision of the PRB and held that whether the design concerned is a patentable subject matter shall be examined according to Article 2 of the Patent Law, instead of according to the Patent Examination Guidelines. The design concerned is essentially directed to a portable display device as a whole, and is a patentable subject matter though it incorporates GUI appearing solely when powered on.

Interestingly, during trial of the case before the court, the SIPO amended its Examination Guidelines (version 2010). According to the amendment, GUI becomes patentable when it combines with a hardware device, such as a mobile phone.

This case together with the amendment to the Examination Guidelines makes it clear that, GUI is protectable by a design patent at least to some extent in China.

Case 2: The Administrative Review Case on the Rejection of Invention Patent Anti-hypersensitive Combination of Valsartan and Calcium Channel Blocker

At issue here is a long-debated point in examination of a patent application, i.e. whether it is possible to submit to the SIPO at a later time experimental data and/or embodiments to meet the support, enablement or utility requirement for an invention patent for innovations in the biochemical field. A batch of patent applications were at least partially rejected by the SIPO for not providing in the application sufficient experimental data and/or embodiments while later submitted materials were denied by the SIPO.

The second instance court, by reference to the provisions of Patent Examination Guidelines (1993 version), held that the applicant should be allowable to supplement experimental data and/or embodiments after filing the application, in order to prove the effect and feasibility of the invention. These experimental data and/or embodiments, although cannot be included into the application, can be reference information for the examiners in determining the patentability of the invention. Application of the Patent Examination Guidelines in effect 2000 violated the “law of non-retroactivity” principle.

It is noted that the SIPO has actually deregulated its strict requirements on later submitted experimental data and/or embodiments for the kind of patent applications to some extent now.

Conclusion:

In dealing with the two cases discussed above, the patent attorneys from CCPIT Patent and Trademark Law Office, relying on their extensive experience, profound understanding of laws as well as their close team work, have provided great assistance for the protection of the clients’ inventions. The above-mentioned cases will promote the Chinese patent protection system and provide guidance for later applications and examinations of similar cases.