Date:1 February 2023

【Volume 102】

Part I of our 4-part series discusses the regulations in Taiwan pertaining to whether an erroneous prior art disclosure may support obviousness, and offers a detailed analysis of a recent case example.

In Part II, we continue to look at how prior art with errors is viewed in China, and introduce a case example with opposing views from the CNIPA and the court.

Part II. China

In February 2022, the Intellectual Property Tribunal of the Supreme People's Court released Judgment Essentials (2021) (Abstract Edition), wherein it includes the judgment essentials of the (2021) Zui Gao Fa Zhi Xing Zhong No. 83 Administrative Judgment of the Supreme People's Court in China. The judgment essentials only mention the result (1) in Part I of our series, i.e., to simply deny the legal validity of the erroneous part to be a disclosed prior art.

1. Regulations in Judgment Essentials (2021) (Abstract Edition) released by the Intellectual Property Tribunal of the Supreme People's Court:

   There are no specific regulations about errors in disclosure of a citation in Guidelines for Patent Examination and Patent Act of China. In February 2022, the Intellectual Property Tribunal of the Supreme People's Court released Judgment Essentials (2021) (Abstract Edition), wherein the 4th point stated “the determination of the disclosure when there is contradictory description in the same prior art”, which comes from the judgment essentials of (2021) Zui Gao Fa Zhi Xing Zhong No. 83 Administrative Judgment: “if a specific technical means described in a prior art conflicts with the related content described in the same prior art and a person ordinarily skilled in the art even after reading the whole description in the prior art and combining it with common general knowledge, cannot make a reasonable interpretation or determine its correctness, then it can be determined that the prior art does not disclose the above specific technical means.”

2. Court Judgment: (2021) Zui Gao Fa Zhi Xing Zhong No. 83 Judgment of Supreme People's Court

   Case facts

   In the review decision No. 183507 of CNIPA for disputed application (application number: 201510452769.1), CNIPA upheld the decision of rejection with the reason that the disputed application lacks novelty in view of Citation 1 (EP1518906A1). (2019) Jing 73 Xing Chu No. 14577 Administrative Judgment of Beijing Intellectual Property Court affirmed the No. 183507 Review Decision. The applicant disagreed with the first instance and therefore appealed to the Supreme People's Court.

   Disputed issue in the case: whether the obviously contradictory content in the prior art can be used to determine the novelty of the disputed application

   The technical means of the disputed patent relates to use of “water-insoluble” basic bismuth nitrate in paints. The technical means disclosed by Citation 1 relates to use of “water-soluble” metal nitrate in paints. However, one of the compounds listed in Citation 1 as examples of water-soluble metal nitrate is generally known to be water-insoluble basic bismuth nitrate. Accordingly, one of the disputed issues in this case is whether the part of technical means (use of “water-insoluble” basic bismuth nitrate compound in paints) which conflicts with the whole technical means (use of “water-soluble” metal nitrate in paints) in Citation 1 can be used as a prior art.

   CNIPA stated that: objectively, Citation 1 has still disclosed paints comprising water-insoluble basic bismuth nitrate, even with the fact that the technical means about basic bismuth nitrate is a wrong example in Citation 1.

   Supreme People's Court Opinion

   The Supreme People's Court disagreed with the argument of CNIPA and stated that: “the content of technical means of a prior art disclosed in a printed publication is based on the objective record of the printed publication. However, if the description related to the technical means of the printed publication is obviously contradictory to other related description and a person ordinarily skilled in the art cannot reasonably interpret it based on the other content described in the printed publication and the general knowledge in the art, it cannot be determined that the printed publication has disclosed the technical means, i.e., it cannot be used as a prior art as defined in Patent Act.”

3. Conclusion

   Judgment Essentials (2021) (Abstract Edition) released by Intellectual Property Tribunal of the Supreme People's Court only mention the result (1), i.e., to simply deny the legal validity of the erroneous part to be a disclosed prior art, wherein whether to deny the legal validity of a disclosure as a prior art or not is determined based on whether there is “self-contradictory description” in the citation or not. However, "contradictory description" does not necessarily render a disclosure lacking enablement. The fact that Citation 1 in the above judgment makes a mistake in listing water-insoluble basic bismuth nitrate compound as an example of water-soluble metal nitrate does not mean that the technical means of use of the compound in prints is not operable. However, in this situation, based on the contradictory description of the citation, the legal validity of water-insoluble basic bismuth nitrate as a disclosure is still denied.

   The following parts of this series will examine how this issue is handled in the U.S. and Europe.