Fangda has assisted Huizhou Huahong New Materials Co., Ltd. (“Huahong New Material”) in obtaining the Supreme People’s Court’s (“SPC”) recent final judgment (Judicial Review No. (2021) SPC Intellectual Property Zhi Xing Zhong No. 1172), which reversed the trial court judgments of both China National Intellectual Property Administration’s (“CNIPA”) decision on invalidation request examination (No. 44388) and the first-instance judgment by the Beijing Intellectual Property Court (“BIPC”) (Case No. (2020) Beijing 73 Administrative Xing Chu No. 12112). The Fangda team represented Huahong New Material in the second-instance litigation and successfully secured an overturning final judgment by the SPC, prompting the CNIPA to reevaluate the contested patent.

The patent in this case aims to protect a photo-curable composition used for solvent curing. Due to its fast curing speed, resistance to yellowing and lack of irritating odor, the patented composition is particularly suitable for food and cosmetics external package printing. Both the CNIPA and the BIPC asserted in their invalidation decision and first-instance judgment respectively that Claim No.1 of the contested patent lacked inventiveness relative to Comparative Document No.1, while Claims No.2-11 were considered directly or indirectly referred to Claim No.1 and were deemed either routine technical choices or existing technology in the new material industry. Consequently, the CNIPA and the BIPC considered that Claims No.2-11 were lacking inventiveness based on the lack of inventiveness in Claim No.1.

In the second-instance litigation, the Fangda team substantiated the unexpected technical effects of the contested patent compared to Comparative Document No.1 through experimental design and supplementary experimental data, meeting the criteria for inventiveness specified by Chinese Patent Law.

One focal dispute point of the case was the acceptance of supplementary experimental data. To prove the inventiveness of the claimed technology relative to existing technology, it was imperative for the patentee to submit supplementary comparative experimental data addressing the specific technical effects explicitly recorded in the original application. The Fangda team recognized the characteristics of the contested compound patent and the beneficial effects documented in the specification and designed supplementary experiments. These experiments were independently conducted by universities and third-party institutions, confirming the unexpected technical effects of the contested patent relative to existing technology. Ultimately, the SPC accepted the supplementary evidence, leading to the annulment of previous rulings by the CNIPA and the BIPC.

The Fangda team was led by Intellectual Property partner Zou Wen and team member included associate Xie Xiaoxiong.