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The highlight of this case is the confirmation that generally a close-ended claim of a chemical composition shall be construed as the composition merely consisting of the indicated components, and including no other components but impurities in a normal amount, while adjuvants do not belong to the impurities.
With reference to inventive step of compound claims, it is stipulated in the Guidelines for Patent Examination that for a compound NOT similar in structure to a known compound, it will be regarded as inventive when it has a certain use or effect where a compound that IS similar in structure to a known compound, it might be regarded as inventive only if it has an unexpected use or effect. As can be seen, it is important to judge whether a compound is structurally similar to a known compound. This case clarifies that in the determination of inventiveness of a crystalline compound, the wording “structurally similar compounds” specifically refers to compounds having the same central part or basic ring, and has nothing to do with comparison between microcrystalline structures. The microcrystalline structure difference shall be considered only if it brings unexpected technical effect.
The patentee, HU Xiaoquan, owns a patent for invention No. ZL 200410024515.1, titled “Process for the Preparation of an Injection of Adenosine Disodium Triphosphate and Magnesium Chloride,” wherein claim 2 recites the additional technical features, “a freeze-dried powder injection of adenosine disodium triphosphate and magnesium chloride for injection, consisting of adenosine disodium triphosphate and magnesium chloride at the ratio by weight of 100 mg to 32 mg.”
This case highlights the premise to admit the post-filing experimental data for determination of inventiveness, i.e. such data should direct to the technical effect described in the original application documents.
The patentee, Takeda Pharmaceutical Co.,Ltd. (hereinafter “Takeda”), owns a invention patent No. ZL96111063.5 titled as “Pharmaceutical Composition for Use in Treatment of Diabetes” (hereinafter “the patent concerned”). Claim 1 was “pharmaceutical composition useful for prophylaxis or treatment of diabetes, diabetic complications, glucose or lipid metabolism disorders, which comprises an insulin sensitivity enhancer selected from pioglitazone or a pharmacologically acceptable salt thereof, and Sulfonylurea as insulin sensitivity enhancers.”
Experimental data is vital to the patentability requirements of inventiveness, support, and enablement for chemical/medical application. During the substantive examination, the applicant may intend to supplement experimental data to support inventiveness after filing, which is called “post-filing experimental data”. It is controversial whether post-filing experimental data shall be admitted. This article discusses admission of post-filing experimental data, as well as the binding effect of examination result in other countries based on analysis on an actual case.
This judgment illustrated that the date when a patent right is declared invalid shall be the decision date of the patent invalidation proceeding.
This case relates to invention patent No. ZL 96107072.2 of the patentee, Qianping AO. After issuance of the patent, the patentee issued a license to Shenzhen DNS Industries Co., Ltd. (“DNS Industries” hereinafter), agreeing that DNS Industries can further permit a third party to exploit the patent in a manner of commissioned processing such as OEM or ODM.
Zhejiang Huali Communication Group Co., Ltd. (hereafter referred to as “Huali Communication”) is the sole and exclusive licensee of a licensing contract for exploitation (in which the patentee does not retain any right to exploit its technology) of an invention patent titled “CDMA/GSM dual-mode mobile communication method and communication device thereof” with Patent No. ZL02101734.4 (hereafter referred to as “the involved patent”).
Examination Decision No. 19631, which is related to the validity of patent No. ZL95190642.9, titled “Shaving Apparatus”, is the first decision that involves the petitioner withdrew the invalidation request and the examination of the request for invalidation was not terminated. This is the PRB’s first application of the principle of conducting examinations ex officio under Rule 72.2.