Our client is challenged by a rival company in a few patent disputes worldwide. As said in an old adage - the best defense is a good offense, our client decides to request for declaration of invalidation for the rival’s patents in China as an important step to defense in the entire campaign.
We started to work on an extremely tight schedule after receiving the client’s instruction to prepare the invalidation request. We screened the patent documents and spotted go-beyond, unclearness, non-support and insufficient disclosure issues to make a case, and managed to file the initial invalidation request with evidence to the Patent Re-examination Board in four working days. Then we used the one-month window for collecting evidence and preparing and then filing further grounds and evidence.
Therefore, we squeezed every minute. One team completed the prior art search in a week, finding evidence for attacking on inventive steps and novelty points. Then another team requested and obtained the notarized documents for all the evidence, and prepared and certified the Chinese translation of all evidence written in foreign languages. Then we used another week to shape and polish our brief with further grounds with respect to the supplementary evidence.
Next, it is a bit unexpected that the originally-scheduled oral hearing was postponed for over a half year. So the patentee had more time to prepare the response, which we received on spot at the oral hearing. After a quick review of their points, we made adjustment for our grounds and put more focus on the inventiveness issue of this patent. It was there fierce debates about the inventive step of each and every claim of the patent during the oral hearing before the Board. Ultimately the Board accepted our arguments and declared all the claims invalid.
This Decision not only results in a victory of one AFD case but reinforces the triumph in the frontline of China for the client’s global defense strategy.
