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Epson China cartridge case influences IP court

Epson China cartridge case influences IP court

June 13, 2016

The OEM’s case against Zheng Yali in 2010 continues to have an effect over other Chinese cases.

The Supreme People's Court in China

The Supreme People’s Court in China

Mondaq hosted an article from the CCPIT Patent and Trademark Law Office, discussing how a newer case, Shimano Inc. v. PRB, has been influenced by Zheng Yali v. Seiko Epson Corporation & PRB et al, a case which took place at the Supreme People’s Court of China in 2010. The Shimano case concluded in 2013, but the office has covered the ongoing importance of both cases, specifically the Epson one to this later matter.

The Shimano case concerned the bicycle manufacturer’s fight against the Patent Reaxamination Board (PRB), where in 2013 the Supreme Court sided with the PRB in terms of an “invalid” Chinese patent registered by Shimano, with the latter appealing the decision and asking for a retrial. What is key is that Shimano was found against because of “two amendments made to the claims”, and the CCPIT asked if the amendments “introduce new matters” not contained in the original case.

These changes were to wording of a number of terms, and the Epson case was referred to by the Supreme People’s Court in a move that the CCPIT says might show it is “changing [its] mind” on the issue of “new matter”, or amendments to patents. The law in question was Article 33, which had been “debated extensively for several years” even before the Epson case concluded in 2011.

Examination of amendments in that case were argued to have been “too strict”, while rejections were made “too readily”, with the law reading that “an applicant may amend his or its application for a patent, but the amendment to the application for a patent for invention or utility model may not go beyond the scope of disclosure contained in the initial description and claims, and the amendment to the application for a patent for design may not go beyond the scope of the disclosure as shown in the initial drawings or photographs”.

Amendments, the CCPIT notes, “may result in new matters”, and in summary, means that the court assesses “whether the technical solution/invention as a whole after amendment has been contained in the application documents”. The Epson case had concerned an inkjet cartridge patent, with the OEM appealing invalidation and winning, with a withdrawal of the invalidation.

However, one of the instigators, Zheng Yali, asked for a retrial in the Supreme People’s Court, though they saw the retrial request rejected. The court felt that while the amendments were allowed, the law also restricts them to applications, adding that the amendments “should be interpreted from the view of a person of ordinary skill in the art”, and stating that Epson’s changes were not confusing nor adding complexity

In the Shimano case, the court was seen to change its perspective, because the amendments in this case – similar to those in the Epson case – were denied by both the court and the PRB, with the CCPIT noting that “it seems that the court abandons” the ruling it had made previously, as well as not giving “a clear answer”, with the Epson case’s impact expected to continue to be seen in a “less stricter” interpretation of the laws – it does not expect the latest case to change that.

Categories : Around the Industry

Tags : China Epson IP

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