Translated by Rechwise Source from SIPO website
On April 25, 2007, The PRB of SIPO made a decision No. 9744 of invalidation request for patent, of which the application date is November 11, 1997, the announcement date was June 2, 1999, the application No. was 97248479.5, and the utility model title was a highly-disconnected small-breaker, as well as the patent owner was Zhengtai ltd. Co. Schneider Electric Corporation (the requester) supplemented the evidences and statement for six times, and divided the evidences into six groups to evaluate the novelty and inventiveness. In which, the third group of evidences includes evidence 11 and evidence 13, which show the structure of C60N product, copy of purchasing invoice respectively , witness testimony and notarization documents etc.. The fifth group of evidences includes evidences 19, 20 , 24 and 25, while the evidence 19 includes two copies of notarization, one is notarization 19-1 (2006) jinghaiminzhengzidi3560, the other is notarization 19-2 (2006) jinghaiminzhengzidi3561, and evidence 20 was the copy of contrasting table for number of order of C65 and C60 product. Evidence 24 was an enlarged picture of the doorplate of Shenglong car Corporation, picture of product, and their notarization. Evidence 25 was the order list signed by Hongkong attorney Dengzhaoju and the quote list of invoices, witness testimony, and the copy of the notarization. After examination, the collegiate panel made a decision with No. 9744 for this invalidation request on April 25, 2007. In this decision, the panel affirmed the following about three groups of evidences provided by the requester: 1. Concerning first group of evidences, the application date and publication date of the cited document 1 was later than that of such patent, while the French priority date of this cited document1 is earlier than the application date of such patent, therefore the cited document 1 may be utilized to evaluate the novelty of such patent. 2. Concerning third group of evidences 11 to 13, evidence 11 is a pamphlet of the product, which belonged to the advertisement material of the enterprise. Evidences 11 to 13 did not construct a whole evidences chain, so it was unable to prove the publication date of the product pamphlet or the technology was known by the public before the application date, which the requester claimed. As such, the collegiate panel deemed that evidences 11, 12 and 13 may not evaluate the novelty and inventive steps. 3. Concerning fifth group of evidences, which includes evidences 19, 20, 24 and 25, the association with the C60 product could not be determined. And, evidence 19-2 for showing the structure of the product and evidence 24 can not be the basis to make a decision. Therefore, the association between the market products and the patent can not prove what structure are the market products, further can not compare with such patent to reach the conclusion that the patent did not have novelty or inventiveness. Therefore, the PRB affirmed that the patent was valid on the basis of the claims 1-3 which the patentee submitted on February 17, 2007. Beijing No.1 intermediate court upheld the decision 9744 of the PRB, and Beijing higher court affirmed the first instance judgment. Case analyses The infringement dispute of such patent occurred between these two parties. Zhengtai Corporation is a leading enterprise and is top 10 of Chinese private enterprises, while Schneider Electric Corporation (Tianjin) is a jointed enterprise registered in China. The head office of Schneider is located in France and is scanned in transmission and distribution of electricity field, automation and control field, as well as one of top 500 enterprises in the world. Zhengtai Corporation has many disputes with Schneider Electric Corporation (Tianjin) for years. However, Zhengtai Corporation usually was in the passive status for the patent infringement disputes, and this patent was the first one of which Zhentai initiated litigation against Schneider Electric Corporation (Tianjin), so the case was significant for both parties. After the decision for invalidation was made, Wenzhou intermediate people’s court of Zhejiang province made the civil judgment No. (2006)wenminsanchuzidi135hao, which affirmed that the alleged infringed product was fallen into the scope of the patent, and compensated Zhengtai damage 334,869,872RMB. Therefore, the case was called “China IP No.1 case”. The requester submitted evidences and statements for 6 times, the format of evidences were complicated, which included domestic and foreign patent documents, propaganda posters, certificate of organization testify, pictures of product, invoices of sales in domestic or foreign countries, importing certificate, domestic sale contract, witness testimony, and the notarization documents etc.,. Both parties held different opinions about the facility of the evidence, publication date of evidences, and the disclosed content of the evidences. The priority date of the cited document 1 submitted by the requester was before the application date of such patent, and the publication date of which was behind the application date of such patent, so the cited document 1 may not be used to evaluate the novelty of such patent. The requester deemed the drawings of the cited document 1 disclosed a plurality of distinguished technical features obtained by comparing claim1 with the cited document 1, so the skilled in the art could obtain components corresponding to the distinguished technical features from the drawings of the cited document 1. It was stipulated in Paragraph2.3 Section 3 Part 2 of the examination guideline that the provision about the cited document should be: when a reference document is cited to judge novelty and inventive step of an invention or utility model, the technical contents disclosed in the reference document shall be based on. Said contents include not only those technical contents expressively described in the reference document but also those implied technical contents that can be derived directly and unambiguously from the disclosure by a person skilled in the art. However, it is not allowable to broaden or narrow the contents of the reference document at will. When the reference document has drawings, the drawings may also be cited. However, only those technical features that can derived directly and unambiguously from the drawings belong to the contents of the disclosure. The content inferred from the drawings, and the dimensions with their relations measured from the drawings without any written description cannot be taken as the content of the disclosure. Therefore, the requester deduced, only based on the drawings of the cited document 1, multiple distinguished technical feature over the cited document 1, furthermore, the technical features deduced from the drawings were not described in words in the description of cited document 1 and also could not