On December 19, 2014, Beijing Higher People’s Court made the final judgment on Kaneka v. Patent Reexamination Board (PRB) Patent Invalidation Administrative Dispute, maintaining the first instance judgment made by Beijing First Intermediate Court, which revokes No. 19358 Decision of PRB.
No. 19358 Invalidation Decision of PRB deems that the technical solution of Claim 1 cannot effectively form a photoelectric conversion device, and thus is different in essence from the solution disclosed in the specification. Therefore, it does not comply with the rule of Paragraph 4, Article 26 of the Patent Law that the claims shall be supported by the specification, and based on this provision, PRB announced invalidation of this patent right.
In the first instance judgment, Beijing First Intermediate People’s Court deemed that PRB’s decision “Claim 1 cannot be supported by the specification” made according to several literal mistakes in Claim 1 was too mechanical and shall be revoked. After the trail, Beijing Higher People’s Court maintained the first instance judgment.
In the final judgment, Beijing Higher Court explains in details the meaning of “claims shall take the specification as the basis” and points out that some literal mistakes do not necessarily lead to the result that “the claim does not comply with Paragraph 4, Article 26 of the Patent Law”. Firstly, it should be clear that the person skilled in the art is the main force to interpret the claims; secondly, the interpretation of the claims shall be combined with the specific context which is mainly composed of the specification and the drawings. If the person skilled in the art can directly and undoubtedly determine that there are mistakes in the technical solution after reading the claims, and get the only one correct answer from the combination of their general technical knowledge and the contents of specification and drawings, whether the claims are supported by the specification shall be determined on the basis of the understanding after correction.