The Supreme People’s Court concluded the second instance of a dispute of an invalidation case involving an invention patent “Process for Producing Silicon Oxide Films from Organoaminosilane Precursors”. In the judgment, the Court accepted the supplementary experimental data submitted after the filing date, embodying the equal protection of legal rights and interests of foreign right holders on par with domestic applicants.
The patentee is American A Company. Claim 1 in the patent seeks protection for a method for forming silicon oxide film on a substrate. Natural person X filed to invalidate this patent on the ground that the patent does not have inventiveness prescribed by the Patent Law. In response to X’s invalidation request, the patentee submitted their response to the fourth Office Action as counter evidence 5, which includes supplementary experimental data. The CNIPA decided to uphold the validity of the patent. X was dissatisfied and filed a lawsuit. The first-instance court ruled to dismiss X’s litigation.
X, dissatisfied with the first-instance judgment, appealed and claimed that the technical features that counter evidence 5 intended to prove cannot be explicitly concluded from the description of the patent, so counter evidence 5 should not be accepted and claim 1 of the patent does not have inventiveness in reference to evidence 1.
In the second instance, the Supreme People’s Court deemed that the acceptance of counter evidence 5 would directly impact the technical problems that the patent actually solves and the determination of whether prior art provides relevant technical teaching, thereby influencing the assessment of the patent’s inventiveness. When a patentee submits supplementary experimental data after the filing date and claim that such data can prove the inventiveness of the patent, the examination can be conducted in the following aspects: First is to examine whether the experimental data and relevant evidence are authentic, legal, and relevant, to decide whether such data should be accepted. Second is to examine whether the following two conditions are met: a. the patent documents explicitly or implicitly disclosed the facts to be directly proven by the experimental data; b. whether the experimental data can be used for rectifying inherent deficiencies in the patent documents.
Regarding the admissibility of counter evidence 5, given that in invalidation examination, the closest reference documents are often different from the closest prior art recorded in the patent application, namely, comparative objects are often uncertain, the supplementary experimental data can be submitted to prove whether the Diisopropylaminosilane (DIPAS) specified in the patent exhibits the optimized features as disclosed in the description of the patent, comparing to the Di-n-propylamine silane (DNPAS) disclosed in evidence 1 of the reference, which is also the closet reference documents in the invalidation examination. According to the content disclosed in the description of the patent, DNPAS is not specifically mentioned, but when completing the invention-creation, the patent has noticed that DIPAS is a preferred precursor for preparing silicon oxide thin film with low etching rate, and that DIPAS is steadier compared to other aminosilane precursors and more durable compared to other silane precursors. Counter evidence 5 was to compare the steadiness of DIPAS and DNPAS, so as to prove DIPAS disclosed in this patent is steadier compared to other similar compound precursors, including DNPAS and Diethylaminosilane (DEAS). However, counter evidence 5 was not to rectify the inherent deficiencies in the patent documents due to the insufficient disclosure. The supplementary experimental data is relevant to the steadiness of DIPAS disclosed in the description of the patent and a duration longer than other silane precursors, and therefore should be accepted.
As for the admissibility of the supplementary experimental data, the objectivity and confidence of the used test measures shall be examined. Accelerated aging test is an experimental measure used by those skilled in the art to verify the steadiness of chemical products. It is usually done by putting the product in conditions that is stricter or worse than normal storage or use environment to test the changes that happen to the tested material in normal use condition in a shorter time, so as to predict the steadiness and duration of the materials in room temperature. Its experimental principles and operational steps are commonly known by those skilled in the art. Part of the experiments in counter evidence 5 accelerated aging using the method “ASTM F1980-07”, a concrete implementation plan for accelerating aging experiment. The method is to illustrate that degradation reaction rate varies with the temperature changes in accordance with the experimental formula of changing correlation between the chemical reaction rate constant and temperature - the higher the temperature, the larger the degradation reaction rate. Counter evidence 5 can prove that DIPAS precursor is steadier than other similar precursor compounds, which is a technical feature that shall be considered when evaluating the technical problems to be actually solved by the patent.
The second-instance judgment determined that X did not submit evidence to prove that those skilled in the art knew DIPAS, as a silane precursor, has a steadier technical effect. Under the circumstance where evidence 1 did not teach to improve the steadiness through optimizing the precursor, those skilled in the art had no motivation to use DNPAS disclosed in evidence 1 for improvement. Evidence 1 did not turn the development direction of steadiness improvement to focus on the precursor, and it did not provide any technical teaching. The challenged decision and the first-instance judgment’s deeming the patent having inventiveness in reference to evidence 1 and the combination of evidence 1 and common knowledge shall be upheld. Therefore, the second-instance judgment ruled to dismiss the appeal and upheld the first-instance judgment.
As to the conditions of accepting supplementary experimental data, (2019) Zui Gao Fa Zhi Xing Zhong No. 33 specified the positive and the negative conditions, which are that the initial patent application documents must explicitly or implicitly disclose the fact to be directly proven by the supplementary experimental data, and that the applicant cannot overcome the inherent deficiencies in the initial patent application documents by supplementing experimental data. The supplementary experimental data submitted by the patentee in this case, i.e. counter evidence 5, meets the said conditions, and so should be accepted. Based on the said judgmental rules, this case further explained the examination on the case where the supplementary experimental data is used to prove the inventiveness of the patent technical solution, particularly under the circumstance where the patentee cannot predict prior art to be cited by the examiner or the request party. This case is of some reference value for the examination on cases where supplementary experimental data is submitted after the filing date.
(2021) Zui Gao Fa Zhi Xing Zhong No. 832
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