derived directly and unambiguously from the drawings. So said distinguished technical features could not be the disclosed content. Concerning group 3 of evidences, the key evidence 11 is a copy of brochure which belonged to the advertising materials, so it did not have a strict publication and issuance procedure and was in random. According to the provision of the paragraph 2.1, section 2 part 2 of the examination guideline, the publication in patent law was meant that independently existing disseminating carriers of technical or designing contents, which shall indicate or have other evidence to prove the date of public issue or publication. In this group 3, it could not prove the print date, place, and printer, and there was no corresponding original documents and receipt; there were no assistant evidences to prove the publication date, place and method of the printed brochure, therefore, the publication date of the brochure could not be determined. The group 3 of evidence could not prove the evidence 11 belonged to the publication in patent law. The requester divided the group 5 of evidences into two groups, respectively to prove the importation and the sale relationship between China machine tool head office and DONGFENG PEUGEOT CITROEN AUTOMOBILE COMPANY LTD. It is stipulated in section 8 part 4 in the examination guideline that where the party concerned intends to prove a product has been publicly used in this country by showing the act of importing the product, if the various evidence concerning the importing act are sufficient to prove that the said imported product has completed the customs procedure and was permitted to be released, it shall be deemed that the act of importing has been completed. The requester utilized witness testimony, registration table of mechanical and electrical products, application form, packing list and invoice of circuit breakers which were imported by China machine tool head office from Schneider Electric Corporation (Hongkong), and electrical storage record of sales of Schneider Electric Corporation to prove C60 series had been imported into China. As the requester who claimed importing and sales, should provide facility, efficient and sufficient evidences to prove the appending facts. However, the group 5 of evidences lacked of customs declaration form, contract for importing etc. sufficient to prove the behavior of importing, so the product had completed the custom procedure, as to not prove the importing act resulted in the public use in domestic. Additionally, in the evidences, many types and standards were not correspondent, contradictory with each other so the defects were exiting, the facility of the evidences could not be determined. The requester utilized two copies of supplies contract and their annex in the group 5 of evidences to make evidences combination, to certify the sale act of C60 product between China machine tool head office with Dongfeng Peugeot Citroen Automobile company ltd., and the structure of the marketed products. However, evidence 19-2.3 and evidence 19-2.4, two supplying contract, did not completely draft the related types of products in the annex, and the product names in the annex were not consistent with the category of the contract. Additionally, there were many contradictories among the contract’s annexes, the category of the contract and other related annexes, so the annexes could not be determined as the annexes which were verified in the category of these two contracts. (2006) jinghaiminzhengzidi3561hao notarization (i.e. evidence 19-2 ) had notarized the content of 25 pictures of 19-2.17 was in conformity with the facts. However, the notarization had notarized the present structure of the product, and the publication date of these products could not be determined, so the 25 pictures could not be the basis for deciding the case. Summarized, the supplying contract, invoices, bookkeeping evidence, pay-in slip etc., the pictures of C60 series products could not prove the publication date of these product. In the group 5 of evidences, the correlation between evidences 19-2.3, evidence 19-2.4, evidence 19-2.14, evidence 19-2.16 and C60 series products could not be determined, while the evidence 19-2.17 and evidence 24 which showed the structure of the pictures could not be the basis for deciding the case. Therefore, the correlation between the marketing products and such patent could not be proved, and the structure of the marketed products could not also be proved. Furthermore, the evidences could not be compared with such patent so as to reach the conclusion that such patent did not possess novelty or inventive steps. Although concerning the group 5 of evidences the requester provided multiple notarization certificates, to prove the original one of the supplying contract and all kinds of invoices were consistent with the duplicated ones, the duplicated one of “witness testimony” was consistent with the original one, and the content of the pictures was same as the facts, according to the provisions about the notarization of the paragraph 4.3.4 , sector 8 part 4 in the examination of guideline: if the conclusion of the notarial document obviously lacks grounds or there is self-contradiction in its contents, the corresponding contents shall not be taken as the basis for deciding the facts of the case. If the annex of the contract which attached to the notarization is obviously not corresponding to the draft of the contract, the annex of the contract could not be the basis for deciding the facts of the case. According to the provisions regarding to testimony of witness in paragraph 4.3.1 of sector 8 part 4 in the guideline of examination that inference, conjecture, or observations made by the witness based on his experience shall not be taken as the basis for deciding the facts of the case. (2006) jinghaiminzhengzidi No.3560 notarization and No.3561 notarization did not make any commentary about the facility of the content in the testimony of the witness; the facility of the content of the witness testimony needed other evidences to assist. The requester did not provide the evidences to prove that the content of the testimony or the facility of the facts stated by the witness. The notarization proved that the content of the pictures was in conformity with the product before detaching or after detaching, though what was notarized in the notarization was the present structure of the product. And the publication date of the products could not be determined, so the picture could not be the basis for deciding the facts of the case. Therefore, although the notarization certificates verified the duplicated one was same as the original one in the group 5 of evidences, the group 5 of evidences could not be the evidences for evaluating the novelty or inventiveness. (Intellectual property newspaper, Author: TANG Xiangyang) Source from SIPO website 10-08-13 Translation by Rechwise